Wipo arbitration and Mediation Center administrative panel decision las Vegas Sands, Inc V. The Sands of the Caribbean D2001-1157 Las Vegas Sands, Inc V. George Samuel D2001-1134 Consolidated Cases Nos. D2001-1134 and 1157
ADMINISTRATIVE PANEL DECISION Las Vegas Sands, Inc .v. The Sands of the Caribbean D2001-1157
Las Vegas Sands, Inc .v. George Samuel D2001-1134 Consolidated Cases Nos. D2001-1134 and 1157 1. The Parties The Complainant is Las Vegas Sands, Inc., of 3355 Las Vegas Boulevard, Las Vegas, Nevada, United States of America.
The Respondents are George Samuel and The Sands of the Caribbean both of 1 Independence Drive, Bencorp Building, 5th Floor, St. John's, Antigua and Barbuda.
2. The Domain Name and Registrar The domain names at issue are: and and the Registrar is: Network Solutions, Inc.
3. Procedural History 3.1 Procedural History of Case D2001-1134 The WIPO Arbitration and Mediation Center [the Center] received the Complaint in Case D2001-1134 on September 18, 2001, [electronic version] and on September 19, 2001, [hard copy]. The Center verified that the Complaint satisfies the formal requirements of the ICANN 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]. The Complainant made the required payment to the Center.
The formal date of the commencement of Case D2001-1134 is September 26, 2001.
On September 20, 2001, the Center transmitted via email to Network Solutions, Inc a request for registrar verification in connection with Case D2001-1134 and on September 25, 2001, Network Solutions, Inc transmitted by email to the Center Network Solutions' verification response confirming that the registrant is George Samuel and that the contact for both administrative and billing purposes is Energis Squared Ltd of The Whitehouse, Melbourne Street, Leeds, West Yorkshire LS2 7PS, United Kingdom.
Having verified that the Complaint satisfied the formal requirements of the Policy and the Rules, the Center transmitted on September 26, 2001, to all the e-mail addresses provided by the Registrar (and the Complainant), this Notification of Complaint and Commencement of the Administrative Proceeding. The Center advised that the Response was due by October 16, 2001. On the same day the Center transmitted by fax and by mail copies of the foregoing documents to all addresses as provided by the Registrar and Complainant.
A Response was received from the Respondent on October 16, 2001, [electronic version] and on November 6, 2001, [hard copy]. On October 18, 2001, Acknowledgement of Receipt of Response was sent to the Respondent by e-mail, copying the Complainant, using the contact details for the Respondent’s authorized representative as provided in the Response. On October 18, 2001, the Complainant requested leave to amend the Complaint to request a transfer of the domain name in issue , rather than cancellation of that domain name.
Also on October 18, 2001, the Complainant made a request to consolidate the Complaint in Case No. D2001-1057 with these two other Complaints [Case Nos. D2001-1134 and 1157]. In Case No. D2001 1057 the Respondent was Red Group of San Francisco, United States of America. That request was subsequently denied by the Panel in Case No. D2001 1057.
Having received Declarations of Impartiality and Independence and Statements of Acceptance, the Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Hilary Phillips QC, Neil Arthur Smith and David Perkins were formally appointed as the Panel. The Projected Decision Date was December 31, 2001. The Panel finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the Supplemental Rules.
3.2 Procedural History of the Case D2001-1157 The Center received the Complaint in Case D2001-1157 on September 21, 2001, [electronic version] and on September 26, 2001, [hard copy]. The Center verified that the Complaint satisfies the formal requirements of the Policy, the Rules, and the Supplemental Rules. The Complainant made the required payment to the Center.
The formal date of the commencement of Case D2001-1157 is September 27, 2001.
On September 24, 2001, the Center transmitted via email to Network Solutions, Inc., a request for registrar verification in connection with Case D2001-1157 and on September 25, 2001, Network Solutions, Inc., transmitted by email to the Center Network Solutions' verification response confirming that the registrant of the domain name is The Sands of the Caribbean and that the contact for both administrative and billing purposes is Energis Squared Ltd of The Whitehouse, Melbourne Street, Leeds, West Yorkshire LS2 7PS, United Kingdom.
Having verified that the Complaint satisfied the formal requirements of the Policy and the Rules, the Center transmitted on September 27, 2001, to all the e-mail addresses provided by the Registrar (and the Complainant), this Notification of Complaint and Commencement of the Administrative Proceedings. The Center advised that the Response was due by October 17, 2001. On the same day the Center transmitted by fax and by mail copies of the foregoing documents to all addresses as provided by the Registrar and Complainant.
