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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Venetian Casino Resort LLC v. International Services Incorporated
Case No. D2001-0678
1. The Parties
The Complainant is :
Venetian Casino Resort LLC of 3355 Las Vegas Boulevard South, Las Vegas, Nevada 89109, United States
The Respondents are:
International Services Incorporated of 126 Aldersgate Street, London, Great Britain EC1A 4JQ and Internet Billions Domains Inc of Ofcina 1, Edificio 4, Officentro Ejecutivo La Sabana, Sabana sur San Jose, Costa Rica
2. The Domain Names and Registrars
Domain Names: <venetiancasino.com>
The Registrars with which the Domain Names are registered are:
Network Solutions Inc: <venetiancasino.com>
Domain Bank Inc: <venetiancasino.org>
3. Procedural History
A Complaint was submitted to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") in hard copy and electronically on May 22, 2001, and June 13, 2001, respectively. An Amended Complaint to deal with a deficiency in the original complaint raised by the WIPO Center was filed electronically and in hard copy on June 20 and 22, 2001, respectively.
The Panel has checked the file and confirms the WIPO Center's finding of proper compliance with the Rules for filing of the complaint.
On July 18, 2001, Respondent filed its Response.
The Complainant elected to have the dispute decided by a three member Administrative Panel and on August 24, 2001, the Panel comprising Cecil Branson Q.C. and Alan Lawrence Limbury, Panelists and Dawn Osborne, Presiding Panelist was duly appointed in accordance with Rule 6(e) and the due date for the Panel's decision was set as September 7, 2001, subsequently extended to September 14, 2001.
4. Factual Background
The Complainant runs a very large hotel and casino in Las Vegas. It has US registered trade marks for "Venetian" for inter alia hotel services filed February 28, 1996 and first used in commerce May 4, 1999, "The Venetian" for the services of "making hotel reservations for others" which was filed according to the registration certificate on May 4, 1998 and first used in commerce in November 1997 and two US registered trademarks for "The Venetian Resort Hotel Casino" for, inter alia, casino and gaming services including the provision of such services on line, and, inter alia, hotel and restaurant services both filed on January 20, 1998 and first used in commerce May 4, 1999.
The Respondents are owners and operators of Internet casinos. They own a large number of domain names containing the word "casino" including those involved in this dispute and many other geographically related casino domain names. <venetiancasino.com> was registered on September 28, 1998. <venetiancasino.net> was registered on January 24, 1999. <venetiancasino.org> was registered on May 10, 1999.
5. Parties Contentions
The Complaint states that :
The Respondents Domain Names are Identical or Confusingly Similar to the Service Names in which the Venetian has Rights.
The Complainant, the Venetian, has Rights in the Relevant Service Names
The Venetian has rights in the service marks that the Respondent’s domain names copy or otherwise resemble. The Venetian has registered the following trade names with the United States Patent and Trademark Office (U.S.P.T.O.):
"The Venetian Resort Hotel Casino"
The registered trade-name certificates may themselves suffice to establish the complainant’s rights in the marks or names at issue. See, e.g., NCRAS Mgmt., LP v. Cupcake City, D2000-1803 (WIPO February 26, 2001) ("Based on its federal trademark registration, the Complainant has acquired exclusive rights to use its . . . marks . . ."); Chanel, Inc. v. Torres, D2000-1833 (WIPO February 22, 2001) (complainant who "produced a wealth of exemplary copies of its ‘Chanel’ trademark registrations" established that respondent’s domain name copied trademarks in which the complainant had rights).
Still, the Venetian has spent considerable resources to ensure that consumers everywhere associate the names "Venetian," "The Venetian" and "The Venetian Resort Hotel Casino" with one of the world’s finest hotels and casinos. Located on the renowned Las Vegas Strip, the Venetian houses the largest and most complete resort, trade convention and corporate-meeting facility in the world. The resort features many of the famous landmarks found in Venice, Italy, including life-size replicas of the Doge’s Palace, the Rialto Bridge, St. Mark’s Square and even the 315-foot Campanile Bell Tower. As in Venice, gondoliers entertain and transport guests along a 1200-foot canal that traverses the facility. Further, guests may entertain themselves at the resort’s elaborate wax museum, on one of the Venetian’s high-tech motion adventure rides or at one of the live performances offered at the Venetian’s 60,000 square-foot venue and restaurant. Guests can also dine at any one of the several upscale restaurants located within the Venetian.
