Las Vegas Sands, Inc. v. Red Group

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Las Vegas Sands, Inc. v. Red Group

Case No. D2001-1057

1. The Parties

The Complainant is Las Vegas Sands, Inc., a Nevada corporation, located at

3355 Las Vegas Boulevard, Las Vegas, Nevada, USA, represented by Gary A. Hecker,

Hecker Law Group, 1925 Century Park East, Suite 2300, Los Angeles, CA 90067,

USA.

The Respondent is Red Group, an entity of unknown corporate status represented

by Zak Muscovitch, Neinstein & Associates, 1200 Bay Street, Suite 700, Toronto,

Ontario, Canads M5R 2a5. According to the information in the WHOIS database

for the domain name at issue, Red Group is located at Pier 23, Embarcadero,

San Francisco, CA 94111-1136, U.S.A.; according to Respondent, though,

Red Group is located in South Africa.

2. The Domain Name and Registrar

The domain name at issue is <sandsofthecaribbean.com>.

The domain name is registered with Melbourne, IT, Ltd., doing business as Internet

Names Worldwide.

3. Procedural Background

Complainant submitted its Complaint to the World Intellectual Property Organization

Arbitration and Mediation Center (the "Center") under the ICANN Uniform

Domain Name Dispute Resolution Policy (the "Policy") via e-mail on

August 23, 2001, and hardcopy on August 28, 2001. The Center acknowledged receipt

of the Complaint on August 24, 2001. On August 29, 2001, the Center formally

commenced this proceeding.

Respondent submitted its Response via e-mail on September 19, 2001, and hardcopy

on September 25, 2001. The Center acknowledged receipt of the Response on September 19,

2001. Complainant elected to have this dispute decided by a three-member Administrative

Panel. On October 15, 2001, the Center notified the Parties that G. Gervaise

Davis and Milton L. Mueller had been appointed as Panelists and that David H.

Bernstein had been appointed as Presiding Panelist.

On September 19, 2001, and September 21, 2001, Complainant filed two new complaints,

which were assigned Case Nos. D2001-1134 (against the Respondent George Samuel)

and D2001-1157 (against the Respondent Sands of the Carribean) (together, the

"Other Sands Cases"). Also on September 21, 2001, Complainant filed

a "Petition to Consolidate Complaints." Respondent objected to consolidation

by e-mail on September 22, 2001.

On October 19, 2001, the Panel issued a Procedural Order containing a Request

for Further Submissions pursuant to Rule 12, which stated in relevant part:

"Complainant alleged that consolidation of all three cases was warranted

because the Respondent in this proceeding is under common ownership or control

with the Respondents in the Other Sands Cases, and all three cases relate to

the same trademark.

Respondent objected to consolidation in a short e-mail sent on September 22,

2001. Respondent argued that Complainant should have filed a single Complaint

if it wanted consolidated treatment of these three matters, and that Respondent

would be prejudiced by consolidation because it already has filed its Response.

Respondent also complained that Complainant strategically waited until after

the filing of the Response to seek consolidation. In addition, Respondent’s

counsel suggested that he only represents the Respondent in this case, and not

the Respondents in the Other Sands Cases, and is thus not in a position to provide

a coordinated defense to these three matters. Finally, Respondent requested

an opportunity to file a formal opposition to Complainant’s petition.

The Center has informed this Panel that the Respondents in the Other Sands

Cases are represented by a counsel different from Respondent’s counsel in this

case, and that those Respondents have already submitted Responses in their respective

cases (the Responses were filed on October 16 2001, and October

17, 2001). The Center also advises that the Respondents in the Other Sands

Cases have listed, in their choices for the panels for those cases, different

panelists than those listed by Respondent in this matter. The Center has stayed

appointment of panels in the Other Sands Cases pending this Panel’s decision

on the Petition to Consolidate.

Meanwhile, on October 9, 2001, Respondent in this matter filed a Supplementary

Response. On October 11, 2001, Complainant filed a Reply to the Supplemental

Response. These materials have not yet been sent to the Panel pending the Panel’s

decision on whether to allow these supplemental submissions. . . .

The Panel, having now reviewed the petition to consolidate and Respondent’s

email in opposition, and having received notice from the Center of the parties’

October and 11, 2001 filings, issues the following Request for

Further Submissions pursuant to Rule 12:

The Panel hereby requests one further submission from each party in this case

limited to the issues discussed below. The Panel directs the Center to send

a copy of this Order to the Respondents in the Other Sands Cases; those Respondents

may (but are not required to) submit a submission addressing these consolidation

issues. Each party’s submission shall be delivered to the Center via email by

3 p.m., Greenwich Mean Time, on October 31, 2001, with a simultaneous copy

by email to the other party, and shall be certified as provided in Rules 3(b)(xiv)

and 5(b)(viii). Documents not available in electronic form shall either be scanned

and sent with the email or shall be faxed to the Center and the other party

with hard copies to follow by courier.