A Response was received by the Respondent on October 17, 2001, [electronic version] and November 6, 2001, [hard copy]. On October 18, 2001, Acknowledgement of Receipt of Response was sent to the Complainant and to the Respondent using the same contact details and methods as were used for the Notification of Complaint and Commencement of the Administrative Proceedings.
Having received Declarations of Impartiality and Independence and Statements of Acceptance, the Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Hilary Phillips Q.C., Neil Arthur Smith and David Perkins were appointed as the Panel. The Projected Decision Date was December 31, 2001. The Panel finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the Supplemental Rules.
3.3 Procedural History of Consolidated Cases D2001-1134 and D2001-1157 On December 11 and 18, 2001, the Complainant made the following requests in both cases. First, to submit new evidence. Second, that the Panel be provided with the Decision in Case No. D2001-1057 . Third, that these two cases be consolidated. On December 20, 2001, the Complainant clarified, at the Center's request, the content of the additional proposed new evidence.
On January 8, 2002, the Panel ordered that
. the two Cases should be consolidated;
. the Complainant should have leave to submit the new evidence by January 11, 2002;
. the Respondent should have until January 18, 2002, within which to answer such additional new evidence; and
. that the date for decision of the consolidated cases be extended to February 2, 2002.
On January 11, 2002, [electronic version] and on January 15, 2002, [hard copy] the Center received a Supplemental Declaration of Gary A Hecker with Annexes 20 to 32 on behalf of the Complainant.
The Respondent requested an additional week within which to respond and this was granted by the Panel. At the same time the date for decision of the consolidated cases was extended by a corresponding period to February 12, 2002.
On January 25, 2002, [electronic version] and on January 29, 2002, [hard copy] the Center received a Response from the Respondent to the additional submission from the Complainant with additional Respondent's Exhibits R to U.
Having reviewed the communication records in the case file, the Administrative Panel finds that the Center has discharged its responsibility under paragraph 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondents". Therefore, the Administrative Panel shall issue its Decision based upon the Complaint, the Response, the Supplemental Evidence from the Complainant, the Response from the Respondent thereto, the Policy, the Rules and the Supplemental Rules.
This was opened in 1952 and demolished in 1996. Many famous personalities stayed at the Sands Hotel over the years, including Presidents Truman and Kennedy and the so-called Rat Pack [Frank Sinatra etc] whose film Ocean’s Eleven was filmed at the hotel. Merchandise commemorating the Rat Pack's performances and escapades at the Sands resort hotel and casino are apparently still available.
4.1.2 The Sands Expo and Convention Center, Las Vegas This Convention Center is located at the Venetian Resort - Hotel-Casino, which was built to replace The Las Vegas Sands Resort, Hotel and Casino. It is said to be one of the most widely used and best convention centres in the world. The Complainant states that it has spent millions of dollars to promote the Center. Information about the Center is located under SANDS EXPO at the website.
4.1.3 The Sands Resort Hotel and Casino, Atlantic City This is the second largest gambling destination in the United States. The SANDS trademark is used under licence from the Complainant. A website promoting the Sands Resort Hotel and Casino may be found at .
4.1.4 The SANDS trademark The Complainant is the owner of US Trademark Registration No. 1,209,102 for SANDS in Classes 41 and 42 respectively for entertainment services, namely providing stage shows, gambling and casino services [Class 41] and for hotel, restaurant and lounge services [Class 42]. First use in commerce of the SANDS mark was 1952, the date when The Las Vegas Sands Resort Hotel and Casino was launched [paragraph 4.1.1 above]. The mark was registered on September 14, 1982. Annexed to the Complaint is documentary evidence of assignment of the registration to the Complainant.
4.2 The Respondent
4.2.1 World Wide Telesports World Wide Telesports [WWTS] is located at the same address as the Respondent in both cases. WWTS owns or controls the Respondent, The Sands of the Caribbean [Case D2001-1157] and George Samuel, the Respondent in Case D2001-1134, is the General Manager of WWTS.
4.2.2 The Domain Names in Issue was first registered on May 21, 1997 and was transferred to George Samuel on February 2, 2001. was registered by The Sands of the Caribbean on November 20, 2000. Both domain names are said to be owned by The Sands of the Caribbean and have been used by that entity and its predecessors in interest since at least May 1997 in connection with on-line gambling services.
4.2.3 WWTS and its business . WWTS is the owner of US registered trademark No. 2,235,283 SANDS OF THE CARIBBEAN in Class 36 for on-line casino and sports betting. The mark was registered on March 23, 1999 and claims first use in commerce from August 1997. In March 2001, the Complainant filed a Petition with the US Patent and Trademark Office to cancel that registration on the basis of its earlier U.S trademark registration No. 1,209,102 [see paragraph 4.1.4 above]. In June 2001, WWTS filed an Answer and Counterclaim to that Petition, seeking cancellation of the Complainant's SANDS registration.
