Las Vegas Sands Corp. v. IWG c/o Michael Hodge
Claim Number: FA0803001164366
Complainant is Las Vegas Sands Corp. (“Complainant”), represented by Susan
Okin Goldsmith, of
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <venetian.mobi>, registered with Signature Domains, LLC.
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.
Roberto A. Bianchi as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 19, 2008; the National Arbitration Forum received a hard copy of the Complaint on March 20, 2008.
On March 20, 2008, Signature Domains, LLC confirmed by e-mail to the National Arbitration Forum that the <venetian.mobi> domain name is registered with Signature Domains, LLC and that the Respondent is the current registrant of the name. Signature Domains, LLC has verified that Respondent is bound by the Signature Domains, LLC 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 March 25 The Forum received the Amended Complaint. On March 26, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 15, 2008 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 email@example.com by e-mail.
A timely Response was received and determined to be complete on April 15, 2008.
On April 18, 2005, Complainant timely made an Additional Submission, pursuant to Supplemental Rule # 7, without any reply from Respondent. The Panel admits and will consider Complainant’s Additional Submission in making the present decision.
On April 25, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Roberto A. Bianchi as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
In its Amended Complainant, Complainant contends as follows:
and its subsidiaries own and have used the VENETIAN marks for their
world-renowned casino, hotel and resort services since at least as early as
1997. Registrations for the VENETIAN
marks were first obtained in 1999 in the
world-renowned Venetian hotel, resort and casino in
- Complainant is taking active steps toward entering the mobile and handheld gaming market, which is evident from recent press. Prior UDRP Panels have recognized Complainant’s rights in the and to the VENETIAN marks. Thus, Complainant’s VENETIAN marks have achieved status as well-known marks.
- The disputed domain name incorporates Complainant’s VENETIAN mark in its entirety, and is confusingly similar to marks in which the Complainant has rights.
- Respondent has no connection or affiliation with Complainant, and has nor received any license or consent to use the VENETIAN marks in a domain name or in any other manner. Respondent is not, and has never been, commonly known by the domain name. Respondent cannot establish rights or legitimate interests in the domain name.
- Respondent registered the <venetian.mobi> domain name in bad faith. This domain name was created and registered to the Respondent on September 26, 2006, long after numerous trademark applications had been filed, and registrations obtained, for the VENETIAN marks, and six years after Complainant had registered its own mobile services website. Respondent registered the domain name in dispute several months after a press release and other media articles were issued, detailing Complainant’s mobile gaming plans.
- The domain name is being used in bad faith. Respondent first offered to sale the domain name in dispute to Complainant for US$ 3,500. When Complainant did not answer Respondent’s offer for sale, Respondent threatened to “proceed accordingly” with his original threat to either sell or even “donate” the domain name to another party. This is a clear example of bad faith registration and use according to Policy ¶ 4(b)(i).
- Presently, the domain name at issue does not resolve to an active website and instead resolves to a page with no content. This passive holding constitutes bad faith registration and use pursuant to Policy ¶ 4(a)(iii).
In its Response, Respondent makes the following contentions:
On June 12,
2006, the dotMobi registry began to accept registrations for the .mobi TLD
during the “
- It is not disputed that Complainant continuously and extensively advertises and promotes its Venetian Hotel and Casino brand. However, many other entities incorporate the noun “VENETIAN” in their name and brand. (see <venetian.org>, <thevenetian-catering.com> and <thevenetianroom.com>). The suggestion that the US Patent and Trademark Office has provided Complainant exclusive rights to the word “Venetian” is not true. Complainant uses the word Venetian in its brand as do thousands of other large and small businesses.
- Respondent’s business among other things monetizes the use of domain names in a proper and lawful manner. This sometime includes selling or leasing domain names.
elected not to register the <venetian.mobi> domain name
during the “
- On February 8, 2006 Respondent received a call from a Mr. Jay Morris indicating that he was working on a project for the Venetian Hotel and was interested to see if Respondent wanted to sell the <venetian.mobi> url. On Thursday February 21, 2008 Respondent sent an e-mail to the Venetian Hotel inquiring as to the legitimacy of the inquiry. On February 22, 2008 the attorneys for the Venetian Hotel sent the first round of threatening letters to Respondent. It is clear that Respondent was approached by a group representing themselves to be working with the Venetian Hotel and, after contacting The Venetian Hotel to determine the validity of that claim, Respondent was deluged with a barrage of legal maneuvers. First contact did not occur on February 22 as stated by Claimant in its pleading. Respondent was contacted first by a vendor for the Venetian Hotel. Whether or not this was with the knowledge of the Venetian is unclear. There was no bad faith attempt by Respondent as alleged.
- Presently the <venetian.mobi> url resolves to <venetian.org> a legitimate Summer festival website. Respondent has the absolute right to lease the domain name in the normal course of business to entities that can enjoy its use. Claimant is attempting to force the turnover the <venetian.mobi> domain name for use in its casino and gaming operations.
C. Complainant’s Additional Submissions
In its Additional Submission of April 18, 2008, Complainant contends as follows:
Respondent is undoubtedly aware of Complainant’s rights
in the VENETIAN marks, as he admits to the registration of the <venetian.mobi> domain
name only after “learning of Complainant’s decision not to register” before the
close of the .mobi “
- Respondent incorrectly asserts that Complainant did not register the <venetian.mobi> domain name “because [Complainant] was not entitled to the trademark for “VENETIAN.” It is impossible for a trademark owner to register every possible variation of its marks, and it is not required to do so.
