Venetian Casino Resort, LLC v. WorldWide Mob Ties Inc.
Claim Number: FA0706001013350
Complainant is Venetian Casino Resort, LLC (“Complainant”), represented by Susan
Okin Goldsmith,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <palazzoresortlasvegas.com>, <palazzocasinolasvegas.com> and <palazzoresorthotelandcasino.com>, registered with Go Daddy Software, Inc.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 20, 2007; the National Arbitration Forum received a hard copy of the Complaint on June 21, 2007.
On June 20, 2007, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <palazzoresortlasvegas.com>, <palazzocasinolasvegas.com> and <palazzoresorthotelandcasino.com> domain names are registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the names. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On July 5, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 25, 2007 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@palazzoresortlasvegas.com, postmaster@palazzocasinolasvegas.com and postmaster@palazzoresorthotelandcasino.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 31, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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." 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <palazzoresortlasvegas.com>, <palazzocasinolasvegas.com> and <palazzoresorthotelandcasino.com> domain names are confusingly similar to Complainant’s PALAZZO mark.
2. Respondent does not have any rights or legitimate interests in the <palazzoresortlasvegas.com>, <palazzocasinolasvegas.com> and <palazzoresorthotelandcasino.com> domain names.
3. Respondent registered and used the <palazzoresortlasvegas.com>, <palazzocasinolasvegas.com> and <palazzoresorthotelandcasino.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Venetian Casino
Resort, LLC, owns and operates several casinos, resorts and hotels around the
world, including the Palazzo Resort in
Respondent’s <palazzoresortlasvegas.com>, <palazzocasinolasvegas.com> and <palazzoresorthotelandcasino.com> domain names were registered on December 7, 2006. The domain names at issue currently resolve to “parking” pages, hosted by GoDaddy.com, the registrar of the domain names. These parking pages contain commerical links to third parties, namely Complainant’s competitors in the Las Vegas-area resort and hotel business. Respondent has offered to sell the <palazzoresortlasvegas.com>, <palazzocasinolasvegas.com> or <palazzoresorthotelandcasino.com> domain names to Complainant for $5,000 a piece.
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.
It is well established that Complainant’s registration of a
mark with the USPTO establishes its rights in the mark sufficient to satisfy
Policy ¶ 4(a)(i).
Accordingly, the Panel finds Complainant’s registration of the PALAZZO
mark adequately meets the requirements of Policy ¶ 4(a)(i). See
Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007)
(“Complainant’s trademark registrations with the USPTO adequately demonstrate
its rights in the [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).”); see also Innomed
Techs., Inc. v. DRP Servs., FA 221171
(Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the
USPTO establishes Complainant's rights in the mark.”).
While the domain names at issue
contain other terms, the prominence of Complainant’s PALAZZO mark is
undeniable. Further, the addition of the
common terms “resort,” “hotel” and “casino” to Complainant’s PALAZZO mark only
increase confusion as they describe the hospitality and entertainment business
in which Complainant is engaged. The
inclusion of the “
The Panel concludes Complainant
has successfully met the requirements of Policy ¶ 4(a)(i).
Before questioning Respondent’s rights or legitimate
interests in the <palazzoresortlasvegas.com>, <palazzocasinolasvegas.com>
and <palazzoresorthotelandcasino.com> domain names, the Panel
must first find Complainant has set forth a prima
facie case evidencing Respondent’s lack thereof. See
F. Hoffman-La Roche AG v. Tomasso Di Salvatore, D2006-1417 (WIPO Feb. 1,
2007) (“Proper analysis of paragraph 4(a)(ii) of the Policy shows that the
burden of proof shifts from the Complainant to the Respondent once the
Complainant has made out a prima facie case that the Respondent has no rights
or interests in the domain names.”); see
also 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 Policy
¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have
rights or legitimate interests in a domain name). As Complainant
has made the requisite initial showing, the Panel considers whether Respondent
has proffered any evidence demonstrating rights or legitimate interests in the
disputed domain names.
In
light of Respondent’s failure to contest Complainant’s allegations, the Panel
infers Respondent holds no rights or legitimate interests in the <palazzoresortlasvegas.com>, <palazzocasinolasvegas.com>
and <palazzoresorthotelandcasino.com> domain names. See
Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on
Respondent's failure to respond, it is presumed that Respondent lacks all
rights and legitimate interests in the disputed domain name.”); see also Bank of Am. Corp. v. McCall,
FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not
only results in its failure to meet its burden, but also will be viewed as
evidence itself that Respondent lacks rights and legitimate interests in the
disputed domain name.”). However, the
Panel will now examine the record to determine if Respondent has rights or
legitimate interests in the <palazzoresortlasvegas.com>, <palazzocasinolasvegas.com>
and <palazzoresorthotelandcasino.com> domain names under
Policy ¶ 4(c).