The Venetian will ultimately occupy 63 acres on the Las Vegas Strip and offer 6000 luxurious suites and a 12 million square-foot casino, convention and resort complex. At present, the Venetian already has a 116,000 square-foot casino, which includes 118 game tables and 2500 slot machines. As part of the $2.5 billion plan to complete Phase II of the resort, the Venetian will add a second 116,000 square-foot casino, which will include 100 game tables and another 2500 slot machines.
The Three Domain Names at Issue Copy or Confusingly Resemble the Most Distinctive Portions of the Service Names
The Respondent’s domain name, <venetiancasino.com>, is virtually identical or confusingly similar to any one of the three marks registered, owned and used by the Venetian. This is so because this domain name combines two of the Venetian’s service names – "Venetian" and "The Venetian" – with the most distinctive names used in the Venetian’s third service name – "Venetian . . . Casino." As a result, the domain name bears an identical or similar "appearance, sound, connotation and commercial impression" to the service names owned and used by the Venetian itself. See NCRAS Mgmt., LP v. Cupcake City, supra. Thus, Internet users and consumers who search for the true Venetian’s website by using this domain name would instead stumble upon a commercial-gaming website operated by persons who have no authority or relationship with the Venetian itself. Of course, attaching ".com" or some other top-level domain ("TLD") to the end of these service names "makes no essential difference" when comparing the Venetian’s registered names to the domain names run by the Respondent. See Dion v. Burgar, D2000-1838 (WIPO February 13, 2001).
Likewise, the Respondent’s domain name, <venetiancasino.org>, copies or confusingly resembles the Venetian’s registered service names. Again, this domain name expressly copies the name used in two of the Venetian’s registered trade names – "the Venetian" and "Venetian" – and then exacerbates the confusion by copying two of the most distinctive words in the third service name – "Venetian . . . Casino." Compare Chanel, Inc. v. Torres, supra (domain names <chanel21.com> and <chanelseven.com> were identical or confusingly similar to "Chanel" trademark because they "copied the most distinctive portion of the [c]omplainant’s trademark . . ."). And, again, adding a TLD like .org does nothing to lessen the confusion or otherwise change this conclusion.
For the same reasons, the Respondent’s domain name, <venetiancasino.net>, also copies or confusingly resembles the Venetian’s registered service names.
The Respondent Has No Rights or Legitimate Interest in the Service Names Registered and Owned by the Venetian
Nor does the Respondent have any right or legitimate interest in any of the names at issue. On February 28, 1996, the Venetian filed a trademark application for the "Venetian" mark. In November 1997, the Venetian then first used its other mark, "The Venetian," in commerce. And on January 20, 1998, the Venetian filed an application for its third mark, "Venetian Resort Hotel Casino." Therefore, because the Venetian either began using these three names in commerce or otherwise filed a trademark application for them before the Respondent registered its identical domain names, the Respondent does not have any legitimate interest in the Venetian names. See NBA Properties, Inc. v. Ituralde-Kasmir, Inc., D2000-1620 (WIPO February 6, 2001) (complainant filed application for "Washington Wizards" mark before respondent registered domain name <washingtonwizards.com>, meaning respondent had no legitimate interest in the name at issue).
As noted above, the Venetian has never given the Respondent permission to use its registered service names. Further, it has never had a relationship or association with the Respondent. See NCRAS Mgmt., LP v. Cupcake City, supra (respondent lacked rights in "National" trade names when complainant "apparently never authorized the [r]espondent to utilize any of its marks, nor does the [c]omplainant have any relationship or association whatsoever with the [r]espondent."); Chanel, Inc. v. Torres, supra (Annex M) (respondent had no rights in "Chanel" trademark when complainant had never "given the [r]espondent permission to use its domain name" and had never "had any relation at all with the [r]espondent.").
On information and belief, the Respondent has never offered bona fide goods or services in conjunction with the service names "Venetian," "The Venetian" or "Venetian Resort Hotel Casino" before this domain-name dispute arose. See Just Jeans Group Ltd. v. Domain Trade, D2000-1821 (WIPO February 16, 2001) (respondent whose domain name copied the complainant’s "Just Jeans" trademark lacked any rights in this mark when no evidence showed "that the [r]espondent has ever used the trademark JUST JEANS or that it has ever previously offered bona fide goods or services under that name or trade name").
