Las Vegas Sands Corp. v. Rough Media
Claim Number: FA1111001417922
Complainant is Las Vegas Sands Corp. (“Complainant”), represented by Michael J. McCue of Lewis and Roca LLP, Nevada, USA. Respondent is Rough Media (“Respondent”), Singapore.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <marinabaysandscasino.com>, registered with GoDaddy.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 30, 2011; the National Arbitration Forum received payment on November 30, 2011.
On December 1, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <marinabaysandscasino.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 2, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 22, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@marinabaysandscasino.com. Also on December 2, 2011, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 5, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <marinabaysandscasino.com> domain name is confusingly similar to Complainant’s MARINA BAY SANDS mark.
2. Respondent does not have any rights or legitimate interests in the <marinabaysandscasino.com> domain name.
3. Respondent registered and used the <marinabaysandscasino.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Las Vegas Sands Corp., is the owner of several registrations for the MARINA BAY SANDS mark (e.g., Reg. No. T0604998G registered March 17, 2006) with the Intellectual Property Office of Singapore (“IPOS”). The MARINA BAY SANDS mark is used in connection with the operation of casinos.
Respondent, Rough Media, registered the <marinabaysandscasino.com> domain name on May 27, 2006. The disputed domain name currently resolves to an inactive website which displays only the date and a picture of a cat. The <marinabaysandscasino.com> domain name was previously a parked page displaying unrelated advertisements.
Paragraph 15(a) of the Rules instructs this Panel to "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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(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) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant contends that it has rights in the MARINA BAY SANDS mark. Panels held in Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007), and Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002), that the registration of a mark with a federal trademark authority is sufficient to confer rights in the mark upon the registrant of the mark. The MARINA BAY SANDS mark is registered multiple times with the IPOS by Complainant (e.g., Reg. No. T0604998G registered March 17, 2006). Therefore, the Panel finds that Complainant has rights in the MARINA BAY SANDS mark pursuant to Policy ¶ 4(a)(i).
Complainant alleges that Respondent’s <marinabaysandscasino.com> domain name is confusingly similar to the MARINA BAY SANDS mark. Respondent made the following changes to Complainant’s mark in the disputed domain name: the addition of the descriptive term “casino,” the deletion of spaces between words, and the addition of the generic top-level domain (“gTLD”) “.com.” Panels have held that the addition of a term which describes the complainant fails to distinguish the disputed domain name from the mark upon which it is allegedly infringing. See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark); see also Am. Online, Inc. v. Karandish, FA 563833 (Nat. Arb. Forum Nov. 2, 2005) (finding that the addition of the descriptive term “talk” to a registered mark does not sufficiently distinguish a domain name under Policy ¶ 4(a)(i)). Panels have similarly held that the deletion of spaces and the addition of a gTLD are not changes which make a disputed domain name distinct from a mark. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)); see also U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”). The Panel finds that Respondent’s failure to make more substantial changes to Complainant’s mark within the domain name renders the <marinabaysandscasino.com> domain name confusingly similar to the MARINA BAY SANDS mark under Policy ¶ 4(a)(i).
The Panel finds that Complainant satisfied the elements of Policy ¶ 4(a)(i).
Where a complainant has made a prima facie case in support of the allegations it makes, burden of disproving these claims shifted to the respondent according to Policy ¶ 4(a)(ii). See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); see also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”). If, however, the respondent does not submit to the panel a response to the complaint, the panel may infer that the respondent is void of rights and legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence); see also CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that the respondent’s failure to produce requested documentation supports a finding for the complainant). Complainant asserts that Respondent has neither rights nor legitimate interests in the disputed domain name. The Panel finds that this assertion has been supported by Complainant with evidence amounting to a prima facie case. The Panel is left without the benefit of a Response from Respondent and thus may infer that Respondent does not have rights or legitimate interests in the <marinabaysandscasino.com> domain name. However, the Panel will review the record for information which suggests otherwise to determine whether Respondent has rights and legitimate interests according to the Policy ¶ 4(c) factors.
Complainant argues that Respondent is not commonly known by the disputed domain name. Complainant alleges that Respondent is not a licensee of or related to Complainant and does not have Complainant’s consent to use the MARINA BAY SANDS mark in domain name or otherwise. Complainant contends that Respondent is not legally known by the disputed domain name or the individual terms which make up the disputed domain name. The WHOIS record for the <marinabaysandscasino.com> domain name lists “Rough Media” as the domain name registrant. Panels have previously held that the WHOIS record and Complainant’s contentions are illustrative of whether a respondent is commonly known by a disputed domain name. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Therefore, the Panel finds that Respondent is not commonly known by the <marinabaysandscasino.com> domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent’s prior use of the disputed domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. The disputed domain name previously resolved to a parked page containing advertisements unrelated to Complainant. The Panel finds that Respondent’s prior use of the <marinabaysandscasino.com> domain name to resolve to a parked page displaying advertisements unrelated to Complainant is neither a Policy ¶¶ 4(c)(i) bona fide offering of goods or services nor a 4(c)(iii) legitimate noncommercial or fair use. See Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Complainant argues that Respondent currently uses the <marinabaysandscasino.com> domain name to display only a picture of a cat and the date, which the Panel finds is inactive use. In Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000), and TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003), the panels held that the failure to make an active use of the disputed domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. Therefore, the Panel finds that Respondent’s inactive use of the <marinabaysandscasino.com> domain name is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Complainant asserts that Respondent’s lack of rights and legitimate interests is also apparent from Respondent’s willingness to sell the disputed domain name. The WHOIS record for the <marinabaysandscasino.com> domain name notes that the disputed domain name is for sale. The Panel therefore finds that Respondent’s willingness to sell the disputed domain names indicates that Respondent does not have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)); see also Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark.”).
