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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Gordon Gaming Corp. v. IMC
Case No. D2001-1047
1. The Parties
Complainant: Gordon Gaming Corp.
D/b/a Sahara Hotel & Casino
2535 Las Vegas Boulevard South
Las Vegas, Nevada 89109
2159 Des Laurentides Blvd.
Laval, Quebec h7m4m2
2. The Domain Name and Registrar
Domain Name: <thesahara.com>
Registrar: Network Solutions, Inc.
3. Procedural History
The Complaint was received by WIPO by email on August 21, 2001, and in hardcopy form on August 22, 2001. WIPO has verified that the Complaint satisfies the formal requirements of the Policy, the Rules and the Supplemental Rules and that payment was properly made. The Administrative Panel ("the Panel") is satisfied that this is the case.
The Complaint was properly notified in accordance with the Rules, paragraph 2(a). Network Solutions, Inc. has confirmed that <thesahara.com> ("the Domain Name") was registered through Network Solutions, Inc. and that IMC ("the Respondent") is the current Registrant. The Registrar has further confirmed that the Policy is applicable to the Domain Name.
On August 27, 2001, WIPO notified the Respondent of the Complaint in the usual manner and informed the Respondent inter alia that the last day for sending its Response to the Complainant and to WIPO was September 16, 2001. No Response was received. On September 17, 2001, WIPO issued a Notification of Respondent Default.
The Panel was properly constituted. The undersigned Panelists submitted Statements of Acceptance and Declarations of Impartiality and Independence.
No further submissions were received by WIPO or the Panel, as a consequence of which the date scheduled for the issuance of the Panel’s Decision is November 1, 2001.
4. Factual Background
The Complainant claims that it and its predecessors in title have traded under and by reference to the name SAHARA in relation to hotel and casino services since October 1952.
A claimed predecessor of the Complainant, Sahara Nevada Corporation, is the original Registrant of United States trademark registrations for the mark SAHARA in both word and device (design) forms, the earliest registration dating back to 1967.
According to an Agreement for Purchase and Sale dated May 31, 1995, a copy of which is included in the annexes to the Complaint, Sahara Nevada Corporation entered into an agreement for the sale of inter alia the Sahara Hotel and Casino to the Complainant. Clause 1.1.2 of that agreement reads: "Property. The following assets owned by Seller shall be sold to Buyer and Buyer shall purchase from Seller …. (c) All of Seller’s right, title and interest, if any, in and to any intangible personal property owned by the Seller and used exclusively in the ownership, use and operation of the Business ("Intangible Personal Property"), including without limitation, the name "Sahara Hotel and Casino", displays, symbols, color arrangements, logos, and words and devices, relating directly or indirectly to and used by Seller solely in connection with the Business, or which identify the products or services of the Business (and any goodwill associated with such name and with such marks);"
In the field of gambling, the casino in Las Vegas, which the Complainant claims to be its own, is world famous and is commonly known simply as "The Sahara".
The manner in which the above ‘facts’ are recited indicates and is intended to indicate that there is minimal evidence filed and an arguable doubt as to the precise status of the Complainant in this dispute or its chain of title to the trademarks upon which it relies.
The Respondent registered the Domain name on February 12, 1999. The Domain Name is connected to a website offering online gambling services.
5. Parties’ Contentions
The Complainant contends that the Domain Name is identical or confusingly similar to its trademark SAHARA. It contends that the Domain Name, but for the domain suffix, is identical to its common law trademark, "The Sahara", the name by which its casino has long been known.
The Complainant claims to be the successor in title to Sahara Nevada Corporation, the original Registrant of the SAHARA trademark registrations exhibited to the Complaint. The Complainant also claims to have common law rights in the SAHARA trademarks due to the SAHARA HOTEL AND CASINO’s longstanding use of these marks in trade.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant states that it has not given the Respondent permission to use the name. It points out that the Respondent’s name is not "The Sahara" and states that so far as it is aware the Respondent is not commonly known as "The Sahara".
The Complainant alleges that the Respondent is offering online commercial gambling services under the Domain Name, but contends that those services cannot be said to be "bona fide" in circumstances such as these where, in the context of gambling, the name "The Sahara" can only mean one thing, namely the world famous casino of the Complainant in Las Vegas. The Respondent must deliberately have selected the name, knowing it to be the name of the Complainant’s establishment, in order to benefit from the Complainant’s reputation and goodwill.