As more fully described below, the Respondent’s bad-faith use of these domain names, including its attempts to sell them for as much as $450,000, do not reflect the actions of one who has a legitimate right or interest in the service names at issue. See Just Jeans Group Ltd .v. Domain Trade, supra (respondent who offered to sell the domain name at issue did not exhibit the "actions of a person with a legitimate right or interest in the domain name").
The Respondent Has Registered or Used these Three Domain Names in Bad Faith.
The Respondent has committed numerous acts showing that it has registered and used these three Venetian domain names in bad faith, including as follows:
- Respondent has offered to sell or lease these Venetian domain names on 14 different websites;
- Respondent has offered to sell these Venetian domain names for as much as $450,000;
- Respondent has used <venetiancasino.com> to operate an on-line gambling casino, thereby tarnishing and diluting the actual Venetian’s reputation;
- Respondent has sold or offered to sell other famous domain names, including numerous other casino domain names, for as much as $215,000;
- Respondent has had several other WIPO complaints filed against it for cybersquatting and other bad-faith uses of domain names;
- Respondent has had several WIPO decisions rendered against it finding that the Respondent registered or used other numerous domain names in bad faith, including the domain names at issue in Societe des Bains de Mer et du Cercle des Etrangers a Monaco v. International Services Inc., D2000-1328 (WIPO January 31, 2001);
● Respondent has attempted to evade the rightful prosecution of the Venetian’s WIPO claims by: (1) giving an inaccurate address for its business; (2) refusing to provide an accurate and current address despite requests that it do so; (3) using aliases, like "The Accountant," instead of identifying the individual who represents the Respondent; (4) transferring, in violation of ICANN’s administrative procedure, one of the domain names at issue to another registrar after the Venetian had initially filed its WIPO complaint; and (5) transferring that same domain name to a fictitious Costa Rican corporation that happens to maintain a Canadian telephone number and run a website using a domain name registered to and owned by the Respondent itself.
As more fully explained below, each of these reasons warrants a finding of bad faith and an order transferring the domain names at issue to the Venetian.
To begin with, the Respondent has offered to sell each of these domain names on no fewer than 14 different websites. See Chanel, Inc. v. Torres, supra (respondent who advertised its confusing domain name for sale also registered and used that domain name in bad faith). These websites include the following:
In addition, the Respondent has offered to sell <venetiancasino.com> for $450,000, <venetiancasino.net> for $50,000 and <venetiancasino.org> for $22,500, prices that undoubtedly dwarf the costs that the Respondent incurred to register or obtain these names in the first place.
The Respondent has even offered to lease these domain names. For $4,500 per month, one can lease <venetiancasino.com>. For $500 per month, one can lease <venetiancasino.net>. And for $225 per month, one can lease <venetiancasino.org>.
The Respondent has also used at least one of the domain names to operate an on-line gambling website for commercial gain. Internet users who use the domain name <venetiancasino.com> are routed to a website that, among other things, offers them the opportunity to gamble on the Internet with nothing more than a credit card. Specifically, an Internet user who goes to <venetiancasino.com> will find an array of Internet links. The users can then "click on" one of these links and pull up a separate but unidentified website. At this point, users can simply fill in a screen calling for basic information, e.g., name and e-mail address, and can begin playing several different games, e.g., roulette or blackjack, after having provided credit-card information and the amount of money that they wish to wager.
For two reasons, the bad-faith use of this domain name and the Internet gambling website associated with it also create an unfair risk of diluting and tarnishing the Venetian’s commercial reputation. First, by using "<venetiancasino.com>" to operate an on-line gambling casino, the Respondent’s domain name gives consumers the false impression that the true Venetian either operates this casino or otherwise permits or even endorses its operation. Moreover, it gives consumers the false impression that they can use this on-line casino with the same level of trust and confidence that they would place in the Venetian itself. But if consumers had an unsatisfying experience using this website, they would form an unfavorable impression not only about the website but also about the Venetian. Consequently, the Venetian’s service names, its reputation and, ultimately, its commercial viability could suffer.
