Las Vegas Sands Corp. v. Josephine Ng
Claim Number: FA0805001191308
Complainant is Las Vegas Sands Corp. (“Complainant”), represented by Susan
Okin
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain name at issue are <venetianmacaoferries.com>, <venetianmacaotravel.com>, <venetianferries.com>, and <cotaijetmacao.com>, registered with Godaddy.com, 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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 15, 2008; the National Arbitration Forum received a hard copy of the Complaint on May 16, 2008.
On May 16, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <venetianmacaoferries.com>, <venetianmacaotravel.com>, <venetianferries.com>, and <cotaijetmacao.com> domain names are registered with Godaddy.com, Inc. and that Respondent is the current registrant of the names. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, 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 May
22, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
June 11, 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 postmaster@venetianmacaoferries.com, postmaster@venetianmacaotravel.com, postmaster@venetianferries.com, and postmaster@cotaijetmacao.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 17, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (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 <venetianmacaoferries.com>, <venetianmacaotravel.com>, and <venetianferries.com> domain names are confusingly similar to Complainant’s VENETIAN mark. Respondent’s <cotaijetmacao.com> domain name is confusingly similar to Complainant’s COTAIJET mark.
2. Respondent does not have any rights or legitimate interests in the <venetianmacaoferries.com>, <venetianmacaotravel.com>, <venetianferries.com>, and <cotaijetmacao.com> domain names.
3. Respondent registered and used the <venetianmacaoferries.com>, <venetianmacaotravel.com>, <venetianferries.com>, and <cotaijetmacao.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Las Vegas Sands Corp., uses the VENETIAN and COTAIJET marks in association with its world-renowned casino, hotel and resort services. Complainant owns a number of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the VENETIAN mark (i.e. Reg. No. 2,322,513 issued February 22, 2000). In addition, Complainant owns a number of trademark registrations in other countries for the COTAIJET mark, including one with the Hong Kong Trade Marks Registry (i.e. Reg. No. 300,926,479 issued August 2, 2007).
Respondent registered the <venetianmacaoferries.com>, <venetianmacaotravel.com> and <venetianferries.com> domain names on September 6, 2007; and the <cotaijetmacao.com> domain name on October 10, 2007. Respondent’s disputed domain names resolve to websites displaying links to Complainant’s official websites and third-party websites in competition with Complainant.
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.
The Panel finds that Complainant has established sufficient rights in its VENETIAN and COTAIJET marks based on its registrations with the USPTO and other foreign governmental agencies pursuant to Policy ¶ 4(a)(i). See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive."); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Complainant contends that Respondent’s disputed domain names
are confusingly similar to Complainant’s marks pursuant to Policy ¶
4(a)(i). The <venetianmacaoferries.com>, <venetianmacaotravel.com>, and <cotaijetmacao.com>
domain names contain one of Complainant’s marks in its entirety, add the
geographic term “macao,” and add the generic top-level domain (“gTLD”)
“.com.” The Panel finds that the
addition of a geographic term to a registered mark creates a confusing
similarity between the disputed domain names and marks pursuant to Policy ¶ 4(a)(i). See VeriSign, Inc. v. Tandon,
D2000-1216 (WIPO Nov. 16, 2000) (finding confusing similarity between the
complainant’s VERISIGN mark and the <verisignindia.com> and
<verisignindia.net> domain names where the respondent added the word “
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Initially, Complainant must make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), then the burden of proof shifts to Respondent to establish that it has rights or legitimate interests in the disputed domain names. Respondent’s failure to respond furthers the presumption that it lacks rights and legitimate interests in the disputed domain names. The Panel finds that Complainant has established a prima facie case, but chooses to further evaluate Respondent’s rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also 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 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.”).
Complainant asserts that Respondent is not commonly known by
the disputed domain names and is not authorized to register domain names using
Complainant’s marks. Respondent’s WHOIS
information identifies Respondent as, “Josephine Ng,” which gives no
affirmative evidence that Respondent is commonly known by the disputed domain
names. Therefore, pursuant to Policy ¶
4(c)(ii), the Panel finds that Respondent lacks all rights and legitimate
interests in the disputed domain names. See Am. W. Airlines, Inc. v. Paik, FA
206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the
domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration
information, Respondent is not commonly known by the [<awvacations.com>]
domain name.”); see also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the
WHOIS contact information for the disputed domain [name], one can infer that
Respondent, Onlyne Corporate Services11, is not commonly known by the name
‘welsfargo’ in any derivation.”).
Complainant contends that
Respondent is using the disputed domain names to operate websites displaying
links to third-party websites in competition with Complainant. The Panel finds that such use of the disputed
domain names is neither a bona fide
offering of goods and services pursuant to Policy ¶ 4(c)(i),
nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Yahoo!
Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (finding that
the respondent’s use of a confusingly similar domain name to operate a
pay-per-click search engine, in competition with the complainant, was not a bona
fide offering of goods or services); see
also Or. State Bar v. A Special Day, Inc., FA 99657 (Nat. Arb. Forum Dec. 4, 2001) (“Respondent's
advertising of legal services and sale of law-related books under Complainant's
name is not a bona fide offering of goods and services because Respondent is
using a mark confusingly similar to the Complainant's to sell competing
goods.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that Respondent’s registration and use of the disputed domain names to display links to Complainant’s competitors on the resolving website constitutes a disruption of Complainant’s business and qualifies as bad faith pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites).
In addition, based on the uncontested evidence presented by
Complainant, the Panel finds that Respondent receives click-through fees for
the hyperlinks displayed on the websites that resolve from the disputed domain
names. The Panel also finds that
Respondent’s disputed domain names are capable of creating a likelihood of
confusion as to Complainant’s sponsorship and affiliation with the disputed
domain names. Such commercial benefit
constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See 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.”); see
also 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.’”).
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 <venetianmacaoferries.com>, <venetianmacaotravel.com>, <venetianferries.com>, and <cotaijetmacao.com> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: July 1, 2008
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