Las Vegas Sands Corp. v. Castle Realty / Horace Stiller
Claim Number: FA2108001958164
Complainant is Las Vegas Sands Corp. (“Complainant”), represented by Michael J. McCue, Nevada, USA. Respondent is Castle Realty / Horace Stiller (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <venetian1620.com> and <venetian1628.com>, registered with NameSilo, LLC.
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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 4, 2021; the Forum received payment on August 4, 2021.
On August 5, 2021, NameSilo, LLC confirmed by e-mail to the Forum that the <venetian1620.com> and <venetian1628.com> domain names are registered with NameSilo, LLC and that Respondent is the current registrant of the names. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 10, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 30, 2021 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@venetian1620.com, postmaster@venetian1628.com. Also on August 10, 2021, 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 August 31, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC as Panelist.
On September 1, 2021, pursuant to Rule 12 of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") the Panel requested Complainant to provide Additional Information, specifically being certified translations into the English language of the screenshots of the web sites to which the disputed domain names resolved as exhibited in Annexes to the Amended Complaint, which appeared to be in the Chinese language, and allowed Respondent to make submissions on the Complainant’s said Additional Information within two days of the date on which it is served with said Additional Information.
On September 3, 2021 Complainant filed said Additional Information. Respondent failed to file a timely response.
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 disputed domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the trademarks and service marks VENETIAN and THE VENETIAN established by its ownership of an international portfolio of registrations described below, and its use of the mark in its casino business which is established in the United States, Macao and Singapore.
Complainant submits that the disputed domain name is confusingly similar to its VENETIAN and THE VENETIAN trademarks arguing that the mere addition of generic or descriptive words to a trademark is insufficient to distinguish a domain name from a trademark in issue. Citing Am. Express Co. v. MustNeed.com, FA 257901 (Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to the complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)).
Both disputed domain names <venetian1620.com> and <venetian1628.com> incorporate Complainant’s VENETIAN trademark in its entirety in combination with the numbers “1620” and “1628” respectively, and the generic Top-Level Domain (“gTLD”) <.com> extension.
Complainant argues that the numbers “1620” and “1628” have no significant meaning or descriptiveness and do not distinguish the disputed domain names from the VENETIAN mark adding that the gTLD <.com> extension is also insufficient to distinguish the disputed domain name from its mark. Citing Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
Complainant then submits that Respondent has no rights or legitimate interests in the disputed domain name arguing that Respondent is not commonly known as the disputed domain name, See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the domain name, and so failed to show that it had rights to or legitimate interests in that domain name as provided in Policy ¶ 4(c)(ii), where there was no evidence in the record, including the pertinent WHOIS information, suggesting that that respondent was commonly known by the disputed domain name).
Complainant asserts that it has not authorized Respondent to use the VENETIAN marks.
Complainant further argues that Respondent has not used the disputed domain in connection with any bona fide offering of goods or services, alleging that instead Respondent uses the disputed domain names to trade off of the goodwill and recognition associated with Complainant and its VENETIAN marks and in order drive internet traffic to Respondent’s website.
In this regard, Complainant refers to screen captures of the web sites to which the disputed domain names resolve, which have been annexed to the Complaint. Complainant alleges that the screen captures show that the web sites consist of content prominently displaying Complainant’s VENETIAN mark and its Winged Lion Logo whilst advertising online casino services, competing with Complainant.
Complainant contends that such use of the VENETIAN marks, including the Winged Lion Logo, by Respondent on its websites is designed to look like Complainant’s authentic Venetian-casino websites in a blatant attempt to associate itself with, and indicate that it is approved by, or sponsored by Complainant.
Complainant then submits that the disputed domain name was registered and is being used in bad faith, arguing that Complainant’s VENETIAN mark has been used continuously and extensively since 1999, adding that the VENETIAN mark has been widely publicized and therefore at the time of registration of the disputed domain names, the registrant must have had actual knowledge of Complainant and its trademarks.
Complainant adds that presumably, the websites to which the disputed domain names resolve generate revenue for Respondent and further argues that panels routinely find bad faith when respondents register and use confusingly similar domain names and websites with hyperlinks to a complainant’s competitors. Citing for example AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and thereby creating a likelihood of confusion with the complainant’s marks).
B. Respondent
Respondent failed to submit a Response in this proceeding.
C. Additional Submissions
Complainant, at the request of the Panel, timely provided certified translations of the screen captures of the websites to which the disputed domain names resolve as exhibited in the Complaint. Respondent, while given the opportunity so to do, made no timely submissions in relation to said Additional Information.