. In March 1998 proceedings were brought in the Southern District Court of New York by the United States Government against William Scott and Jessica Davis alleging that WWTS is engaged in operating a sports betting business over the Internet in contravention of the US Wire Communications Act of 1961 [18 USC 1084]. An Affidavit from a Federal Bureau of Investigation agent describes that WWTS offers a toll free telephone number in the United States providing information concerning sports betting and how to open a betting account. Wagers, backed up by a US dollar account established with British American Insurance in Antigua, can then be placed by a registrant through an allocated PIN. The affidavit states that Mr Scott is the owner of WWTS - which Mr Scott denies - and that Ms. Davis is the President of WWTS.
. The Complainant's Supplementary Complaint exhibits this Complaint under the 1961 Act, warrants for the arrest of Mr Scott and Ms Davis also dated March 1998 and articles from 5 newspapers and magazines relating to the US Government's actions against a number of US citizens operating online gambling from islands in the Caribbean, including Mr. Scott and Ms. Davis.
. According to a New York Times article wagering on sports is illegal everywhere in the United States, except for Nevada and Oregon. However, there are some 60 offshore sports books in operation throughout the Caribbean and Central America, 25 of which are based in Antigua where, in 1994, a free trade zone was established to facilitate that business. In Antigua, the government fee for telephone gambling operations is $75,000 and for on-line companies $100,000. WWTS is reported to have 85 employees. Another publication, Gambling Magazine, reports that WWTS accepts an average of 35,000 bets a week and is one of some 300 online gambling operations operating on the Internet.
. In February 2000, a Mr Jay Cohen of World Sports Exchange, another Antigua based online sports betting entity, was reported as convicted under the US 1961 Wire Communications Act. That conviction was upheld on appeal in July 2001.
. A print out dated January 10, 2002, from The Sands of the Caribbean website is exhibited. This features the words SANDS in upper case prominently by comparison to the full name. It also carries a disclaimer in the following terms:
The Sands of the Caribbean ® is not affiliated in any way with Sands of Atlantic City or Sands of Las Vegas.
. In the Response to the Complainant's Supplementary Complaint, the inter-relationship of the Respondent entities is clarified.
- The Respondent in Case No. D2001-1157, The Sands of the Caribbean, is a business entity owned and operated by Caribbean Casino Management Holdings Ltd [CCMH].
- CCMH is the assignee of US trademark Registration No. 2,235,283 SANDS OF THE CARIBBEAN from WWTS.
- CCMH operates a website for online casino gambling.
- CCMH and WWTS are co-owned legal affiliates.
- Neither CCMH nor WWTS are in common ownership with Red Group, a South African Company and the Respondent in WIPO Case No. D2001-1057, which is referred to further in paragraph 5.7.7 below.
. As to proceedings brought against Mr Scott and Ms Davis under the US Wire Communications Act of 1961, and the 5 publications exhibited to the Complainant's Supplementary Complaint, the Respondent says the following:
- The US Government has taken no action on the 1998 Complaint and warrants, which are described as stale.
- The newspaper / magazine articles illustrate that the legal basis for complaints under the 1961 Act is murky.
- Online casino gambling is both legitimate and licensed by the Government of Antigua.
- Online casino gambling is accepted as a legitimate business throughout most of the world.
- The United States is the only nation to file complaints regarding online gambling and has successfully prosecuted only one on-line gambling business, which related to sports betting.
- The Sands of the Caribbean website to which the two domain names in issue and resolve is recognised as a legitimate licensed online casino operating on the Internet and accessible throughout the world. The applicability of US laws to such casinos is as yet unresolved.
5.The Parties' Contentions 5.1. The Complainant's SANDS Trademark 5.1.1 The Complainant relies upon its US registered service mark for SANDS which was issued in 1982, and was first used in commerce in 1952 [paragraphs 4.1.4 above].
5.1.2 The Complainant further relies upon use under license of that SANDS mark by the Sands Expo and Convention Center at the Venetian Resort Hotel Casino, Las Vegas [which is the successor business to the Las Vegas Sands Resort Hotel and Casino demolished in 1996] and by The Sands Resort Hotel and Casino, Atlantic City, New Jersey [paragraphs 4.1.2 and 4.1.3 above].
5.1.3 The Complainant also relies upon the notoriety of the former Las Vegas Sands Hotel Resort and Casino memorabilia relating to which and events which feature it are still available today. In short, the Complainant's case is that the SANDS name and mark is very well known and that due to the Complainant's long and continuous use of that mark, consumers associate SANDS with casino, hotel, restaurant and entertainment services provided by the Complainant and the Complainant alone.
