Las Vegas Sands Corp. v. IWG
c/o Michael Hodge
Claim Number: FA0803001164366
PARTIES
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.
PANEL
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.
PROCEDURAL HISTORY
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 postmaster@venetian.mobi
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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
In its Amended Complainant, Complainant contends as follows:
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Complainant
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
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The
world-renowned Venetian hotel, resort and casino in
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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.
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The
disputed domain name incorporates Complainant’s VENETIAN mark in its entirety,
and is confusingly similar to marks in which the Complainant has rights.
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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.
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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.
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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).
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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).
B.
Respondent
In its Response, Respondent makes the following contentions:
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On June 12,
2006, the dotMobi registry began to accept registrations for the .mobi TLD
during the “
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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.
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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.
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Complainant
elected not to register the <venetian.mobi> domain name
during the “
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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.
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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:
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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 “
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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.
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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.
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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.
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As of the date of this submission, Respondent’s website
resolves to <venetian.org>, a website for the Venetian festival in
St.
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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.
FINDINGS
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.
DISCUSSION
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
DECISION
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).