1. Given that Respondents in all three cases have now filed Responses and that

the Panel in this case has now been appointed, the parties are asked to consider

whether they wish to consent to consolidation of these three matters, whether

before this Panel or before another Panel. If the parties agree, they shall

so inform the Center (and may disregard items 2 through 4, below); if the parties

do not agree, they shall simply inform the Center without disclosing to the

Panel which party or parties refused to consent to consolidation.

2. The Respondent (and the Respondents in the Other Sands Cases, if they wish)

may respond generally to the petition. In addition, the parties should address

whether consolidation would advance the goals of due process to the parties

and judicial efficiency for the Center and the UDRP panelists, and whether (and

if so, how) any party would be prejudiced by consolidation or the failure to

consolidate.

3. Complainant should explain why it filed three separate complaints, and why

the complaints in the Other Sands Cases and the petition to consolidate were

not filed until after Respondent in this case submitted its Response. A failure

to adequately explain these issues will weigh against consolidation.

4. Respondent (and the Respondents in the Other Sands Cases, if they wish)

should disclose whether some or all of the three Respondents are under common

ownership or control, or have any other affiliation or connection, and whether

some or all of the three domain names at issue resolve, or have at any time

in the past resolved, to the same website or mirror websites. If there is any

relationship between or among some or all of the Respondents, Respondent(s)

also should disclose why the Respondents in the Other Sands Cases are represented

by different counsel, and whether those Respondents’ request for different panelists

should affect this Panel’s decision on the petition for consolidation. A failure

to adequately explain these issues will weigh in favor of consolidation.

5. If consolidation is granted, the parties should state their positions on

any procedural orders that may be appropriate, including whether to allow Complainant

the option of filing a new, consolidated Complaint, and/or whether to allow

Respondent the option of filing a new, consolidated Response.

6. Bearing in mind the holdings of Thread.com, LLC v. Poploff, WIPO

Case No. D2000-1470 (Jan. 5, 2001) and Pacific Fence & Wire Co. v.

Pacific Fence, WIPO Case No. D2001-0237 (June

11, 2001) with respect to the filing of supplemental materials, the parties

shall explain whether it is appropriate for the Panel to consider the supplemental

submissions filed in this case on October 9 and 11, 2001 (e.g., do they

raise factual or legal arguments that were not available or reasonably foreseeable

at the time of the party’s initial submission, or are such submissions otherwise

appropriate for review by the Panel)."

The parties in all three matters timely filed submissions responding to the

Panel’s request. Thereafter, on November 13, 2001, the Panel issued the following

Procedural Order:

"Petition to Consolidate

Consolidation may be appropriate where separate complaints against the same

Respondent (or Respondents under common ownership and control) raise related

issues that, in the interests of fairness and efficiency, should be resolved

before a single Panel in a single proceeding. On the truncated record before

the Panel, we conclude that Complainant has not carried its burden of showing

that consolidation is warranted.

Complainant notes (and Respondents concede) that all three domain names resolve

to the same website. Complainant also alleges that there are "numerous

instances of overlap in ownership and contact information for the various Respondents."

These allegations tend to support consolidation.

Respondents, however, certify that there is no common ownership. Respondents

in Case Nos. D2001-1134 and D2001-11157, Sands of the Caribbean and George Samuel,

who are represented by the same counsel, state that "there is no common

ownership or control between [them] and the Red Group." The Red Group similarly

states that there is "no common ownership" between it and the other

Respondents, although it admits that it "directs traffic to the Other Respondents

and receives a commission for all traffic sent." These assertions, although

not as detailed as the Panel would have liked, tend to weigh against consolidation.

In this case, any lingering doubt is resolved by the timing of Complainant’s

petition. Rather than file all three complaints contemporaneously along with

a request for consolidation, Complainant filed the complaints sequentially.

Thus, the Red Group had no notice that Complainant intended to seek consolidation

until after it already had retained counsel and prepared its Response. In these

circumstances, there is no efficiency to the Respondents (who, it should be

noted, retained separate counsel and already have prepared and filed separate

responses).

The Panel thus concludes that consolidation of all three cases is not warranted

[1].

Filing of Supplemental Submissions

As noted in Procedural Order No. 1, the parties in this matter have each filed

supplemental submissions (Respondent on October 9, 2001, and Complainant on

October 12, 2001). Those materials are being held by the Center pending

further instructions from the Panel.

