Las Vegas Sands Corp. v. venetianhk-com c/o venetianhk
Claim Number: FA0806001212872
Complainant is Las Vegas Sands Corp. (“Complainant”), represented by Susan Okin Goldsmith, New Jersey, USA. Respondent is venetianhk-com c/o com venetianhk (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <venetianhk.com>, registered with Bizcn.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 26, 2008; the National Arbitration Forum received a hard copy of the Complaint on June 27, 2008. The Complainant was submitted in both Chinese and English.
On June 27, 2008, Bizcn.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <venetianhk.com> domain name is registered with Bizcn.com, Inc. and that Respondent is the current registrant of the name. Bizcn.com, Inc. has verified that Respondent is bound by the Bizcn.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 July 2, 2008, a Chinese Language Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 22, 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@venetianhk.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 29, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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.
Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <venetianhk.com> domain name is confusingly similar to Complainant’s VENETIAN mark.
2. Respondent does not have any rights or legitimate interests in the <venetianhk.com> domain name.
3. Respondent registered and used the <venetianhk.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Las Vegas Sands Corp., is a casino, hotel, and resort services provider that operates under its VENETIAN mark (Reg. No. 2,295.362 issued November 30, 1999), which was registered with the United States Patent and Trademark Office (“USPTO”). Complainant has also registered a variety of VENETIAN trademarks with the USPTO and other governmental trademark authorities worldwide. Complainant runs its Venetian casino and resort through its subsidiary, “Venetian Casino Resort.” Complainant also owns and operates numerous domain names for its business, including the <venetian.hk>, <venetian.com> and <venetianmacao.com> domain names.
Respondent registered the <venetianhk.com> domain name on April 25, 2008. Respondent used the disputed domain name to resolve to a website that was substantially identical to Complainant’s own website that promoted its Venetian Macao resort. Respondent’s website was subsequently taken down and currently the disputed domain name leads to an inactive parked web page.
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’s trademark registrations of the VENETIAN mark with the USPTO and other trademark authorities confers upon Complainant sufficient rights in the mark under Policy ¶ 4(a)(i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Respondent’s <venetianhk.com>
domain name merely incorporates Complainant’s entire VENETIAN mark while adding
the geographic acronym “hk” and the generic top-level domain (“gTLD”)
“.com.” TLD additions are irrelevant
under Policy ¶ 4(a)(i). Moreover, “hk”
is the common acronym for “Hong Kong,” which Complainant contends to be “one
hour [by ferry]” to Complainant’s resort.
Internet users seeking Complainant would likely be confused as to the
geographical addition, and believe that the geographical proximity implied a
relation between the disputed domain name and Complainant. Therefore, the Panel finds that the <venetianhk.com> domain name is
confusingly similar to Complainant’s VENETIAN mark under Policy ¶ 4(a)(i). See Trip Network
Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that
the addition of a gTLD, whether it be “.com,” “.net,” “.biz,” or “.org,” is
irrelevant to a Policy ¶ 4(a)(i) analysis); see
also Hess Corp. v. GR, FA 770909
(Nat. Arb. Forum Sept. 19, 2006) (finding that the respondent’s
<hess-uk.com> domain name was confusingly similar to the complainant’s
HESS mark, as the mere addition of “uk” and a hyphen failed to sufficiently
differentiate the disputed domain name from the registered mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has asserted that complainant lacks rights and legitimate interests in the disputed domain name. Once Complainant sets forth a prima facie case supporting its allegations, as it has in this case, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
There is no evidence in the record that allows for the
conclusion that Respondent is or ever was commonly known by the disputed domain
name. While the WHOIS information lists
the registrant of record as “venetianhk-com c/o venetianhk,” there is no
evidence that Respondent was known by the name.
Moreover, the corresponding website does not list itself by this name,
but rather attempts to mimic Complainant.
Therefore, the Panel finds that Respondent is not commonly known by the
disputed domain name under Policy ¶ 4(c)(ii).