5.2 The Respondent's Case on the SANDS Mark 5.2.1 The historical significance of the SANDS mark was extinguished with the very public demolition in 1996 of the Las Vegas Sands Hotel and Casino.
5.2.2 As to the Complainant's licensee, the Atlantic City Sands Hotel and Casino, it filed for Chapter II bankruptcy in 1998 but was taken over and refinanced by Carl Icahn. It is his name and reputation which has since been used to try to resurrect the business.
5.2.3 There are numerous third party SANDS US trademark registrations in the relevant classes which are quite unrelated to the Complainant. They include:
Applied for / Registered
August 10, 1999 filed
December 5, 1996 filed
SANDS OCEANFRONT RESORTS
September 17, 1993 filed
36 & 41
May 3, 1995 filed
SANDS OF GOLD
9, 21, 23, 26, 36 & 38
October 10, 2000 filed
5.2.4 There are several third party online gambling websites which include the word SANDS. For example:
SANDS Ocean Club Resort, Myrtle Beach, South Carolina
5.2.7 It is, therefore, plain on the evidence that the Complainant has not been active in the hotel and casino industry in Las Vegas for the last 5 years. With regard to the Complainant's licensee in Atlantic City, its continued operation depends on the goodwill and name of Carl Icahn, not the SANDS name.
5.2.8 It follows that whatever fame and distinction the Complainant may once have enjoyed in the SANDS name and mark has become so diluted that it can now be viewed only as a generic and commonly used term in the hotel and casino industry. The Respondent says that as a matter of US law an entity cannot maintain rights in a mark which is generic, citing Pilates Inc .v. Current Concepts Inc [120 F. Supp. 2d 286, 57 USPQ 2d 1174 SDNY Oct. 19, 2000].
This was an action involving two registered trademarks for the word PILATES for goods and services in connection with exercise equipment. The Court held that both registrations were invalid since, on the evidence, both were generic and, if there ever was a PILATES trademark, it had been abandoned long before the Plaintiff applied for its registration. This was despite the fact that the PILATES service mark [registered in 1986] was incontestable pursuant to 15 USC §1065.
The facts of the case established that the PILATES name had been derived from a German national, Joseph Pilates, who emigrated to the United States in the mid 1920's and developed a successful training / exercise studio in New York City. Apparently, Mr & Mrs Pilates never did anything to prevent others from using their name to describe what they taught. Indeed, their wish was to disseminate the exercise programme as widely as possible for the benefit of all. On the facts, the PILATES mark became widely used by a number of different gyms / studios. Then in 1992, the Plaintiff acquired the trademark registrations and by establishing a network of license agreements set about resurrecting the mark.
On its facts, the PILATES case is really quite different from the facts of the consolidated cases to be decided by this Panel and can, in the Panel's view, only be relevant to establish the proposition that a registered trademark can in certain circumstances become generic and unenforceable. Those circumstances will depend upon the facts of each case. The proposition itself is based on earlier decisions such as Park 'n Fly Inc .v. Dollar Park and Fly Inc (1985) and Abercrombie & Fitch .v. Hunting World (1976).
The Respondent also cites the following cases decided under the Policy:
Vertical Computer Systems Inc .v. Registrant of "pointmail.com" [WIPO Case No. D2001-0006]
There the Panel found the Complainant's POINTMAIL mark to be descriptive and not rising to the level of a trademark as required by the Policy. It amounted to no more than the simple conjunction of the descriptive word point with the generic word mail.
CRS Technology Corp .v. Condenet Inc [NAF Case No. FA0002000093547]
There the Complainant succeeded in establishing that the domain name of the Respondent was identical to its CONCIERGE Canadian trademark for computer programs. Clearly, this Decision does not assist the Respondent in its assertion that the SANDS name and mark has become generic.
EAuto L.L.C. .v. Net Me Up [WIPO Case No. D2000-0104]
There the Panel held that the domain name in issue was confusingly similar to the Complainant's EAUTO US registered trademark, "… notwithstanding that EAUTO is on the weaker side of the range of distinctive marks". Again, the Decision does not assist the Respondent in relation to the issue of the alleged genericness of the SANDS mark. The Panel went on to say:
“The Panel expressly rejects Respondent's claim that its name is not confusingly similar to the mark EAUTO and the domain name eauto.com because Complainant's US trademark registration for the Mark is overbroad, and therefore invalid. Even if the trademark registration were subject to attack (an issue this Panel need not reach), it would be sufficient for Complainant to rely on its common law rights in the eauto.com mark. Ownership of a registration is not a prerequisite to filing an action for abusive domain name registration.”