From the parties’ descriptions of their supplemental submissions, it is not

clear to the Panel whether the submissions are, in their entirety, appropriate.

Nevertheless, there does appear to be at least some new material in each submission

that could not reasonably have been included in each party’s initial submission.

Complainant explains that its supplemental submission addresses the claim,

made for the first time in the Response, that Respondent is located in South

Africa despite the California and New York addresses in the publicly available

registry information. This information is, allegedly, relevant to Complainant’s

assertion of bad faith. Respondent did not address this issue, nor did it request

leave to file a sur-reply in response.

Meanwhile, Respondent states that its supplemental submission includes citation

to new UDRP case law that was not available at the time of its initial Response.

Complainant agrees with Respondent’s characterization, and does not object to

the Panel’s consideration of this new case.

Under the circumstances, the Panel directs the Center to forward both supplemental

submissions to the Panel. To the extent the submissions raise relevant facts

or case law that either did not exist at the time of the party’s initial filing,

or could not reasonably have been foreseen, the Panel will consider that material

in reaching its decision.

In light of the delay caused by the petition to consolidate and the Panel’s

need to receive and review the parties’ supplemental submissions, and pursuant

to Rule 10(c), the date of the Panel’s expected decision is extended. A

decision is expected on or before November 30, 2001." [that date was subsequently

extended by the Panel, pursuant to Rule 10(c), to December 14, 2001].

On November 14, 2001, Complainant submitted a request to further supplement

the record with evidence that allegedly would show that, in a cancellation proceeding

before the United States Patent and Trademark Office, World Tele-Sports has

stated in interrogatory responses that it has not assigned licensed or authorized

Red Group to use the SANDS OF THE CARIBBEAN mark. Complainant also sought leave

to file a supplemental brief to address this evidence and the significance of

Respondent’s statements in its opposition to the Petition to Consolidate. Finally,

Complainant asked the Panel to consider the parties’ submissions in connection

with the Petition to Consolidate in ruling on the merits of this dispute. On

November 14, 2001, Respondent opposed these requests on the ground that they

would unnecessary lengthen this already delayed dispute. Because the Panel concludes

that the proffered evidence would not affect its decision, and because the Panel

believes that the parties’ submissions in connection with the Petition to Consolidate

are already part of the record of this matter, the Panel denies the Complainant’s

request.

4. Factual Background

Complainant is the owner of the registered SANDS trademark, which has been

used in connection with hotel and casino services in the United States since

1952. The original Sands Hotel in Las Vegas, Nevada, became famous as a hotel

and casino, attracting numerous celebrities and providing the setting for several

famous Hollywood films. The original Sands Hotel and Casino was demolished in

1996, and Complainant currently operates the Sands Expo and Convention Center

at the Venetian Resort-Hotel-Casino in Las Vegas, Nevada, and licenses the Sands,

a hotel and casino in Atlantic City, New Jersey.

Respondent is an affiliate of an Internet casino called "The Sands of

the Caribbean" operated by World Wide Tele Sports Company of Antigua and

Barbuda [sic], which has been active since August 1997. The Internet casino

has over 100,000 customers.

5. Parties’ Allegations

Complainant claims that the domain name <sandsofthecaribbean.com> is

confusingly similar to Complainant’s mark, as it is nothing more than the SANDS

trademark with a descriptive designation added at the end. Complainant states

that it has used geographical designations for Las Vegas and Atlantic City in

conjunction with its mark, so that "of the Caribbean" is likely to

create the impression that Respondent’s site is associated with Complainant.

Furthermore, Complainant claims that Respondent has no right or legitimate

interest in the domain name, because Complainant’s mark has been famous for

casino services for half a century. Complainant alleges that its mark is arbitrary

as applied to hotel and casino services, and is therefore entitled to strong

legal protections. Complainant further argues that there is no bona fide business

justification for using <sandsofthecaribbean.com> as a gambling site other

than to trade on the fame of Complainant’s mark.