The Complainant contends that the Respondent registered the Domain Name in bad faith and is using it in bad faith. The Complainant relies primarily on paragraph 4(b)(iv) of the Policy. It contends that the Respondent in registering the Domain Name intended to attract for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website.
The Complainant contends that Internet users visiting the Respondent’s website will believe that the website is in some way associated with the Complainant and will erroneously assume that they can have the same confidence in the quality of the Respondent’s website as they have in the quality of the Complainant’s services.
The Complainant points out that what the Respondent is doing (i.e. providing online gambling services) is a crime under US law and that anyone thinking that the Complainant is in some way associated with the Respondent’s service will think ill of the Complainant, thereby tarnishing the Complainant’s trademark.
The Respondent has not responded.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interest in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
Where a Respondent who has been properly notified of the Complaint fails to respond, the Panel is entitled to draw such inferences as it considers appropriate (Rule 14(b)).
In this case the consequence of the Respondent’s failure to respond is that the Panel accepts as fact the following uncontraverted assertions of the Complainant, namely that when the Respondent registered the Domain Name:
(a) the Respondent knew of the fame of the Complainant’s casino in Las Vegas;
(b) the Respondent intended to obtain a commercial benefit from selecting a name, which Internet users would recognise as being the name of the Complainant’s casino;
(c) the Respondent is not commonly known as "The Sahara";
(d) the Respondent does not have the Complainant’s permission to use the name "The Sahara".
The Panel further accepts as fact the Complainant’s assertion that it is the successor in title to Sahara Nevada Corporation, based upon the filed agreement. There is a significance in this in that the trademark registration certificates exhibited to the Complaint show Sahara Nevada Corporation (not the Complainant) as the original Registrant of the relevant trademark registrations and one member of the Panel is concerned that there is no evidence filed to show that the Agreement for Purchase and Sale referred to above was in fact actually closed or that the registrations were ever formally assigned to the Complainant or recorded in the USPTO. Further, the Panel is surprised that the trademark registrations are not by now in the name of the Complainant.
Nonetheless, the Complainant appears to be the owner of the SAHARA HOTEL AND CASINO and its intangibles including trademarks and goodwill and carries on business under that name. Therefore, the Panel finds that the Complainant at least has common law rights in the SAHARA trademarks. The members of the Panel differ in the degree of importance which they each attach to the deficiencies in the evidence, but it is the fact that for at least one member of the Panel the evidence as to chain of title is regarded as marginal and suffices in this instance only because the Respondent has defaulted and the evidence has not been challenged.
Identical or Confusingly Similar
The Domain Name features the Complainant’s registered trademark between the definite article and the generic dot com suffix. The Domain Name is identical to the Complainant’s common law trademark, apart from the dot com suffix. The parties are both engaged in the provision of casino/gambling services.
The Panel finds that the Domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
Rights or Legitimate Interest of the Respondent
The Panel finds that the Complainant has made out a prima facie case in this regard. The Respondent knew when it registered the Domain Name that it was the name of the Complainant. The Respondent is not commonly known as "The Sahara" or anything like it. The Respondent intended to obtain an illegitimate commercial benefit from the use of the Complainant’s name and trademark, riding on the back of the Complainant’s reputation and goodwill.
Paragraph 4(c) of the Policy provides examples of circumstances, which, if found by the Panel to be proved, will demonstrate the Respondent’s rights or legitimate interests in respect of the Domain Name. The Respondent has come forward with nothing. The Panel can think of no reason why the Respondent can be said to have any rights or legitimate interests in respect of the Domain Name.
Given the Panel’s finding that the Respondent knowingly selected the Complainant’s trademark for the Domain name and is using it in relation to gambling services with the intent of obtaining a commercial benefit on the back of the Complainant’s reputation and goodwill, the Panel has no difficulty in finding that the domain name was registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
In light of the foregoing findings, namely that the Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name was registered in bad faith and is being used in bad faith, the Panel directs that the Domain Name be transferred to the Complainant.
Dated: November 1, 2001