Complainant owns and operates resort casinos in the United States, Macao and Singapore and is the owner of the trademark and service mark VENETIAN and THE VENETIAN which Complainant uses in connection with the goods and services it provides.
Complainant holds a large portfolio of trademark registrations for the trademark VENETIAN, THE VENETIAN. The portfolio includes a number of registrations for THE VENETIAN with a design consisting of a winged lion (herein referred to as the “Winged Lion Logo”.)
Among Complainant’s service mark registrations are:
· United States registered trademark VENETIAN, registration number 2,507,363, registered in respect of the following services in international class 41: “Casino and gaming services; providing casino and gaming facilities; entertainment, namely, live musical performances, theatrical productions and comedy productions; health clubs; amusement centers and arcades; providing casino and gaming services by means of web sites and a global computer network.”
The disputed domain names <venetian1620.com> and <venetian1628.com> were registered on July 26, 2021 and each resolve to web pages offering links to casino, gaming services. The web pages are in the Chinese language and Complainant has provided a certified translation of same into English.
There is no information about Respondent except for that provided in the Complaint, the Registrar’s WhoIs, and the information provided by the Registrar in response to the request by the Forum for details of the registration of the disputed domain names in the course of this proceeding.
Respondent availed of a privacy service to conceal its identity and the Registrar has confirmed that Respondent is the registrant of the disputed domain names.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has made uncontested claims to rights in, and ownership of the trademarks and service marks VENETIAN and THE VENETIAN established by its ownership of its international portfolio of registrations described above and its use of the marks since 1999 in its casino business established in the United States, Macao and Singapore.
The disputed domain name consists of Complainant’s VENETIAN trademark in its entirety in combination with the Arabic numerals “1620” and “1628,” and the generic Top-Level Domain (“gTLD”) extension <.com>.
The word VENETIAN is the initial and dominant element in each of the disputed domain names. This Panel is not aware of any particular significance for the numbers “1620” and “1628” in the context of this Complaint. This Panel therefore accepts Complainant’s uncontested submissions that the numbers “1620” and “1628” have no significant meaning or descriptiveness and do not distinguish the disputed domain names from the VENETIAN mark.
In the circumstances of this Complaint the gTLD <.com> extension adds no distinguishing character to either of the disputed domain names and in each case would be considered by Internet users to be a necessary technical element.
This Panel finds therefore that on the balance of probabilities the disputed domain names are confusingly similar to the VENETIAN mark in which Complainant has rights and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name arguing that:
· Respondent is not commonly known as the disputed domain name,
· Complainant has not authorized Respondent to use the VENETIAN mark;
· Respondent has not used the disputed domain in connection with any bona fide offering of goods or services but instead uses the disputed domain names to impersonate Complainant because each of the disputed domain names resolve to a webpage that advertises online casino services that compete with Complainant’s business as shown in screen captures of the websites which have been annexed to the Complaint;
· Respondent uses not only the VENETIAN mark but also Complainant’s the Winged Lion Logo, on its websites in a blatant attempt to associate itself with, indicate that it is approved by, or sponsored by Complainant.
It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interest in a disputed domain name the burden of production shifts to the respondent to prove the existence of such rights or interests.
As Respondent has failed to discharge the burden of production, this Panel must therefore find that on the balance of probabilities, Respondent has no rights or legitimate interests in the disputed domain names and Complainant has succeeded in the second element of the test in Policy ¶ 4(a)(ii).
The uncontested evidence of Complainant is that it has used its VENETIAN mark continuously and extensively since 1999. The disputed domain names were registered on July 26, 2021. This Panel finds therefore that on the balance of probabilities the disputed domain names were registered in bad faith with Complainant’s marks in mind with the intention of taking predatory advantage of Complainant’s, reputation and goodwill in the mark.
This finding is further supported by the use to which the disputed domain names have been put, so soon after their registration, to establish websites with links to competing gaming and casino services, which create the false impression that they are in some way associated with Complainant and clearly intending to create confusion among Internet users.
This Panel also accepts Complainant’s submissions that the screen captures of the websites to which the disputed domain names resolve illustrate that on the balance of probabilities the disputed domain names are being used by Respondent in bad faith to confuse Internet users, attracting them to Respondent’s websites in order to generate revenue by misdirecting and diverting Internet traffic intended for Complainant.
In the absence of any Response from Respondent, this Panel finds therefore that Complainant has proven that, on the balance of probabilities, by using the disputed domain names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his web site by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site and the services offered on Respondent’s web site.
Complainant has therefore succeeded in the third element of the test in Policy ¶ 4(a)(iii) and is entitled to the remedy requested in the Complaint.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <venetian1620.com> and <venetian1628.com> domain names be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: September 7, 2021
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