Complainant also alleges that Respondent has registered and used the domain

name in bad faith. Complainant points to the prominence and placement of "SANDS"

on Respondent’s website as evidence of intentional attempts to profit from the

fame of Complainant’s mark. "SANDS" appears in all capital letters,

several times larger than "of the Caribbean," which appears almost

illegible on some portions of the site. Although Respondent has placed a disclaimer

of any affiliation with Complainant on its website, Complainant contends that

this is insufficient to cure the initial and illegitimate diversion of Internet

users. In addition, Complainant alleges that Respondent was constructively on

notice of Complainant’s registered mark and thus should be deemed to have acted

in bad faith. Finally, Complainant alleges that Respondent provided incomplete

and inaccurate registration information, initially providing only "New

York, NY 10020" with no street address or individual. Moreover, after Complainant

contacted WorldWide Telesports, Inc., the registrant of <thesands.com>

(another domain name that resolves to the same site as <sandsofthecaribbean.com>),

Respondent registered the domain name at issue the next day. Complainant contends

that the timing of the registration cannot credibly be attributed to coincidence

and instead evidences bad faith.

Complainant’s supplementary submission contains factual allegations the Panel

finds unnecessary to resolving the Complaint.

In its defense, Respondent claims that there is no confusion between "Sands"

and "Sands of the Caribbean." Respondent points to ninety-five registered

trademarks in the United States that consist of "Sands." Thus, Respondent

argues, Complainant has no exclusive rights in "Sands." Respondent

claims that, given the descriptive and common nature of the mark, Respondent

can use the domain name without any confusion with Complainant, and that Internet

users would not type in <sandsofthecaribbean.com> when looking for a hotel

and casino in Atlantic City, New Jersey. As a result, there is no confusing

similarity as required by the Policy.

Respondent states that the domain name at issue was selected because it is

evocative of the sands on a Caribbean beach and because Respondent’s affiliates

are based in the Caribbean. Respondent also argues that Complainant has no trademark

in South Africa, Antigua or Dominica, where Respondent has connections. Further,

Respondent alleges that there is no evidence that Complainant’s mark has international

fame, and that Respondent’s principals had never heard of the Sands Hotel.

Respondent argues that it has a legitimate interest because it has a valid

registered United States trademark for SANDS OF THE CARIBBEAN. Respondent states

that the trademark was applied for by its affiliate, World Wide Tele Sports

Company, on July 14, 1997, the trademark was published for opposition on June

30, 1998, and was registered on March 23, 1999. Respondent claims that Complainant’s

delay in objecting to the registration disproves any genuine issue of confusion.

Moreover, Respondent argues that it would be unfair to deprive it of a domain

name used in a business that has been operating since 1997 and that has processed

over $2 billion of wagers.

Respondent claims that there can be no bad faith, because it has its own trademark

registration and provided complete contact information. Respondent further argues

that, though it registered the disputed domain name after receiving a cease

and desist letter to its affiliate, Respondent’s position has always been that

Complainant has no rights to its domain name, and Respondent feared that Complainant

would wrongly register <sandsofthecaribbean.com> in an attempt to interfere

with Respondent’s business.

Finally, Respondent requests a finding of Attempted Reverse Domain Name Hijacking.

Respondent’s Supplementary Response brings the case of Grand Bay Management

Co. v. Allegory Investments, No. D2001-0874

(WIPO Sept. 21, 2001), to the Panel’s attention.

6. Discussion and Findings

Under Paragraph 4(a) of the Policy, Complainant must establish each of the

following elements in order to state a claim for transfer of a domain name:

(1) the domain name registered by Respondent is identical or confusingly

similar to a trademark or service mark in which Complainant has rights; and

(2) that Respondent has no rights or legitimate interests in respect

of the domain name; and

(3) that Respondent has registered and used the domain name in bad faith.

A. Identical or Confusingly Similar to Complainant’s Trademarks

Respondent argues that, because the Caribbean is associated with beaches, <sandsofthecaribbean.com>

is not identical or confusingly similar to Complainant’s SANDS trademarks. The

Panel concludes, however, that where the domain is comprised of the Complainant’s

trademark and a geographical addition, and where the mark is famous and the

domain name registrant is in the same general business as that of the trademark

owner, the domain name is "confusingly similar" to the trademark for

purposes of Paragraph 4(a)(i) of the Policy. See, e.g., Quaife Engineering,

Ltd. v. Luton, WIPO Case No. D2000-1201

(Nov. 14, 2000) (<quaifeusa.com> created impression that respondent was

complainant’s United States representative or distributor). Accordingly, Complainant

has satisfied its burden on the first factor.

B. Rights or Legitimate Interests

In this case, Respondent is hoist on its own petard: although a United States

trademark registration for SANDS OF THE CARIBBEAN could be evidence of a legitimate

interest sufficient to prevent a finding for Complainant given the summary nature

of proceedings under the Policy, Respondent vehemently insisted in its opposition

to the petition to consolidate that it is merely an "affiliate" of

World Wide Tele Sports, the actual owner of the trademark registration (contrary

to Respondent’s initial representation to the Panel, Response Paragraph 35,

that Respondent owned the registration, before the Petition for Consolidation

was filed). Moreover, both Respondent and the respondents in the Other Sands

Cases have certified that there is no common ownership or control among the

three of them. As a result, the existence of a trademark registration in another

party’s name is insufficient to prove that Respondent has rights or legitimate

interests in the domain name.