See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7,
2006) (concluding that the respondent was not commonly known by the disputed
domain names where the WHOIS information, as well as all other information in
the record, gave no indication that the respondent was commonly known by the
disputed domain names, and the complainant had not authorized the respondent to
register a domain name containing its registered mark); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA
715089
(Nat. Arb. Forum July 17, 2006) (concluding that the
respondent was not commonly known by the <coppertown.com> domain name
where there was no evidence in the record, including the WHOIS information,
suggesting that the respondent was commonly known by the disputed domain name).
Respondent’s disputed domain name resolved to a website that sought to mimic Complainant’s website. The Panel presumes that Respondent sought to engage in this “phishing” scheme by creating an identical website so that it could perpetuate some fraudulent activity upon unsuspecting consumers. The Panel finds this to be neither a bona fide offering of goods nor services under Policy ¶ 4(c)(i) or a legitimate noncommercial use under Policy ¶ 4(c)(iii). See Allianz of Am. Corp. v. Bond, FA 690796 (Nat. Arb. Forum June 12, 2006) (holding that the respondent’s use of the <allianzcorp.biz> domain name to fraudulently acquire the personal and financial information of Internet users seeking Complainant’s financial services was not 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)); see also Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (finding that using a domain name in a fraudulent scheme to deceive Internet users into providing their credit card and personal information is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use).
Respondent’s website currently resolves to a dormant
website. The Panel also finds this to be
evidence demonstrating that Respondent lacks rights and legitimate interests
under Policy ¶ 4(a)(ii). See
Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat.
Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s
mark and is not using the <bloomberg.ro> domain name in connection with
an active website. The Panel finds that
the [inactive] holding of a domain name that is identical to Complainant’s mark
is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i)
and it is not a legitimate noncommercial or fair use of the domain name
pursuant to Policy ¶ 4(c)(iii).”); see also TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel
concludes that Respondent's [inactive] holding of the domain name does not
establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s disputed domain name resolved to a website that
featured content identical to Complainant’s own legitimate website in an
attempt to deceive Internet users into divulging personal information. The Panel finds this prior use to be
disruptive as to Complainant’s operations, and finds that Respondent has
engaged in bad faith registration and use under Policy ¶ 4(b)(iii). See S.
Exposure v. S. Exposure, Inc., FA
94864 (Nat. Arb. Forum July 18, 2000) (finding that the respondent registered
the domain name in question to disrupt the business of the complainant, a
competitor of the respondent); see also Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000)
(defining “competitor” as “one who acts in opposition to another and the
context does not imply or demand any restricted meaning such as commercial or
business competitor”).
Respondent’s confusingly similar disputed domain name was
presumably used for commercial gain as it attempted to glean Internet users’
private information. The Panel finds
that Respondent has engaged in bad faith registration and use under Policy ¶
4(b)(iv), as Respondent has created a likelihood of confusion as to the source
of the disputed domain name and corresponding website. See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum
June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv)
where the respondent was diverting Internet users searching for the complainant
to its own website and likely profiting); see
also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29,
2000) (finding bad faith where the domain name in question is obviously
connected with the complainant’s well-known marks, thus creating a likelihood
of confusion strictly for commercial gain).
The Panel also finds that Respondent’s prior engagement in a
phishing exercise by creating a corresponding website that mimicked
Complainant’s own website for fraudulent and deceptive activity constituted bad
faith registration and use under Policy ¶ 4(a)(iii). See Wells Fargo & Co. v. Maniac State, FA 608239 (Nat. Arb. Forum
Jan. 19, 2006) (finding bad faith where the respondent registered the
<wellsbankupdate.com> domain name in order to fraudulently acquire the
personal and financial information of the complainant’s customers); see also Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006)
(finding that the respondent demonstrated bad faith registration and use
because it was attempting to acquire the personal and financial information of
Internet users through a confusingly similar domain name).
The Panel also finds
that Respondent’s current inactive use of the disputed domain name constitutes
bad faith registration and use under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp.,
D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s inactive
holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the
Policy); see also 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).
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 <venetianhk.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: August 6, 2008
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