Las Vegas Sands Corp. v. MARY JANE H. NAM
Claim Number: FA2305002043609
Complainant is Las Vegas Sands Corp. (“Complainant”), Nevada, USA, represented by Michael J. McCue, Nevada, USA. Respondent is MARY JANE H. NAM (“Respondent”), Philippines.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <venetianvip.club>, registered with GoDaddy.com, 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.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to Forum electronically on May 8, 2023; Forum received payment on May 8, 2023.
On May 9, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the <venetianvip.club> 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 May 11, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 31, 2023 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@venetianvip.club. Also on May 11, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On June 5, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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 Las Vegas Sands Corp. owns and operates world-renowned integrated resorts in Macau and Singapore. Complainant asserts rights in the VENETIAN mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,427,621, registered February 6, 2001). The disputed domain name is identical or confusingly similar to Complainant’s marks because the disputed domain name is comprised of the VENETIAN mark in its entirety together with the descriptive term “vip” and the generic top-level domain (“gTLD”) “.club.”
ii) Respondent has no legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed Respondent any rights in the VENETIAN mark. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent is passing itself off as Complainant.
iii) Respondent registered and uses the disputed domain name in bad faith. Respondent is attempting to create a likelihood of confusion as to the source of Respondent’s website. Additionally, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the VENETIAN mark.
B. Respondent
Respondent did not submit a Response in this proceeding.
1. The disputed domain name was registered on March 3, 2023.
2. Complainant has established rights in the VENETIAN mark based upon registration with the USPTO (e.g., Reg. No. 2,427,621, registered February 6, 2001).
3. The disputed domain name’s resolving website prominently features Complainant’s V CREST and WINGED LION logo marks.
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 asserts rights in the VENETIAN mark (e.g., Reg. No. 2,427,621, registered February 6, 2001) based upon registration with the USPTO. Registration of a mark with the USPTO is a valid showing of rights in a mark. Since Complainant provides evidence of registration of the VENETIAN mark with the USPTO, the Panel finds that Complainant has established rights in the mark under Policy 4(a)(i).
Complainant claims that the disputed domain name <venetianvip.club> is confusingly similar to Complainant’s VENETIAN mark. The addition of a generic word as well as a gTLD fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See MTD Products Inc v J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”); see also Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA 1625332 (Forum July 17, 2015) (“The addition of top-level domains, such as “.club,” must also be ignored for the purposes of Policy ¶ 4(a)(i) analysis.”). The Panel notes that the disputed domain name is comprised of the VENETIAN mark in its entirety together with the descriptive term “vip” and the “.club” gTLD. Accordingly, the Panel finds the disputed domain name is confusingly similar to Complainant’s VENETIAN mark per 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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant contends Respondent lacks rights or legitimate interests in the disputed domain name since Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed to Respondent any rights in the VENETIAN mark. WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The unmasked WHOIS information for the disputed domain name lists the registrant as “MARY JANE H. NAM,” and there is no other evidence to suggest that Respondent was authorized to use the VENETIAN mark. The Panel thus finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant argues that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. The disputed domain name resolves to a log-in page, which prominently features Complainant’s V CREST and WINGED LION logo marks. Complainant contends that Respondent’s use of the VENETIAN marks on its website was designed to look like an authentic Venetian-casino website in a blatant attempt to associate itself with, indicate that it is approved by, or sponsored by Complainant. Respondent is obviously attempting to divert and mislead consumers to a fake online gaming website, presumably for financial gain. The Panel observes that use of a disputed domain name to pass off as a Complainant fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug.21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Complainant provides a screenshot of the disputed domain name’s resolving website, which prominently features Complainant’s V CREST and WINGED LION logo marks. Therefore, the Panel finds that Respondent fails to use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. 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 contends that Respondent registered and uses the disputed domain name in bad faith as Respondent is attempting to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or as to the casino services offered through Respondent’s website. Specifically, the disputed domain name’s resolving website prominently features Complainant’s VENETIAN marks and is designed to give the impression that the website is associated with the famed Venetian resort casino. This conduct is evidence of bad faith under Policy ¶ 4(b)(iii) and (iv). See Nestlé Waters North America, Inc. v. Domain Administrator / Fundacion Privacy Services LTD, FA 1792308 (Forum July 22, 2018) (Finding Respondent uses the domain names to point to a site which offers links relating to Complainant’s business. “Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation or endorsement of the web site likely to disrupt the business of the Complainant.”). The Panel recalls that Complainant provides a screenshot of the disputed domain name’s resolving website, which prominently features Complainant’s V CREST and WINGED LION logo marks. Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iii) or (iv).
Complainant further contends that Respondent had knowledge of Complainant’s rights in the VENETIAN mark at the time of registering the disputed domain name. To support this assertion, Complainant points to the recognition, reputation, and goodwill of Complainant’s widely-publicized VENETIAN mark. The Panel infers, due to the notoriety of Complainant’s mark and the manner of use of the disputed domain name that Respondent had knowledge of Complainant’s rights in the VENETIAN mark at the time of registering the disputed domain name, and finds that Respondent registered the disputed domain 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 <venetianvip.club> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: June 9, 2023
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page