Shirmax Retail Ltd .v. C.E.S. Marketing Inc [eResolution Case No. AF 0104]
There the Panel found that the Respondent's domain name was identical to the Complainant's Canadian trademark THYME for maternity clothing. Again, although the Complaint failed for other reasons as did the Complaints in the CONCIERGE and EAUTO cases, this decision does not assist the Respondent in relation to demonstrating the Complainant's alleged lack of trademark rights in SANDS in this case.
5.3 Confusing Similarity: the Complainant's Case 5.3.1 The Respondents' use of both domain names in issue is certain to cause confusion with the Complainant's SANDS trademark.
5.3.2 Both parties provide casino services. The dominant portion of both domain names is SANDS. Consumers are likely to believe that the Complainant has established an online casino or that the Respondent's services are otherwise sponsored by or associated with the Complainant.
5.3.3 Because the Complainant's SANDS US service mark is incontestable and gives the Complainant exclusive right to use that mark [15 USC § 1065 and 1115(b)], the Complainant must succeed in establishing likelihood of confusion as required by paragraph 4(a)(i) of the Policy. The Complainant cites in this respect Toyota Motor Sales USA .v. Raji Hamid dba Automobile Buyer [WIPO Case No. D2001 0032]. That case concerned 13 domain names, each of which incorporated as part of the domain name the Complainant's LEXUS trademark. That trademark was incontestable [15 USC § 1065] and the Complainant relied on its LEXUS registrations as evidence of its exclusive right to use that mark [15 USC § 1115]. No Response was filed by the Respondent. In the absence of any challenge to the validity of its LEXUS registrations, the Panel found that the Complainant had enforceable rights in the trademark and that the domain names in issue were confusingly similar to that mark.
The distinction with the present case is, of course, that the Respondent challenges the Complainant's rights in the SANDS trademark.
5.3.4 Because the primary distinctive element incorporated in both domain names in issue is SANDS, confusing similarity for the purposes of paragraph 4(a)(i) of the Policy follows. Here the Complainant cites a raft of cases decided under the Policy. They are:
Adaptive Molecular Technology Inc .v. Woodward [WIPO Case No. D2000-0006]
There the domain name in issue was , the Complainant being the owner of US and international trademarks for MILITEC and design for chemical based metal conditioning fluids and lubricants. The Respondent retailed the Complainant's MILITEC-1 product at its website at . Held, the domain name was confusingly similar, since it comprised the primary, distinctive element of the Complainant's trade name.
AT&T Corp .v. World Class Media.com [WIPO Case No. D2000-0553]
Adding geographical names did not avoid likelihood of confusion. The domain names and were held to be confusingly similar to the Complaint's AT&T trademark and service mark registrations.
America Online Inc .v. Dolphin@Heart [WIPO Case No. D2000-0713]
The domain names ; ; ; and were held to be confusingly similar to the Complaint's AOL registered service mark. The Panel stated:
"The addition of a place name generally does not alter the underlying mark to which it is added."
Wal-Mart Stores Inc .v. Wal market Canada [WIPO Case No. D2000-0150]
There the domain name was held to be confusingly similar to the Complainant's WAL-MART trademark.
Toyota Motor Sales U.S.A. .v. Rafi Hamid dba ABC Autombile Buyer referred to in paragraph 5.3.3 above.
Cellular One Group .v. Paul Brien [WIPO Case No: D2000-0028]
There the domain name was held to be confusingly similar to the Complainant's CELLULAONE U.S. and international trademark registrations.
5.3.5 The Complainant also asserts that points of similarity of conflicting marks are weighed more heavily in determining likelihood of confusion under US law than points of difference. In support of this proposition the Complainant cites two cases. They are:
GoTo.com Inc .v. Walt Disney Co [202 F. 3d. 119, 1206 (9th Cir. 2000)]
This case concerned the Plaintiff's GoTo logo used on its website which contained a pay-for-placement search engine, which allowed consumers to locate items on the web. This mark was held to be infringed by Disney's logo for its web portal, the Go Network which was launched some months after the Plaintiff began to use its GoTo logo. On the facts, the Court found the two logos to be "overwhelmingly similar". In coming to that conclusion the Court applied, inter alia, the axiom
"Similarities are weighed more heavily than differences."
Brookfield Communications Inc .v. West Coast Entertainment Corp [174 F. 3d 1036, 1054 - 55 (9th Cir. 1999)].
