Las Vegas Sands Corp. v. 雪 李
Claim Number: FA2201001979953
Complainant is Las Vegas Sands Corp. (“Complainant”), represented by Michael J. McCue, Nevada, USA. Respondent is 雪 李 (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <venetiang.com>, registered with Dynadot, 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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 11, 2022; the Forum received payment on January 11, 2022.
On January 11, 2022, Dynadot, LLC confirmed by e-mail to the Forum that the <venetiang.com> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 January 12, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 1, 2022 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@venetiang.com. Also on January 12, 2022, 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 official response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On February 7, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth as Panelist.
On February 8, 2022, the Panelist, referring to paragraph 12 of the Rules, requested the Complainant to complete the Complaint with a set of copies of Certificates of Registration of those trademarks that the Complainant had generally referred to as proof of prior rights. On February 15, 2022, the Complainant completed the Complaint with the requested documentation.
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 provides various gambling and betting services and casinos. Complainant has rights in the THE VENETIAN trademark through its registrations with various trademark authorities (e.g. United States Patent and Trademark Office (“USPTO”) Reg. 2,427,621; Chinese State Administration for Industry and Commerce (“SAIC”) Reg. 6,693,923). Respondent’s <venetiang.com> domain name is identical or confusingly similar to Complainant’s trademark as it incorporates most of the trademark, removes the word “the”, and adds the letter “g” and the “.com” generic top-level domain (“gTLD”) to the end of the trademark.
Respondent lacks rights and legitimate interests in the <venetiang.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its THE VENETIAN trademark in the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, but instead passes off as Complainant and offers competing, fraudulent casino services on the disputed domain name’s resolving website.
Respondent registered and uses the <venetiang.com> domain name in bad faith. Respondent disrupts Complainant’s business for commercial gain as it passes off as Complainant and offers competing, fraudulent casino services on the disputed domain name’s resolving website. Respondent registered the disputed domain name with knowledge of Complainant’s rights in the THE VENETIAN trademark.
B. Respondent
Respondent failed to submit a timely, formal response in this proceeding. In an informal email correspondence, Respondent instead inquired as to whether Complainant would like to buy the disputed domain name.
The Complainant is the owner of a number of trademark registrations for THE VENETIAN trademark and versions thereof around the world, including but not limited to:
U.S. national trademark registration No. 2,427,621 THE VENETIAN (word), registered on February 6, 2001 for services in Intl Class 35;
Chinese national trademark registration No. 6693923 THE VENETIAN (word), registered February 7, 2014 for goods in Intl Class 34;
Australian national trademark registration No. 1211297 THE VENETIAN (word), registered January 23, 2013 for services in Intl Classes 36, 39, 41, 42, 43, 44 and 45;
Brazilian national trademark registration No. 829,486,127 VENETIAN (word), registered June 18, 2013 for services in Intl Class 41;
Brazilian national trademark registration No. 829,486,143 THE VENETIAN (fig), registered August 24, 2010 for services in Intl Class 39;
European Union Trade Mark No. 016120362 THE VENETIAN (word), registered September 7, 2017 for goods and services in Intl Classes 3, 14, 16, 18, 21, 25, 35, 36, 39, 41, 43, 44 and 45;
Hong Kong SAR trademark registration No. 301027331AA THE VENETIAN (word), registered January 8, 23008 for goods and services in Intl Classes 3, 9, 44 and 45; and
Japanese national trademark registration No. 6247808 THE VENETIAN (word), registered April 23, 2020 for services in Intl Classes 39, 41, 43 and 45.
The disputed domain name <venetiang.com> was registered on Nov. 23, 2021.
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”).
