Las Vegas Sands Corp. v. caolongwen / xiner
Claim Number: FA1601001658212
Complainant is Las Vegas Sands Corp. (“Complainant”), represented by Michael J. McCue of LEWIS ROCA ROTHGERBER CHRISTIE LLP, Nevada, USA. Respondent is caolongwen / xiner (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <venetianmacaoo.com>, registered with eName Technology Co., Ltd.
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 Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 26, 2016; the Forum received payment on January 26, 2016.
On January 27, 2016, eName Technology Co., Ltd. confirmed by e-mail to the Forum that the <venetianmacaoo.com> domain name is registered with eName Technology Co., Ltd. and that Respondent is the current registrant of the name. eName Technology Co., Ltd. has verified that Respondent is bound by the eName Technology Co., Ltd. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 1, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 22, 2016 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@venetianmacaoo.com. Also on February 1, 2016, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On February 26, 2016 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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
Complainant made the following contentions.
Complainant’s rights in the VENETIAN mark stem from registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,322,513, registered February 22, 2000). Respondent’s <venetianmacaoo.com> domain name includes Complainant’s entire VENETIAN mark, the geographic term “macaoo,” a misspelling of “Macao,” and the top-level domain “.com” which does not differentiate the domain sufficiently to prevent a finding of confusing similarity.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name and has not been authorized to use the VENETIAN mark in any manner. Further, Respondent’s domain does not resolve to an active website and therefore cannot be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent has registered and is using the disputed domain name in bad faith. Respondent’s bad faith can be inferred through failing to make the domain resolve to an active website. Additionally, Respondent’s use of Complainant’s whole mark in a domain indicates that Respondent is attempting to create a likelihood of confusion to attract internet users. Finally, Respondent had actual knowledge of Complainant’s VENETIAN mark at the time of registration.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Supported Language Request
The Panel notes that Complainant has requested that the administrative proceeding be conducted in the English language pursuant to UDRP Rule 11(a). Complainant makes this request in light of the fact that the Registration Agreement for the disputed domain name is in the Chinese language. It is established practice to take UDRP Rule 10(b), dealing with parties equally and Rule10(c), dealing with the expeditious hearing of disputes, into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties and the prompt hearing of the administrative proceeding. Factors which previous panels have seen as particularly compelling in this consideration are: WHOIS information which establishes Respondent in a country which would evince a familiarity with the English language, filing of a trademark registration with an entity which evinces an understanding of the English language, and any evidence (or lack thereof) evincing Respondent’s understanding of the Chinese language included in the Registration Agreement. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language). Further, the Panel weighs the relative time and expense in enforcing the Chinese language agreement, which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”). Here, Complainant asserts that Respondent does not speak Chinese, but is proficient in the English language. Complainant’s reasoning is based on the disputed domain being registered with only English characters, and the fact that the website to which the domain allegedly previously resolved was an imitation of Complainant’s website and includes content in the English language. The Panel has also reviewed the applicable rules regarding proceedings under the UDRP.
UDRP Rule 11(a), provides in effect that the language of the proceeding is to be the language of the Registration Agreement, in the present case Chinese, but subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding. Examining those circumstances, the Panel finds that persuasive evidence and submissions have been adduced by Complainant to show the likelihood that the Respondent is conversant and proficient in the English language. After considering all of the circumstance, the Panel therefore determines that the proceeding should be the English language.
1. Complainant is a United States company engaged in the business of operating world-renowned resorts and casinos in the United States, Macao and Singapore.
2. Complainant is the owner of the VENETIAN mark stemming from registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,322,513, registered February 22, 2000).
3. Respondent registered the disputed <venetianmacaoo.com> domain name on June 30, 2015.
4. The disputed <venetianmacaoo.com> domain name initially resolved to a website that copied Complainant’s official website, but it does not presently resolve to an active website.
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."
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.
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(f), 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.”).
The first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant has rights in the VENETIAN mark based on registration of the mark with the USPTO (e.g., Reg. No. 2,322,513, registered February 22, 2000). See Compl., at Annex 2. Panels have consistently found that a complainant has rights in a mark based on registration of the mark with the USPTO even when a respondent does not live or operate in the same country in which a complainant has registered a mark. See Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Mar. 5, 2007) (“The Panel finds that Complainant has established trademark rights in the CLEAR BLUE marks through introduction of the certificates for its U.S. registration for those trademarks”); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of Policy ¶ 4(a)(i) whether the complainant’s mark is registered in a country other than that of the respondent’s place of business). The Panel finds that Complainant has adequately demonstrated its rights in the VENETIAN mark under Policy ¶ 4(a)(i).
The second issue that arises is whether the disputed <venetianmacaoo.com> domain name is identical or confusingly similar to Complainant’s VENETIAN mark. Complainant argues that Respondent’s <venetianmacaoo.com> domain name is confusingly similar under Policy ¶ 4(a)(i). The Panel notes that the <venetianmacaoo.com> domain name contains the VENETIAN mark entirely, along with the misspelled geographic term “macaoo” and the “gTLD “.com.” Complainant urges that the term “macaoo” increases the likelihood of confusion between the mark and domain because it is a misspelled geographic term, referring to Macao, China, one of the places in which Complainant operates its business. See Compl., at Attached Annex 1. As the Panel agrees that the word “macaoo” is geographic and refers to Macao, China, it finds that the <venetianmacaoo.com> domain name is confusingly similar to Complainant’s VENETIAN mark pursuant to Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the addition of geograhic terms, such as “cancun” to the end of the CHEAPTICKETS mark in the <cheapticketscancun.com>, <cheapticketscancun.biz>, <cheapticketscancun.net>, and <cheapticketscancun.org> domain names, does not overcome a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Dow Jones & Co., Inc. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (holding that the deliberate introduction of errors or changes, such as the addition of a fourth “w” or the omission of periods or other such “generic” typos do not change respondent’s infringement on a core trademark held by the complainant).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See 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 UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s VENETIAN mark and to use it in its domain name, adding only the geographic indicator “macaoo” which would clearly be read as Macao, China and which suggests that the domain name is referring to the establishment that Complainant operates in Macao, China;
(b) Respondent registered the disputed domain name on June 30, 2015;
(c) The domain name does not resolve to an active website;
(d) Respondent engaged in the aforementioned activities without the permission or authority of Complainant;
(e) Complainant argues that Respondent has no rights or legitimate interests in respect of the <venetianmacaoo.com> domain name. Complainant claims that Respondent has not been commonly known by the disputed domain name or authorized to use the VENETIAN mark. WHOIS information associated with the domain identifies Respondent as “caolongwen / xiner,” which does not appear to resemble the disputed domain name. See Compl., at Attached Annex 4 (WHOIS record). Prior panels have found a respondent not to be commonly known by a disputed domain name based on WHOIS information and a lack of authorization from a complainant. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). In this proceeding, the Panel finds that Respondent has not been commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii);
(f) Complainant contends that Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant claims that Respondent’s disputed domain previously resolved to a webpage nearly identical to the Complainant’s homepage and now fails to resolve to an active webpage. Panels have found that failure to make active use of a domain name does not fall within the parameters of Policy ¶ 4(c)(i) or ¶ 4(c)(iii). 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 [failure to make an active use] 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).”). As the Panel agrees with Complainant’s argument, the Panel finds that Respondent’s use is not consistent with a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) and 4(c)(iii), respectively.
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant claims that Respondent has registered and is using the disputed domain name in bad faith. Complainant contends that Respondent’s use of Complainant’s mark in the disputed domain name indicates that Respondent is attempting to create a likelihood of confusion to attract internet users. Panels have found bad faith under Policy ¶ 4(b)(iv) even when there is non-use of a domain name where any use of the domain would be infringing. See Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where the respondent made no use of the domain name in question and there are no other indications that the respondent could have registered and used the domain name in question for any non-infringing purpose); Phat Fashions, LLC v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) even though the respondent has not used the domain name because “it makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”). As the Panel finds that there has been no legitimate use of the disputed domain name, the Panel holds that Respondent acted in bad faith.
Secondly, Complainant asserts that Respondent’s bad faith is shown through its failure to make the disputed domain resolve to an active website. Panels have found bad faith where a respondent failed to make active use of a disputed domain that infringed on another’s mark. See 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). As the Panel agrees with this argument, the Panel finds that Respondent has acted in bad faith under Policy ¶ 4(a)(iii).
Thirdly, Complainant also contends that in light of the fame and notoriety of Complainant's VENETIAN mark, it is inconceivable that Respondent could have registered the <venetianmacaoo.com domain name without actual knowledge of Complainant's rights in the mark. The Panel agrees with Complainant that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Fourthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed <venetianmacaoo.com> domain name using the VENETIAN mark and in view of Respondent’s conduct in the original use of the domain name and its not presently resolving to an active website, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <venetianmacaoo.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: February 29, 2016
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