The Plaintiff owned the MOVIEBUFF registered trademark for software featuring a searchable database containing entertainment industry related information. The Defendant, West Coast, operated over 500 video rental stores and intended to launch a website at . The Plaintiff was awarded a preliminary injunction to restrain such infringement of its MOVIEBUFF trademark registration. In addressing likelihood of confusion, the Court - as in the GoTo case - applied the Sleekcraft factors holding that the respective marks
"… must be considered in their entirety and as they appear in the market place … with similarities weighed more heavily than differences."
5.3.6 Use of the name SANDS in both the URL and the Respondent's homepage is grossly disproportionate in size to any of the adjacent words on that homepage. The Complainant concludes that the Respondent is thereby clearly trying to associate itself with the Complainant in order to capitalise on the Complainant's goodwill built up over the decades in the casino industry.
5.3.7 The way the disclaimer [see paragraph 4.2.3 above] is buried away in the Respondent's website is another indication of likelihood of confusion. Here the Complainant cites a further three Decisions under the Policy. They are:
Esteé Lauder .v. estelauder.com et al [WIPO Case No. D2000-0869]
The domain names in issue and <.net> resolved to two customer complaint sites. Those sites contained several disclaimers to the effect that they were not affiliated with Esteé Lauder. The sites also expressly stated that they were non-commercial and non-profit advocacy sites in exercise of rights under the First Amendment (i.e. free speech) of the US Constitution. The Panel found confusing similarity, stating
"… the domain names used would be of little use to Respondent if they were not of sufficient confusing similarity with Complainant's trade or service marks so as to attract potential complainants. In fact, Respondent's domain names are clearly, and intentionally, confusingly similar to Complainant's marks."
E.& J. Gallo Winery .v. Hanna Law Firm [WIPO Case No. D2000-0615]
The domain names in issue were and <.net>, the Complainant Gallo being the owners of US and international trademark registration for BARTLES & JAYMES . The Respondent Hanna Law Firm replied that the domain names were registered for consumer complaint sites to enable constitutionally protected Consumer Advocacy Free Speech. The Panel found both identity and confusing similarity for the purposes of paragraph 4(a)(i) of the Policy. The fact that the sites contained disclaimers that they were not affiliated with Bartles & Jaymes did not alter this.
DFO, Inc .v. Christian Williams [WIPO Case No. D2000-0181]
The domain name in issue was , the Complainant being the owner of the Dennys restaurant chain. The Respondent stated that the domain name was to be used for a website functioning as a chat group for DENNY'S restaurant patrons and pointed to a disclaimer appearing on that website. The Panel found confusing similarity.
5.3.8 With reference to the domain name in issue, it is no more than the Complainant's famous SANDS trademark preceded by the geographical descriptor "car" as an abbreviation for Caribbean. The homepage for indicates that the owner of the Respondent, Sands of the Caribbean, is located in Antigua and Dominica, both Caribbean islands. Through use of Sands of the Caribbean, is designed to create the impression that it is an online casino operated or otherwise sponsored by the Complainant in the Caribbean. The Complainant relies on the cases cited in paragraphs 5.3.3 to 5.3.5 above.
5.4 Confusing Similarity: the Respondent's Case 5.4.1. The Complainant's SANDS trademark is a generic and commonly used term in the hotel and casino industry [see paragraph 5.2 above] so that confusing similarity cannot occur.
5.4.2 The Complainant's Supplementary Complaint exhibits evidence in the form of the newspaper and magazine articles which demonstrate that the online casino, Sands of the Caribbean, which operates in respect of the domain names and is a respected and dominant online casino known throughout the world.
5.4.3. The Complainant has produced no evidence of actual confusion between the online casino Sands of the Caribbean and the two domain names in issue with the SANDS trademark.
5.5 Rights or Legitimate Interests: the Complainant's Case 5.5.1 Respondent's use of the domain names in issue has not been authorised by the Complainant.
5.5.2 Given the fame of the Complainant's SANDS mark in relation to hotel and casino services for half a century, the Respondents cannot have any rights or legitimate interests in respect of the two domain names, particularly in relation to activities involving gaming or casinos.
5.5.3 The Complainant's SANDS mark is arbitrary in relation to hotel and casino services and, as such, is distinctive. Where a Complainant's trademark is well known - as it is in this case - registration of a confusingly similar domain name without a good faith business justification cannot be legitimate. Although not stated in so many words, the Complainant's case appears to be that the Respondent's use of the domain names is not in connection with a bona fide offering of services and/or is not a fair use of the SANDS trademark in the sense that it misleadingly diverts consumers and/or tarnishes that trademark.
5.5.4 The Complainant cites the following Decisions under the Policy.
Royal Crown Company Inc .v. New York Broadcast Services Inc [WIPO Case No. D2000-0315]
The domain name in issue was and the Complainant had sold its DIET RITE soft drinks for decades under its US trademark registered in 1954. Held that the Respondent had failed to bring itself within any of the circumstances prescribed by paragraph 4(c) of the Policy or any other factors which might establish rights or legitimate interests in respect of the domain name.