The Panel finds that Complainant satisfied the elements of Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the disputed domain name with the intent to sell the <marinabaysandscasino.com> domain name to the Complainant or others for profit. The WHOIS record for the disputed domain name includes a notation that the <marinabaysandscasino.com> domain name is for sale. Panels have found that the offering of a disputed domain name for sale is evidence of bad faith registration and use. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”); see also Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where the respondent offered domain names for sale). The Panel therefore finds that Respondent’s bad faith registration and use is demonstrated under Policy ¶ 4(b)(i) by its willingness to sell the <marinabaysandscasino.com> domain name.
Complainant argues that Respondent’s resolving website previously was a parked website displayed a collection of advertisements to third parties unrelated to Complainant. Panels have held that the registration and use of a disputed domain name to take commercial advantage of mistakes by Internet users and confusion created by the registration of a confusingly similar domain name demonstrates bad faith. See ESPN, Inc. v. Ballerini, FA 95410 (Nat. Arb. Forum Sept. 15, 2000) (finding bad faith where the respondent linked the domain name to another domain name, <iwin.com>, presumably receiving a portion of the advertising revenue from the site by directing Internet traffic there, thus using a domain name to attract Internet users for commercial gain); see also Bama Rags, Inc. v. Zuccarini, FA 94381 (Nat. Arb. Forum May 8, 2000) (finding bad faith where the respondent used a misspelling of the complainant’s famous mark to attract Internet users to a series of advertisements). The <marinabaysandscasino.com> domain name is confusingly similar to Complainant’s mark. As such, Internet users will have incorrectly assumed that the disputed domain name is genuinely affiliated with Complainant. The Panel infers that Respondent is compensated for displaying the advertisements previously displayed on the <marinabaysandscasino.com> domain name’s resolving website. Therefore, the Panel finds that Respondent registered and previously used the disputed domain name in bad faith under Policy ¶ 4(b)(iv) with the intent to take advantage of Complainant’s mark to attract consumers and create confusion for commercial gain pursuant to Policy ¶ 4(b)(iv).
Complainant argues that Respondent’s current inactive use of the disputed domain name is further evidence of Respondent’s bad faith. Panels have held that the failure to make an active use of a disputed domain name is evidence of a respondent’s bad faith behavior. See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (“[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”); see also Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith). The <marinabaysandscasino.com> domain name is offered for sale through the WHOIS record for the disputed domain name. Therefore, the Panel finds that Respondent’s registration and use of the disputed domain name was done in bad faith pursuant to Policy ¶ 4(a)(iii).
Complainant argues that Respondent’s registration and use of the disputed domain name demonstrates Respondent’s opportunistic bad faith. Complainant announced on May 26, 2006 that it had won the proposal for the development of a resort at the Marina Bay site in Singapore. Respondent registered the <marinabaysandscasino.com> domain name on May 27, 2006, the day following the announcement. The Panel finds that Respondent’s registration and use of the <marinabaysandscasino.com> domain name on the day following the worldwide announcement of the approval to develop the Marina Bay resort site in Singapore by Complainant is evidence of Respondent’s opportunistic bad faith under Policy ¶ 4(a)(iii). See Sota v. Waldron, D2001-0351 (WIPO June 18, 2001) (finding that the respondent’s registration of the <seveballesterostrophy.com> domain name at the time of the announcement of the Seve Ballesteros Trophy golf tournament “strongly indicates an opportunistic registration”); see also Tech. Props., Inc. v. Hussain, FA 95411 (Nat. Arb. Forum Sept. 14, 2000) (“The Respondent took advantage of the public announcement that Tandy Corporation was changing its name to RadioShack by registering the domain names on the same day as a public announcement of a company’s name change. This is also evidence of bad faith.”).
Complainant also contends that Respondent could not have registered and used the disputed domain name without actual or constructive knowledge of Complainant and its rights in the MARINA BAY SANDS mark. While constructive notice has not generally been held to suffice for a finding of bad faith registration and use, the Panel here finds Respondent had actual knowledge of Complainant’s rights in the mark and thus registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).
The Panel finds that Complainant satisfied the elements of Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <marinabaysandscasino.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: January 18, 2012
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