Gordon Gaming Corp. d/b/a Sahara Hotel & Casino v. 21LLC

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Gordon Gaming Corp. d/b/a Sahara Hotel & Casino v. 21LLC

Case No. D2003-0241

1. The Parties

The Complainant is Gordon Gaming Corp. d/b/a Sahara Hotel & Casino, of Las Vegas, Nevada, of United States of America, represented by Howrey Simon Arnold & White, LLP of United States of America.

The Respondent is 21LLC, of Salt Lake City, Utah, of United States of America.

2. The Domain Name and Registrar

The disputed domain name <saharalasvegas.com> is registered with Melbourne IT trading as Internet Name Worldwide.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 27, 2003. On March 28, 2003, the Center transmitted by email to Melbourne IT trading as Internet Name Worldwide a request for registrar verification in connection with the domain name at issue. On March 31, 2003, Melbourne IT trading as Internet Name Worldwide transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 1, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was April 21, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on was April 22, 2003.

The Center appointed M. Scott Donahey, Christopher Thomas and Carol Anne Been as panelists in this matter on May 7, 2003. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

Complainant's predecessor, Sahara-Nevada Corporation, registered with the United States Patent & Trademark Office (the "USPTO") the mark SAHARA in connection with hotel service and casino services, showing a first use in commerce in 1952. Complaint, Annex D. Both marks were transferred to the Complainant, effective September 30, 2002. Complaint, Annex E.

Complainant also asserts common law rights in the mark SAHARA LAS VEGAS based on longstanding use of the mark in trade. Since its opening in October 1952, Complainant has used SAHARA LAS VEGAS on gaming chips, signs, advertisements, ashtrays, etc. Complaint, Annexes H, I, J, K, L, and M.

Respondent registered the domain name at issue on March 29, 2000. Complaint, Annex A. The domain name resolves to an "Under construction" web site.

Respondent has registered other trademarked names of hotels and casinos located in Las Vegas, Nevada, United States of America, including <ballyslasvegas.com>, <caeserslasvegas.com>, <excaliburlasvegas.net>, <excaliburlasvegas.org>, <lasvegasmontecarlo.com>, <lasvegasnewyorknewyork.com>, <lasvegastreasureisland.com>, and <mgmgrandlasvegas.com>. Complaint, Annex V.

A company identified as "M-K Park" located at the same address as that given by Respondent applied for a trademark on the phrase SAHARA LAS VEGAS in connection with the dissemination of advertising for real estate agencies and with credit card transactions. That effort was abandoned on March 12, 2002, for failure to respond to an office action. Complaint, Annex S.

5. Parties’ Contentions

A. Complainant

Complainant contends that the domain name at issue is confusingly similar or identical to service marks in which Complainant has rights, that Respondent has no rights or legitimate interests in respect of the domain name at issue, and that Respondent has registered and is using the domain name at issue in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel

is to use in determining the dispute: "A Panel shall decide a complaint

on the basis of the statements and documents submitted in accordance with the

Policy, these Rules, and any rules and principles of law that it deems applicable."

Paragraph 4(a) of the Policy directs that the Complainant must prove each of

the following:

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

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

and,

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

the domain name; and,

3) that the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the domain name at issue is confusingly similar to Complainant's

registered trademark in that it includes the registered service mark in the

domain name. Wal-Mart Stores v. MacLeod, d/b/a For Sale, WIPO

Case No. D2000-0662. The Panel also finds that the domain name at issue

is identical to the common law service mark SAHARA LAS VEGAS in which

the Complainant has rights. Busy Body, Inc. v. Fitness Outlet Inc. WIPO

Case No. D2000-0127.

B. Rights or Legitimate Interests

Complainant has alleged that Respondent has no rights or legitimate interests

in respect of the domain name at issue. Respondent has failed to respond. The

Panel is entitled to infer that Respondent has no rights or legitimate interests

in respect of the domain name at issue. Parfums Christian Dior v. QPR Corporation,

WIPO Case No. D2000-0023.

C. Registered and Used in Bad Faith

Respondent is not currently making any use of the domain name at issue. However,

Respondent has registered several other names and service marks of Las Vegas

hotels and Casinos. One can infer from this, and from the fact that Complainant's

hotel and casino is one of the oldest and most well-known of the Las Vegas hotels

and casinos that Respondent must have been aware of Respondent's service mark

rights at the time that Respondent registered the domain name at issue, almost

50 years after Complainant began using the service mark.

There is no evidence that Respondent has used the domain name at issue. Complainant's

speculation as to possible uses which Respondent might have in mind for the

domain name is just that, mere speculation. However, Respondent's lack of use

does not end this enquiry.

The Examples in Paragraph 4(b) are intended to be illustrative, rather than

exclusive. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO

Case No. D2000-0003.

In Telstra it was established that "inaction" can constitute bad faith

use, and the Telstra decision has since been cited for that proposition

and followed by subsequent Panels. Ingersoll-Rand v. Frank Gully, d/b/a Advcomren,

WIPO Case No. D2000-0021; Guerlain,

S.A. v. Peikang, WIPO Case No. D2000-0055;

Compaq Computer Corp. v. Boris Beric, WIPO

Case No. D2000-0042; Association of British Travel Agents Ltd. v. Sterling

Hotel Group Ltd., WIPO Case No. D2000-0086;

Sanrio Co. Ltd. and Sanrio, Inc. v. Lau, WIPO

Case No. D2000-0172; 3636275 Canada, dba eResolution v. eResolution.com,

WIPO Case No. D2000-0110; Marconi Data

Systems, Inc. v. IRG Coins and Ink Source, Inc., WIPO

Case No. D2000-0090; Stralfors AB v. P D S AB, WIPO

Case No. D2000-0112; InfoSpace.com, Inc. v. Ofer, WIPO

Case No. D2000-0075.

Telstra established that whether "inaction" could constitute bad faith

registration and use could only be determined by analyzing the facts in a given

case.

In the present case, Respondent has registered numerous domain names corresponding

to the trade names and service marks of well known Las Vegas hotels and casinos.

When Respondent attempted to register the service mark SAHARA LAS VEGAS, Respondent

must have become aware of Complainant's registered service mark rights in SAHARA.

Respondent or a related entity failed to respond to an office action resulting

in abandonment of its service mark application. Respondent has made no use of

the domain name at issue in the more than three years since it registered the

domain name. Respondent has failed to respond to the allegations in the Complaint.

Given all of the above facts, the Panel finds that Respondent's "inaction" constitutes

bad faith registration and use as first analyzed in Telstra.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy

and 15 of the Rules, the Panel orders that the domain name at issue, <saharalasvegas.com>,

be transferred to the Complainant.

M. Scott Donahey

Presiding Panelist

Christopher Thomas

Panelist

Carol Anne Been

Panelist

Dated: May 27, 2003

More cases by this complainant

• Gordon Gaming Corp. d/b/a Sahara Hotel & Casino v. E-Casino Marketing — D2003-0242 · saharacasino.com · Transfer · 27 May 2003