Las Vegas Sands Corp. v. Venetian Macao Ltd. Marketing Representative
Claim Number: FA0710001102447
Complainant is Las Vegas Sands Corp. (“Complainant”), represented by Susan
Okin Goldsmith, 744 Broad Street, Suite 1200, Newark, NJ 07102. Respondent is Venetian Macao Ltd. Marketing
Representative (“Respondent”), 1-9-26-3F
Kyutaro-cho, Chuo-ku,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <venetianrep.com>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.
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 October 23, 2007; the National Arbitration Forum received a hard copy of the Complaint on October 24, 2007.
On October 25, 2007, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <venetianrep.com> domain name is registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the name. Melbourne It, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names Worldwide 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 October 26, 2007 a Joint Request to Stay the Administrative Proceeding was filed with the National Arbitration Forum and subsequently granted. On December 3, 2007 Complainant requested that the Stay be lifted and an Order was subsequently granted by the National Arbitration Forum reinstituting these proceedings.
On December 6, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 26, 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@venetianrep.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 29, 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <venetianrep.com> domain name is confusingly similar to Complainant’s VENETIAN mark.
2. Respondent does not have any rights or legitimate interests in the <venetianrep.com> domain name.
3. Respondent registered and used the <venetianrep.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Las Vegas Sands Corp., is a company that provides casino, hotel and resort related goods and services under its VENETIAN mark. The VENETIAN mark was registered with the United States Patent and Trademark Office (“USPTO”) on December 5, 2000 (Reg. No. 2,411,454).
Respondent registered the <venetianrep.com> domain name on September 9, 2007. Respondent initially used the disputed domain name to operate a website in Japanese containing phone numbers and information purportedly for a “marketing representative” who was “formally authorized by Venetian Macao Resort Hotel and provides all services in connection with casino.” After Complainant corresponded with Respondent requesting a transfer of the disputed domain name, the original website content was removed and replaced with information in English concerning Venetian masks and a statement that the website was “Under Construction.”
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 has established rights in the VENETIAN mark pursuant to Policy ¶ 4(a)(i) through registration of the mark with USPTO. See 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.”); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
The Panel finds that Respondent’s <venetianrep.com> domain name is confusingly similar to
Complainant’s VENETIAN mark pursuant to Policy ¶ 4(a)(i)
because Respondent’s disputed domain name incorporates the VENETIAN mark with
an abbreviated version of the generic term “representative”. See
PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000) (finding
that “Respondent does not by adding the common descriptive or generic terms
‘corp’, ‘corporation’ and ‘2000’ following ‘PGE’, create new or different marks
in which it has rights or legitimate interests, nor does it alter the
underlying [PG&E] mark held by Complainant”); see also Arthur Guinness Son & Co. (
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have rights or legitimate interests in the <venetianrep.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds that Complainant has established a prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel assumes that Respondent does not have rights or legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”). However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests under Policy ¶ 4(c).
Respondent was previously using the <venetianrep.com> domain name to operate a
website containing contact information for an individual purporting to
be a representative of Complainant’s.
Respondent’s use of a domain name that is confusingly similar to Complainant
in order to “pass itself off” as Complainant by providing contact information
for an individual purporting to be Complainant’s representative is not a use in
connection with a bona fide offering
of goods or services pursuant to Policy ¶ 4(c)(i), or
a legitimate noncommercial or fair use of the disputed domain name pursuant to
pursuant to Policy ¶ 4(c)(iii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb.
Forum May 30, 2003) (finding that the respondent attempts to pass itself off as
the complainant online, which is blatant unauthorized use of the complainant’s
mark and is evidence that the respondent has no rights or legitimate interests
in the disputed domain name); see also
Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003) (“It is neither
a bona fide offerings [sic] of goods or services, nor an example of a
legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when
the holder of a domain name, confusingly similar to a registered mark, attempts
to profit by passing itself off as Complainant . . . .”).
Respondent’s current use of the <venetianrep.com> domain name provides information regarding future content to be displayed concerning Venetian masks and states that the website is “Under Construction.” The Panel finds that the current use also is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii) because the language on the website does not provide demonstrable evidence of preparations to actively use the disputed domain name and because this content was displayed after Respondent received a letter requesting transfer of the disputed domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that when the respondent declares its intent to develop a website, “[Policy ¶] 4(c)(i) requires Respondent to show 1) ‘demonstrable’ evidence of such preparations to use the domain name, and 2) that such preparations were undertaken ‘before any notice to [Respondent] of the dispute’”); see also Wal-Mart Stores, Inc. v. Walmarket Canada, D2000-0150 (WIPO May 2, 2000) (finding that the respondent had no rights or legitimate interests where he decided to develop the website for the sale of wall products after receiving the complainant’s “cease and desist” notice).
Although Respondent’s WHOIS information appears to suggest
Respondent is commonly known by the <venetianrep.com> domain name, there is no other
evidence in the record to support this contention. Respondent’s website alleged that Respondent
is an authorized representative of Complainant.
Complainant, however, states that Respondent is not and has never been
authorized to use their mark. In the
absence of additional evidence from Respondent showing it is commonly know by
the mark or authorized by Complainant to use the mark, the Panel finds the
Respondent is not commonly known by the <venetianrep.com> domain name pursuant to Policy ¶
4(c)(ii).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s initial use of the domain name <venetianrep.com> was a use in bad faith under Policy ¶
4(b)(iv) because it was being used to provide contact information for an individual
holding themselves out to be a representative of Complainant’s; presumably for
Respondent’s own commercial gain. See 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); see also Am. Univ. v. Cook, FA
208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name
that incorporates another's mark with the intent to deceive Internet users in
regard to the source or affiliation of the domain name is evidence of bad
faith.”).
Additionally, Respondent’s previous use of the website that resolves from the disputed domain name indicates that Respondent was attempting to pass itself off as Complainant to Internet users attempting to locate Complainant. Such use indicates bad faith registration and use under Policy ¶ 4(a)(iii). See DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that the respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that the complainant endorsed and sponsored the respondent’s website); see also Target Brands, Inc. v. JK Internet Servs., FA 349108 (Nat. Arb. Forum Dec. 14, 2004) (finding bad faith because the respondent not only registered Complainant’s famous TARGET mark, but “reproduced . . . Complainant’s TARGET mark . . . [and] added Complainant’s distinctive red bull’s eye [at the domain name] . . . to a point of being indistinguishable from the original.”).
Upon receiving a letter from Complainant’s attorney, Respondent changed the content of the website to provide information about future content regarding Venetian masks. The Panel finds that this current use also constitutes bad faith registration and use pursuant to Policy ¶ 4(a)(iii) because Respondent is not actively using the disputed domain name. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that failure to make an active use of a domain name permits an inference of registration and use in bad faith).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <venetianrep.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: January 10, 2008
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