- Respondent’s offer for sale and attempted donation of the domain name to a third party contradict any claim Respondent could make that he has any rights or legitimate interests in the domain name.
- Knowing that he did not have the requisite rights to benefit from the Sunrise period, Respondent admits to lying in wait, ready to pounce on the <venetian.mobi> domain name that he perceived as valuable and marketable to Complainant. Respondent has a pattern and practice of bad faith registration and use of domain names for its own financial gain. On May 14, 2007, a WIPO panel found that this same Respondent has registered and used the <vonage.mobi> domain in bad faith, and ordered its transfer. The facts here are substantially the same.
As of the date of this submission, Respondent’s website
resolves to <venetian.org>, a website for the Venetian festival in
- Respondent has made two documented requests to sell the <venetian.mobi> domain name for sums in excess of the actual costs of registration: first for $6,500, and more recently, perhaps due to the lack of Response from Complainant at the $6,500 level, for $3,500.
Save for the addition of the “.mobi” TLD – a factor irrelevant to distinguish the domain name at issue from the mark - the domain name, exclusively consisting of Complainant’s VENETIAN mark, is identical to such mark. Complainant made out a prima facie case that Respondent lacks rights or legitimate interests in the domain name, while Respondent failed to submit any evidence in his own favor. Given the renown of Complainant’s hotels and casino throughout the world, it is unthinkable that Respondent did not know the VENETIAN mark when he registered the domain name in dispute. Respondent’s offer for sale to the Complainant with the purpose of illegitimately extracting a profit from it, together with the recent redirection of the website at the domain name at issue to the website of a third party, show that the domain name in disputed was registered and is being used in bad faith.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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 evidenced with numerous registration certificates issued by the USPTO and other national and international trademark offices that it owns trademark rights in the VENETIAN mark, covering, inter alia, services such as hotel, restaurant, casino and gaming, retail stores, and entertainment shows, and goods such as clothing. Even if there were other companies having rights to expressions including the VENETIAN term – a fact that Respondent failed to prove satisfactorily – the Panel believes that Policy ¶ 4(a)(i) does not require that Complainant’s rights in the mark VENETIAN be exclusive. Accordingly, Complainant proved that it has rights in such mark. The domain name at issue exclusively consists of the VENETIAN term, and because the addition of the “.mobi” top-level domain is inapt to distinguish the domain name from the mark, the Panel finds that the domain name is identical to a mark in which Complainant has rights.
Complainant contends that Respondent has no connection or affiliation with Complainant, and that Complainant gave no consent, license, sponsorship or endorsement to use the VENETIAN mark in any manner. It also contends that Respondent is not known as “Venetian,” nor it could be because its name is “IWG.” Taken together, and because there is no evidence of the contrary on the record, these contentions constitute a prima facie case that Respondent lacks rights or legitimate interests in the domain name at issue.
For his part, Respondent does nothing to show
that he does have a right or a legitimate interest in the domain name. He merely says that he registered the domain
name in dispute because Complainant “elected not to register” the domain name
because it did not do it during the
Respondent does not even allege that he registered the domain name in dispute because of the common meaning of the VENETIAN word.[i] Respondent argues that several companies other than Complainant have rights in expressions containing the VENETIAN term, without saying a word about his own rights or legitimate interests in the <venetian.mobi> domain name at issue. He merely alleges that because some third parties have rights on expressions containing the VENETIAN term, he has a right to “monetize” the domain name containing the term. The Panel does not coincide with Respondent: whatever the meaning of “monetizing a domain name” when applied to a domain name corresponding to a third party’s trademark, it certainly does not constitute a right or a legitimate interest in such domain name
It is undisputed that the domain name at issue did not resolve to any active web page until very recently, where it redirected to a website belonging to The Venetian Festival. In the opinion of this Panel, neither the period of inaction nor the recent re-direction to the Festival’s website reveal any right or legitimate interest of Respondent in the domain name in dispute.
In sum, Complainant proved that Respondent lacks rights or legitimate interests in the domain name.
In the Amended
Complaint and the Response, the parties disagree as to who first contacted the
other party. However, with its
Additional Submission of April 18, 2008, Complainant has evidenced that
Respondent offered Complainant the domain name for sale for US $6,500. Respondent did not reply to this allegation
and evidence, which allows the Panel to conclude that he registered the domain
name primarily for the purpose of selling the domain name registration to
Complainant for valuable consideration in excess of his documented
out-of-pocket costs directly related to the domain name, a circumstance of bad
faith registration, pursuant to Policy ¶ 4(b)(i). Additionally, Complainant has submitted
abundant documentary evidence showing that Complainant’s Venetian hotels,
resorts and casinos in
As to usage in bad faith, the Panel notes that from
the moment when the disputed domain name was registered until Complainant
initiated the UDRP action on March 19, 2008, the domain name did not resolve to
any active web page. It is undisputed
that immediately after Complainant served Respondent with the complaint,
Respondent redirected the <venetian.mobi>
website to <venetian.org>, the website of the Venetian Festival in
In conclusion, the Panel is satisfied that Respondent registered and is using the domain name at issue in bad faith
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <venetian.mobi> domain name be TRANSFERRED from Respondent to Complainant.
Roberto A. Bianchi, Panelist
Dated: May 9, 2008
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[i] Like, for instance, the respondent in Zero Int’l Holding GmbH & Co. v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) (finding that ZERO is a common English word, in which any number of organizations, including the complainant, may have trademark rights, which does not preclude the respondent effecting registration of an available common word on an a ‘first come, first served’ basis).