Las Vegas Sands Corp. v. chenyongming chenyongming
Claim Number: FA1510001644711
Complainant is Las Vegas Sands Corp. (“Complainant”), represented by Michael J. McCue of LEWIS ROCA ROTHGERBER LLP, Nevada, USA. Respondent is chenyongming chenyongming (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sands.site>, registered with Chengdu West Dimension Digital Technology Co., Ltd.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 30, 2015; the Forum received payment on October 30, 2015.
On November 3, 2015, Chengdu West Dimension Digital Technology Co., Ltd. confirmed by e-mail to the Forum that the <sands.site> domain name is registered with Chengdu West Dimension Digital Technology Co., Ltd. and that Respondent is the current registrant of the name. Chengdu West Dimension Digital Technology Co., Ltd. has verified that Respondent is bound by the Chengdu West Dimension Digital Technology Co., Ltd. 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 November 9, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 30, 2015 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@sands.site. Also on November 9, 2015, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 Forum transmitted to the parties a Notification of Respondent Default.
On December 2, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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
i) Complainant has rights in the SANDS mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,209,102, registered on September 14, 1982). Respondent’s <sands.site> domain name is identical to the SANDS mark because it contains the entire mark, along with the top-level domain (“TLD”) “.site.”
ii) Respondent is not commonly known by the <sands.site> domain name because the available WHOIS information lists “chenyongming chenyongming” as Registrant. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website is used to pass off as being operated by or affiliated with Complainant.
Policy ¶ 4(a)(iii)
iii) Respondent uses the <sands.site> domain name in bad faith because the resolving website is used to pass off as Complainant for commercial gain. Respondent registered the <sands.site> domain name in bad faith because it did so with actual knowledge of Complainant’s rights in the SANDS mark.
B. Respondent
Respondent has failed to submit a formal Response. The Panel notes that the <sands.site> domain name was created on July 21, 2015.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
Preliminary Issue: Language of Proceeding
The Panel notes that Complainant requests that the language of this administrative proceeding proceed in the English language pursuant to UDRP Rule 11(a). Complainant makes this request in light of the Mandarin language Registration Agreement. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Factors which previous panels have seen as particularly compelling are: WHOIS information which establishes Respondent in a country which would evince a familiarity with the English language, filing of a trademark registration with an entity which evinces an understanding of the English language, and any evidence (or lack thereof) evincing Respondent’s understanding of the Mandarin language included in the Registration Agreement. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language). Further, the Panel weighs the relative time and expense in enforcing the Mandarin language agreement, which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”).
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by the Complainant to suggest the likely possibility that Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, and in the absence of Respondent’s formal response, the Panel decides that the proceeding should be in English.
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."
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.
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.”).
Complainant alleges it has rights in the SANDS mark through its registration with the USPTO (e.g., Reg. No. 1,209,102, registered on September 14, 1982). Complainant has provided a list of registrations for the SANDS mark. As such, the Panel finds Complainant has rights in the SANDS mark under Policy ¶ 4(a)(i). See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that, where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i)”).
Complainant alleges that Respondent’s <sands.site> domain name is identical to the SANDS mark because it contains the entire mark, along with the TLD “.site.” Complainant argues that “.site” is a generic TLD (“gTLD”), and therefore irrelevant to Policy ¶ 4(a)(i). Past panels have held that gTLDs are irrelevant to the issue of being identical to a mark. See Reichert, Inc. v. Leonard, FA 672010 (Nat. Arb. Forum May 24, 2006) (“The disputed domain names are identical to Complainant’s mark, but for the addition of a generic top-level domain suffix (“.com” or “.net”)…”). As the Panel finds that “.site” is a gTLD, or else sufficiently similar to a gTLD as to be irrelevant here, the Panel finds that Respondent’s <sands.site> domain name is identical to Complainant’s SANDS mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant alleges that Respondent is not commonly known by the <sands.site> domain name because WHOIS information lists “chenyongming chenyongming” as Registrant. Panels have found that a lack of evidence combined with WHOIS information that does not suggest being commonly known by a domain shows that a respondent is not commonly known by a domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record). Therefore, the Panel finds that Respondent is not commonly known by the <sands.site> domain name under Policy ¶ 4(c)(ii).
Complainant alleges that Respondent fails to use the <sands.site> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website is used to pass off as being operated by or affiliated with Complainant. Complainant has provided screenshots of the website. Complainant claims that these screenshots show that Respondent is providing links to websites featuring online casinos which claim to be associated with Complainant, that Respondent is displaying designs associated with Complainant such as the “Sunburst” and “Jinsha” logos, and that Respondent is explicitly claiming to be Complainant. As the Panel finds that Complainant has provided enough evidence to show Respondent is attempting to pass off as Complainant, and thus the Panel finds that Respondent fails to provide bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Complainant alleges that Respondent uses the <sands.site> domain name in bad faith because the resolving website is used to pass off as Complainant for commercial gain. Complainant has provided screenshots of the website. Complainant purports that these screenshots show that Respondent is providing links to websites featuring online casinos which claim to be associated with Complainant, that Respondent is displaying designs associated with Complainant such as the “Sunburst” and “Jinsha” logos, that the background image on the website is a property owned by Complainant, and that Respondent is explicitly claiming to be Complainant. The Panel finds sufficient evidence here to show that Respondent attempts to pass itself off as Complainant, and thus it finds that Respondent uses the <sands.site> domain in bad faith pursuant to Policy ¶ 4(b)(iv). See Tower Labs. Ltd. v. Seltzer, FA 791325 (Nat. Arb. Forum Oct. 16, 2006) (concluding that the respondent registered and was using the <bromoseltzer.com> domain name in bad faith because it displayed a logo similar to the complainant’s BROMO SELTZER mark, which was likely to confuse the public as to the source of the material exhibited at the respondent’s website); see also H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness).
Complainant finally alleges that Respondent registered the <sands.site> domain name in bad faith because it did so with actual knowledge of Complainant’s rights in the SANDS mark. Complainant contends that because of the widespread publicity of the mark and because of Complainant’s multiple registrations of the mark, Respondent must have had actual knowledge at the time of registration. The Panel infers from the manner of use of the disputed domain name by Respondent and the widespread publicity of the mark that Respondent had actual knowledge of Complainant’s rights in the SANDS mark at the time of registration, the Panel finds that Respondent registered the <sands.site> domain name in bad faith under Policy ¶ 4(a)(iii). See Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sands.site> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: December 14, 2015
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