Nor is the name "sandsofthecaribbean" naturally or logically associated

with gambling; nor is it a generally laudatory term that could logically be

applied to numerous businesses. Respondent might have had a legitimate interest

in using "Sands of the Caribbean" to describe a travel site, a tourist

information site, or some other business directly related to Caribbean beaches,

but none of those circumstances are present, particularly given Respondent’s

insistence that it is a South African entity despite its United States contact

information.

The Panel concludes that Respondent lacks rights or legitimate interests in

the domain name at issue.

C. Bad Faith

One of the examples of bad faith is set forth in Policy, Paragraph 4(a)(iv)

– use of a domain name intentionally to attract Internet users to the website

for commercial gain by creating a likelihood of confusion with the Complainant's

mark. The use of a domain name incorporating Complainant’s world-famous mark

(which is arbitrary in relation to gambling) in exactly the field in which Complainant

operates fits within this category. Universal City Studios, Inc. v. G.A.B.

Enterprises, WIPO Case No. D2000-0416

(June 29, 2000).

It should be emphasized that it is not the simple incorporation of "SANDS"

into the domain name that evidences bad faith; the word "sands" is

common and in itself unobjectionable. It is the use of "SANDS" for

a gambling website. Internet users, when they see the domain name at issue as

a result of a search for gambling sites or direct advertising, may assume that

there is a connection between Respondent and Complainant because they use the

same name in the same field. The additional "of the Caribbean" in

the name is no protection, as many famous businesses have multiple locations

and may use domain names including geographic identifiers – such as, in this

case, the Sands Hotel and Casino in New Jersey and the Sands Expo and Convention

Center in Las Vegas. Cf. Quaife, supra.

Moreover, when an Internet user encounters Respondent’s website, "SANDS"

is the most prominent word identifying the site; "of the Caribbean"

is in significantly smaller and less clear type. This presentation further justifies

the conclusion that Respondent wishes to trade on the fame of Complainant’s

trademark, regardless of the presence of a small-print disclaimer that is unavailable

to Internet users until they have already entered this gambling site. Houghton

Mifflin Co. v. The Weathermen, Inc., WIPO Case

No. D2001-0211 (April 17, 2001); see also Easy Heat, Inc. v. Shelter

Products, WIPO Case No. D2001-0344 (June 14,

2001).

Although further evidence of bad faith is unnecessary, bad faith also is suggested

by the timing of the registration of the domain name. The domain name was registered

immediately after Respondent’s affiliate was notified by Complainant’s counsel

that Complainant objected to any use of "SANDS" in a domain name connected

to casino gambling.

7. Attempted Reverse Domain Name Hijacking

Because Complainant has sustained its burden under the Policy, the Panel denies

Respondent’s request for a finding of Attempted Reverse Domain Name Hijacking.

8. Decision

For all of the foregoing reasons, the Panel decides that Complainant has met

its burden of proof under paragraph four of the Policy. Accordingly, this Panel

concludes that the domain name at issue should be transferred to the Complainant.

David H. Bernstein

Presiding Panelist

G. Gervaise Davis

Panelist

Milton L. Mueller

Panelist

Dated: December 6, 2001

Footnote:

1. It is not appropriate for this Panel to

determine whether the remaining two cases should be consolidated. For the sake

of efficiency, and to avoid further delay in the resolution of these matters,

this Panel urges the Complainant and Respondents in the other two matters to

confer and, if they agree on consolidation, to promptly inform the Center so

that it can determine whether to appoint a single panel or two separate panels.

More cases by this complainant

• Las Vegas Sands, Inc. v. The Sands of the Caribbean — D2001-1157 · carsands.com, thesands.com, sandsofthecaribbean.com · Transfer · 25 Apr 2002
• Las Vegas Sands, Inc. v. George Samuel — D2001-1134 · thesands.com, carsands.com, sandsofthecaribbean.com · Transfer · 25 Apr 2002

Other cases for this domain

• Las Vegas Sands, Inc. v. The Sands of the Caribbean — D2001-1157 · carsands.com, thesands.com, sandsofthecaribbean.com · Transfer · 25 Apr 2002
• Las Vegas Sands, Inc. v. George Samuel — D2001-1134 · thesands.com, carsands.com, sandsofthecaribbean.com · Transfer · 25 Apr 2002