The Toyota [LEXUS] case referred to in paragraph 5.3.3 above, where the Respondent was an employee of an authorised LEXUS Dealer and where officials from Toyota in Japan had commended him on his ingenuity for his ideas for e-commerce marketing Toyota vehicles. Held that communications received by the Respondent from LEXUS Dealerships and from corporate Toyota officials did not constitute a license to use the LEXUS trademark. Any marketing done under the domain name in issue was done on behalf of the Dealerships or Toyota. No rights or legitimate interests to that domain name were thereby created.
Yahoo! Inc .v. Eitan Zviely et al [WIPO Case No. D2000-0273]
Some 37 domain names were in issue, including ; ; ; etc. No Response was filed. The Complaint succeeded.
Chanel Inc .v. Estco Technology Group [WIPO Case No. D2000-0413]
The domain names in issue were and . Held that the Respondent's elaborate business plan to interconnect the two domain names with the Respondent's fashion information portal at designerglobe.com could not constitute a bona fide use of the Complainant's CHANEL trademark, nor could it be fair use. The Respondent failed to demonstrate rights or legitimate interests in respect of the domain names.
Christie's Inc .v. Tiffany's Jewellery Auction Inc [WIPO Case No. D2001-0075]
The domain name was , which the Respondent used for its website offering catalogues of jewellery for which customers could bid using a link to an eBay auction site. The Panel held that this was not a legitimate use of the Complainant's famous CHRISTIE'S trademark. It was instead an infringing use to attract visitors to the Respondent's more modest operation.
Veuve Cliquot Ponsardin, Maison Fondée en 1772 .v. The Polygenix Group Co [WIPO Case No. D2000-0163]
The domain name in issue was . Held, the Respondent had no rights or legitimate interests in that domain name. The Complaint succeeded, the nub of the decision resting on the issue of registration and use in bad faith. In that connection, the Panel stated.
is so obviously connected with such a well known product that its very use by someone with no connection with the product suggests opportunistic bad faith.
5.6 Rights or Legitimate Interests: the Respondent's case 5.6.1 The sophisticated purchasers of online gambling services know that the domain name connects to the website of The Sands of the Caribbean.
5.6.2 The Complainant has no interest in online gambling services and has never offered such services.
5.6.3 Sophisticated purchasers of online gambling services could not, therefore, confuse either of the domain names in issue with the Complainant.
5.6.4 The Complainant first notified WWTS of its dispute in relation to > domain name on November 3, 2000. That domain name was registered in May 1997 and has been used in connection with online gambling services since that date by predecessors in interest to the Respondent.
5.6.5 Therefore, more than three years prior to receiving that notice, the Respondent through its predecessors in interest had begun using that domain name in connection with bona fide online gambling services. In that respect, the Response cites two decisions under the Policy.
Sweeps Vacuum & Repair Center Inc .v. Nett Corp
[WIPO Case No. D2001 0031]
The domain name in issue was , which was used by the Respondent to resolve to a site on which was located a directory page featuring links to various sites involving sweepstakes and related games. This use had begun at least six months prior to receiving the Complainant's cease and desist letter. This was a bona fide descriptive use of the types of businesses (sweepstakes related) listed on the directory. Held, that the Respondent had established rights and legitimate interests in the domain name under, inter alia, paragraph 4(c)(i) of the Policy.
Wherehouse Entertainment Inc .v. The Wherehouse? Inc
[WIPO Case No. D2001-0035]
The domain name in issue was . The Complainant's THE WHEREHOUSE trademark had been registered and used since 1970. That use was in the United States and internationally and was well known in the media retail industry.
The Respondent registered the domain name in issue in September 1998 but since 1977 had used the unique spelling wherehouse in connection with its banquet-related goods and services business. First notice of the dispute was the Complainant's cease and desist letter of October 1999. Held that the Respondent had used that name for 24 years and that it had become commonly known by that name. There was also strong evidence of fair use of the domain name by the Respondent. The Respondent succeeded in demonstrating rights and legitimate interests in the domain name and the Complaint was rejected.
5.6.6 The domain name was registered on November 20, 2000. It was not referenced in the Complainant's cease and desist letter of November 3, 2000, nor is it confusingly similar with the SANDS mark claimed by the Complainant.
5.6.7 The Sands of the Caribbean website to which both domain names in issue resolve contains a clear disclaimer of any affiliation with the Complainant.
5.6.8. The Complainant's SANDS trademark has become so diluted that it has lost any distinctiveness. There is multiple third party use of SANDS in relation to hotels, gambling, casinos and online gambling. The Complainant has acquiesced in the third party uses identified in paragraphs 5.2.4 and 5.2.6 above. Demolition of the Las Vegas Sands Hotel and Casino in 1996, has contributed to extinguishment of any distinctiveness the SANDS trademark might once have had. The Complainant has no interest in online gambling and has never offered such services [paragraph 5.6.2 above]. In the circumstances, there cannot be any likelihood of confusion with the Complainant's SANDS mark as to the source, sponsorship, affiliation or endorsement of The Sands of the Caribbean website to which the two domain names in issue resolve.
5.6.9 The Respondent points to its submissions made in reply to the Complainant's Supplementary Complaint [see paragraph 4.2.3 above] as evidencing its rights and legitimate interests in the two domain names. The Respondent states that it is beyond the authority of this Panel to rule on the legality or otherwise of online gambling under US law. In that respect, the Respondent cites two Decisions under the Policy.
DIMC Inc and The Sherwin Williams Co .v. Quang Phan [WIPO Case No. D2000-1519]
There the domain name in issue was >. The Complainant had made and sold paints and coatings under the KRYLON mark since 1868. The Respondent used the domain name in issue to link to the main page of a so-called piracy website, where Internet-users would be provided with emulators and copies of ROMs for video games from companies such as Nintendo of America, a practice deemed illegal and vigorously opposed by that company.
In relation to rights or legitimate interests, the Panel held that - in the absence of a judicial finding of illegality - the legality of the Emulator Playaz website was in question but determination of such legality was beyond the scope of the authority of a panel in a UDRP proceeding and cannot thus form the basis for adverse inferences.
ITT Manufacturing Enterprises Inc .v. IT&T A.G. [WIPO Case No. D2001 0166]
The domain name at issue was , registered in August 1997 by a Swiss Company, IT&T A.G. which had been trading since 1994. The Respondent operated a website on which it had published commercial communications directories and databases. The Complainant owned the well-known ITT trademark worldwide. The US Postal Service initiated an administrative action against the Respondent for allegedly deceptive unsolicited mass mailings for what appeared to be invoices for previously ordered listings in the Respondent's putative business directory. An Order was made in that action that the Respondent should cease and desist such mailings through the US Postal Service. The Respondent ignored that Order and continued such mailings.
The Complaint was denied for failure to establish confusing similarity. No holding in relation to rights or legitimate interests was, therefore, made. However, in relation to the proceedings brought by the US Postal Service, the Panel said:
“This activity is not material. The Policy is concerned with the criteria therein. A Panel cannot sit in judgement on the business activities of parties who come before it except where such activities contravene the Policy. Disputed claims relating to fair trading / consumer laws or trademark infringement are better suited for determination by a Court than under the Policy.”
5.7 Registered and Used in Bad Faith: The Complainant's Case 5.7.1 The Respondent has constructive notice of the Complainant's SANDS registered trademark and, therefore, is to be deemed to have registered both domain names in bad faith. The Complainant cites in this respect Robotel Electronique Inc .v. KapCom Inc [WIPO Case No. D2001-0038]. The domain name in issue was . The Complainant was the proprietor of a US registered trademark for ROBOTEL for personal computers and other related goods which it had used in the United States since 1988, and in Canada since 1984. No Response was filed and so nothing was known about the Respondent except for a dialogue with the Complainant and its attorneys during which Mr Kaplan offered to sell the domain name in issue. Although the Complainant sought, as in this case, to rely upon the Respondent having constructive notice of the Complainant's exclusive right to use the registered trademark pursuant to section 22 of the US Trademark Act, the Panel did not decide that issue, finding bad faith made out under the different ground in paragraph 4(b)(i) of the Policy.
5.7.2. The attempt to hide behind a weak disclaimer [see paragraph 4.2.3 above] indicates Respondent's knowledge that they were all along acting in bad faith by registering and using the domain names in issue.
5.7.3. By virtue of the well-known status of the Complainant's SANDS trademark, it is simply straining credulity to suggest that the Respondent did not have actual notice of that mark when registering the two domain names in issue. The Complainant cites the Christies and Veuve Cliquot cases [see paragraph 5.5.4 above].
5.7.4 The registration of the two domain names in different names - in George Samuel's name and in the name of The Sands of the Caribbean - when both resolve to the same Sands of the Caribbean Online Casino & Sportsbook homepage. This is evasive conduct of the type that has been taken to indicate registration and use in bad faith in other cases under the Policy. In that connection, the Complainant cites the following Decisions.
Hunton & Williams .v. American Distribution Systems Inc et al [WIPO Case No. D2000-0501]
The domain names in issue were