The Complainant claims rights in the THE VENETIAN trademark through its registrations with various trademark authorities (e.g. USPTO Reg. 2,427,621, registered February 6, 2001; SAIC Reg. 6693923, EUIPO Reg. 016120362, etc). Registration with multiple trademark agencies is generally sufficient in demonstrating rights in a trademark under Policy ¶ 4(a)(i). See Red Hat, Inc. v. Muhammad Shahzad, FA 1787738 (Forum June 19, 2018) (“Registration of a mark with multiple trademark agencies is sufficient to demonstrate rights to a mark per Policy ¶ 4(a)(i).”). Complainant has provided copies of Trademark Certificates from a number of countries and regions around the world. Therefore, the Panel find that Complainant has rights in the trademark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <venetiang.com> domain name is identical or confusingly similar to Complainant’s THE VENETIAN trademark. Under Policy ¶ 4(a)(i), removing the word “the” from a trademark and adding a letter and the “.com” gTLD is generally insufficient in differentiating a disputed domain name from the trademark it incorporates under Policy ¶ 4(a)(i). See The Pros Closet, Inc. v. Above.com Domain Privacy, FA 1616518 (Forum June 3, 2015) (finding confusing similarity where the <proscloset.com> domain name merely omitted the first term (“the”) from Complainant’s THE PROS CLOSET mark, eliminated spacing between words, and added the “.com” gTLD.); see also OpenTable, Inc. v. Above.com Domain Privacy, FA 1626187 (Forum Aug. 10, 2015 (“Respondent’s <oipentable.com> domain name is confusingly similar to the OPENTABLE mark under Policy ¶ 4(a)(i) because the disputed domain merely adds the letter ‘i’ . . . ”). The disputed domain name incorporates the word “Venetian” from the THE VENETIAN trademark, and adds the letter “g” to the end along with the “.com” gTLD. Therefore, the Panel agree with Complainant’s conclusion, and find that Respondent’s domain name is confusingly similar to Complainant’s trademark under Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See 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.”); see also 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).
Complainant argues that Respondent is not commonly known by the <venetiang.com> domain name, nor has Complainant authorized or licensed Respondent to use its THE VENETIAN trademark in the disputed domain name. Under Policy ¶ 4(c)(ii), relevant WHOIS information may demonstrate that a respondent is not commonly known by a disputed domain name, while a lack of evidence demonstrating otherwise may affirm a Complainant’s assertion that it never authorized or licensed Respondent to use its trademark in the disputed domain name. See Bittrex, Inc. v. Operi Manaha, FA 1815225 (Forum Dec. 10, 2018) (concluding that the respondent was not commonly known by the <appbittrex.com> domain name where the WHOIS information listed Respondent as “Operi Manaha,” and nothing else in the record suggested Respondent was authorized to use the BITTREX mark.). The WHOIS of record identifies Respondent as “雪 李” and nothing in the record rebuts Complainant’s assertion that it never authorized or licensed Respondent to use its THE VENETIAN trademark in the disputed domain name. Therefore, the Panel find that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent does not use the <venetiang.com> domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use. Under Policy ¶¶ 4(c)(i) and (iii), using a disputed domain name to pass off as a Complainant and offer competing and/or fraudulent services is generally not considered a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See iFinex Inc. v. Yuri Hefetz / Genie-Solution, FA 1789385 (Forum July 9, 2018) (holding that the respondent’s mimicking the complainant’s website in order to cause existing or potential customers to falsely believe they are setting up a new account with the complainant is prima facie evidence of the respondent’s lack of rights and legitimate interests in the disputed domain name); see also Vanguard Trademark Holdings USA LLC v. Dan Stanley Saturne, FA 1785085 (Forum June 8, 2018) (“Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use” where “Respondent is apparently using the disputed domain name to offer for sale competing services.”). Complainant provides screenshots of the disputed domain name’s resolving website, which purports to offer online gambling services that Complainant argues are fraudulent. The Panel agrees with the Complainant’s conclusion, and find that Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
The Complainant argues that Respondent registered and uses the <venetiang.com> domain name in bad faith. Under Policy ¶¶ 4(b)(iii) and (iv), using a disputed domain name to pass off as a Complainant and offer competing and/or fraudulent services is generally considered evidence of bad faith disruption for commercial gain. DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Allianz of Am. Corp. v. Bond, FA 680624 (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). As noted above, Complainant has provided screenshots of the disputed domain name’s resolving website, which purports to offer online gambling services that Complainant argues are fraudulent. The Panel agrees, and find that Respondent registered and uses the disputed domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Further, it is noted that the only reply from the Respondent in this proceeding, is an informal question if the Complainant would like to buy the <venetiang.com> domain name from the Respondent, thereby the Respondent itself has also clearly indicated that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(i).
Complainant argues that Respondent registered the <venetiang.com> domain name with actual knowledge of Complainant’s rights in the THE VENETIAN trademark. Under Policy ¶ 4(a)(iii), actual knowledge is generally sufficient in demonstrating bad faith, and may be established through Respondent’s incorporation of a trademark into a domain name, as well as their use of the disputed domain name’s resolving website. See 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.”). The Panel recall that the disputed domain name incorporates the word “Venetian” from the THE VENETIAN trademark, as well as Complainant’s screenshots of the disputed domain name’s resolving website, which purports to offer online gambling services that Complainant argues are fraudulent. Further, THE VENETIAN trademark – in the name of the Complainant - is registered in China, the home country of the Respondent. Therefore, the Panel find that Respondent registered the disputed domain name in bad faith under 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 <venetiang.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: February 18, 2022
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