Respondent has put forth no evidence and there is nothing to suggest that Respondent is commonly known by any of the <palazzoresortlasvegas.com>, <palazzocasinolasvegas.com> or <palazzoresorthotelandcasino.com> domain names. Further, Complainant has not licensed or authorized Respondent to use its PALAZZO mark. Therefore, the Panel finds Respondent is not commonly known by the domain names at issue under Policy ¶ 4(c)(ii). See Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Moreover,
Respondent’s <palazzoresortlasvegas.com>, <palazzocasinolasvegas.com>
and <palazzoresorthotelandcasino.com> domain names presently resolve to “parked”
links pages, hosted by the registrar, displaying lists of third-party links,
namely, competing Las Vegas resort and hotel offerings. The Panel finds that use of the disputed
domain names in this manner diverts Internet users away from Complainant’s
PALAZZO products and services and does not constitute a bona fide offering of goods or services purusuant to Policy ¶
4(c)(i) or a legitimate noncommerical or fair use under Policy ¶ 4(c)(iii). See Express Scripts, Inc. v. Windgather Investments
Ltd. / Mr. Cartwright, D2007-0267 (WIPO Apr. 26, 2007) (failing to find a bona fide offerring of goods or services
under Policy ¶ 4(c)(i) when Respondent allowed a domain parking service provider
to post advertisments at the disputed domain name); see also 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).”).
Furthermore, Respondent’s offer to
sell the <palazzoresortlasvegas.com>, <palazzocasinolasvegas.com>
and <palazzoresorthotelandcasino.com> domain names to
Complainant for $5,000 a piece also suggests to the Panel that Respondent holds
no rights or legitimate intersets in the disputed domain names. See Wal-Mart Stores, Inc. v. Stork,
D2000-0628 (WIPO Aug. 11, 2000) (finding the respondent’s conduct purporting to
sell the domain name suggests it has no legitimate use); see also Mothers Against Drunk Driving v. Hyun-Jun Shin, FA
154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances,
the respondent’s apparent willingness to dispose of its rights in the disputed
domain name suggested that it lacked rights or legitimate interests in the
domain name).
The
Panel, thus, concludes Complainant has satisfied Policy ¶ 4(a)(ii).
Through e-mail correspondence, Complainant has documented
Respondent’s offer to sell the <palazzoresortlasvegas.com>, <palazzocasinolasvegas.com>
or <palazzoresorthotelandcasino.com> domain names to
Complainant for $5,000 each, an amount clearly in excess of Respondent’s
out-of-pocket costs to register the domain names. This type of behavior evidences bad faith
registration and use under Policy ¶ 4(b)(i).
See Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the
respondent’s offer to sell the domain name for $2,000 sufficient evidence of
bad faith registration and use under Policy ¶ 4(b)(i)); see also Moynahan v.
Fantastic Sites, Inc., D2000-1083 (WIPO Oct. 22, 2000) (finding bad faith
where the respondent offered to sell the Domain Name to the complainant for
$10,000 when the respondent was contacted by the complainant).
Further, the Panel finds Respondent has engaged in a pattern of bad faith registration and use pursuant to Policy ¶ 4(b)(ii) based on registration of multiple domain names infringing on Complainant’s PALAZZO mark. See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)); see also YAHOO! INC v. Syrynx, Inc., D2000-1675 (WIPO Jan. 30, 2001) (finding a bad faith pattern pursuant to Policy ¶ 4(b)(ii) in the respondent's registration of two domain names incorporating the complainant's YAHOO! mark).
Lastly, the Panel finds Respondent’s consent to use of the <palazzoresortlasvegas.com>, <palazzocasinolasvegas.com>
and <palazzoresorthotelandcasino.com> domain names as “parked”
sites for the advertisement of Complainant’s competitors demonstrates bad faith
registration and use under Policy ¶ 4(b)(iv).
The panel in Vance International,
Inc. v. Jason Abend, FA 970871 (Nat. Arb. Forum June 8, 2007), extensively
discussed the relationship between domain parking service providers and conduct
attributable to Respondent. In Vance, the panel opined:
Although the websites accessed via the Disputed Domains may be operated
by domain parking service providers, that activity is legally and practically
attributable back to Respondent.
Respondent has given those service providers permission to use the
Disputed Domains . . . . Respondent has expressly authorized the activities
being carried on by the domain parking service providers, either specifically
or by carte blanche. It must be
presumed that Respondent is aware of the general nature of the services
provided by those organizations and the business model that they employ . . . .
The key fact here is that Respondent, in collaboration with the domain parking
service providers, is exploiting Complainant's goodwill.
(citations omitted). See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb.
Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and
registration by using domain names that were identical or confusingly similar
to the complainant’s mark to redirect users to a website that offered services
similar to those offered by the complainant).
As a result, the Panel infers Respondent is commercially benefiting from
the confusion surrounding the inclusion of Complainant’s PALAZZO mark in the
domain names at issue through referral fees as visitors to Respondent’s <palazzoresortlasvegas.com>, <palazzocasinolasvegas.com>
or <palazzoresorthotelandcasino.com> domain names click
on the sponsored links. See Associated
Newspapers Ltd. v. Domain Manager, FA
201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the
<mailonsunday.com> domain name is evidence of bad faith pursuant to
Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's
competitors and Respondent presumably commercially benefited from the
misleading domain name by receiving ‘click-through-fees.’”).
Hence, the Panel concludes Complainant has satisfied 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 <palazzoresortlasvegas.com>, <palazzocasinolasvegas.com> and <palazzoresorthotelandcasino.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: August 14, 2007
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum