Las Vegas Sands Corp. v. zhaozhou wang
Claim Number: FA1608001688993
Complainant is Las Vegas Sands Corp. (“Complainant”), represented by Michael J. McCue of LEWIS ROCA ROTHGERBER CHRISTIE LLP, Nevada, USA. Respondent is zhaozhou wang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <venetiamnacao.com>, registered with GoDaddy.com, LLC.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 12, 2016; the Forum received payment on August 12, 2016.
On August 12, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <venetiamnacao.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 August 12, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 1, 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@venetiamnacao.com. Also on August 12, 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 September 13, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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
i) Complainant uses its THE VENETIAN mark in connection with the provision of casino and gaming services. Complainant has registered its THE VENETIAN mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. 2,295,362, registered Nov. 30, 1999), showing rights in the mark. Complainant also has rights in the VENETIAN MACAO mark. Respondent’s <venetiamnacao.com> domain name is confusingly similar to Complainant’s THE VENETIAN and VENETIAN MACAO marks.
ii) Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the domain and Complainant has not authorized Respondent to use its marks. Further, Respondent has not made any bona fide offering of goods or services or any legitimate noncommercial or fair use. Respondent instead engages in phishing behavior by passing itself off online as Complainant. Respondent’s website also redirects Internet users to a third-party website that prompts visitors to launch a chat window. Through this use, Respondent presumably gains access to sensitive personal information.
iii) Respondent has registered and used the disputed domain in bad faith. Respondent’s passing off behavior imputes an attempt to attract for commercial gain as per Policy ¶ 4(b)(iv). This passing off behavior also suggests that Respondent had actual knowledge in the mark when registering and subsequently using the disputed domain—bad faith as per a nonexclusive consideration of Policy ¶ 4(a)(iii).
B. Respondent
Respondent did not submit a Response to the Complaint. The Panel notes that the <venetiamnacao.com> domain name was registered by Respondent on October 9, 2015.
Complainant established that it had rights in the mark contained in the disputed domain name. The disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
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 (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.”).
Complainant uses its THE VENETIAN mark in connection with the provision of casino and gaming services. Complainant alleges that it has registered its THE VENETIAN mark with the USPTO (e.g., Reg. 2,295,362, registered Nov. 30, 1999), showing rights in the mark. There exists a consensus that USPTO registrations indicate that rights under Policy ¶ 4(a)(i) are fulfilled. See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i).). Therefore, this Panel agrees that Complainant has rights in its THE VENETIAN mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <venetiamnacao.com> domain name is confusingly similar to Complainant’s THE VENETIAN mark. Complainant argues that Respondent’s <venetiamnacao.com> domain name is confusingly similar to its THE VENETIAN mark. The Panel notes that the domain eliminates the article “THE” from the mark, adds the geographic term “Macao,” transposes the letters “m” and “n,” and adds the gTLD “.com.” Eliminating articles has not been seen as a relevant alteration. See generally Christmas Place, Inc. v. Pham Dinh Nhut, FA 1597046 (Forum Feb. 16, 2015) (Finding that removal of a spac[e], and removal of an article and preposition, are without legal significance so as to mitigate the confusingly similarity.). Capital One Financial Corp. (supra) establishes the non-distinguishing alterations of transposing letters and adding the “.com” gTLD. Further, the following case demonstrates that the addition of geographic terms may not be considered a distinctive feature: Doosan Corporation v. philippe champain, FA 1636675 (Forum Oct. 13, 2015) (finding that geographic designations or terms descriptive of a complainant’s business operations do not remove a domain name from the realm of confusing similarity). While Complainant claims it operates in Macao, the Panel agrees that the geographic addition of “Macao” is descriptive of Complainant’s offerings and is therefore a confusingly similar addition. Thus, the Panel agrees that Respondent’s <venetiamnacao.com> domain name is confusingly similar to its THE VENETIAN mark under Policy ¶ 4(a)(i).
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 (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 (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.”).
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name. Complainant asserts that Respondent is not commonly known by the domain and Complainant has not authorized Respondent to use its marks. The Panel notes that the WHOIS indicates “zhaozhou wang” as registrant of the disputed domain. Panels have agreed that, absent a Response, such contentions succeed under Policy ¶ 4(c)(ii). See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Therefore, this Panel agrees that Complainant has successfully argued against Respondent’s rights under Policy ¶ 4(c)(ii).
Further, Complainant argues that Respondent has not made any bona fide offering of goods or services or any legitimate noncommercial or fair use. Respondent instead engages in phishing behavior by passing itself off online as Complainant. Respondent’s website also purportedly redirects Internet users to a third-party website that prompts visitors to launch a chat window. Through this use—according to Complainant—Respondent presumably gains access to sensitive personal information. Panels have agreed that passing off behavior cannot evince any rights or legitimate interests. See Kmart of Mich., Inc. v. Cone, FA 655014 (Forum Apr. 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website). Panels have also regarded phishing attempts in the same manner. See Google Inc. v. Pritam Singh / Pandaje Technical Services Pvt Ltd., FA 1660771 (Forum Mar. 17, 2016) (agreeing that respondent has not shown any bona fide offering of goods or services or any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii) as the respondent used the complainant’s mark and logo on a resolving website containing offers for technical support and password recovery services, and soliciting Internet users’ personal information). Accordingly, as the Panel agrees with Complainant, it finds that Respondent has failed to use the disputed domain in connection with any bona fide offering of goods or services or for any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
Complainant argues that Respondent has registered and used the disputed domain in bad faith. In arguing Respondent’s bad faith, Complainant contends that the aforementioned passing off behavior imputes an attempt to attract for commercial gain as per Policy ¶ 4(b)(iv). Panels have seen passing off behavior to indicate bad faith. See H-D Michigan, Inc. v. Petersons Auto., FA 135608 (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). Therefore, this Panel agrees that Respondent’s attempt to pass itself off as Complainant online through the disputed domain indicates bad faith as per the language of Policy ¶ 4(b)(iv).
Lastly, Complainant also proposes that Respondent’s alleged passing off behavior also suggests that Respondent had actual knowledge in the mark when registering and subsequently using the disputed domain—bad faith as per a nonexclusive consideration of Policy ¶ 4(a)(iii). Panels have agreed with similar reasoning. Cf. WordPress Foundation v. mich delorme / mich d dots tlds, FA1410001584295 (Forum, Nov. 25, 2014) (“Because Respondent here relies on the WORDPRESS mark in the disputed domain name and also makes use of Complainant’s services at the resolving page, the Panel finds that Respondent had actual knowledge of Complainant’s mark, and that such knowledge evidences Policy ¶ 4(a)(iii) bad faith.”). Therefore, this Panel finds circumstances in the instant dispute which indicate that Respondent had actual knowledge—and finds bad faith per Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <venetiamnacao.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: September 24, 2016
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