Nor can the Respondent disclaim responsibility for the dilution caused by its domain name on the theory that this on-line gambling casino also maintains high ethical and performance standards. According to a report compiled by the Bear Stearns Companies Inc., thirty-five percent of all on-line gambling casinos either rig the games used by consumers or refuse to pay the money that they do win. So regardless of whether <venetiancasino.com> itself runs one of these dishonest on-line casinos, the consuming public will soon associate it with the websites that do run these rogue operations. And, for its part, the true Venetian will again suffer the consequences, even though it has nothing to do with on-line gambling in general or <venetiancasino.com> in particular.
Second, the use of <venetiancasino.com> in conjunction with an on-line gambling website wrongfully suggests that the Venetian itself is violating the laws of the United States. The United States Department of Justice has made clear that it currently considers on-line gambling a violation of the Interstate Wire Act, 18 U.S.C. § 1084, which generally prohibits gambling via the telephone. Thus, the Venetian name could become tarnished in the minds of consumers, potential investors and even prosecutors because of the erroneous (but understandable) assumption that it is operating a gambling website – <venetiancasino.com> and thereby committing a federal crime.
Meanwhile, the Respondent also traffics in the use and sale of other domain names that also copy other famous trade names and marks, another indication that it has used these three domain names in bad faith. See, e.g., Chanel, Inc. v. Torres, supra (respondent who "registered tens of domain names that include famous trademarks such as ‘Harpers,’ ‘Collins,’ and ‘Reader’s Digest’" evidenced bad-faith use of domain names). Some of the famous names and marks copied or otherwise registered by the Respondent include:
The Respondent has sold, leased or attempted to sell or lease these famous domain names for prices ranging from $15,000 to $215,000. Again, respondents who engage in this pattern of activity evince the type of bad faith contemplated by the Policy. See Dion v. Burgar, supra (Annex O) (respondent who "obtained a succession of celebrity .com domain names" exhibited conduct that "falls within the form of bad faith identified in the UDRP").
Given that the Respondent peddles famous domain names, it should come as no surprise that Respondent has also participated, as a respondent, in several other WIPO proceedings – another factor pointing to the bad faith here. In Societe des Bains de Mer et du Cercle des Etrangers a Monaco v. International Services, Inc., D2000-1328 (WIPO January 8, 2001) For example, the panel found the respondent – the same Respondent here – used a confusingly similar domain name in bad faith when the domain name linked consumers to "an on-line gaming business." The Respondent there, like it has here, also offered to sell these confusingly similar domain names on <supernames.com> and had engaged in a "pattern of behavior . . . in registering sites referring to [the casino-complainant’s] trademark and selling them." Notably, the panel also cited to a deposition and identified the individual who operates the Respondent International Services and the other companies he uses to front his operations: "Claude Levy." Further, the panel deemed it "important to note that the respondents in this case and in other cases appear to actually belong to the same entity as, in fact they are affiliated with the same companies and their Director . . . is the same person . . . . This entity is respondent in other ICANN proceedings . . ." .
The same result has inured in the other WIPO proceedings involving the Respondent. E.g., Societe des Bains de Mer et du Cercle des Etrangers a Monaco v. Britannia Finance, D2000-1315 (WIPO January 8, 2001) (domain names transferred upon finding that respondent, alias Claude Levy, acted in bad faith when his company used domain name in conjunction with an Internet gaming website and engaged in a "pattern of behavior . . . in registering sites referring to complainant’s trademark and selling them"); Societe des Bains de Mer et du Cercle des Etrangers a Monaco v. I. Bancorp Europe, D2000-1323 (WIPO January 8, 2001) (domain names transferred when respondent-company run by Claude Levy used domain names in bad faith); Societe des Bains de Mer et du Cercle des Etrangers a Monaco v. Int’l Lotteries, D2000-1326 (WIPO January 8, 2001) (domain names transferred when respondent-company run by Claude Levy used domain names in bad faith); Societe des Bains de Mer et du Cercle des Etrangers a Monaco v. Int’l Lotteries, D2000-1327 (WIPO January 8, 2001) (domain names transferred when respondent-company run by Claude Levy used domain names in bad faith).
Finally, the Respondent appears to have gone to great lengths to avoid arbitrating over the domain names at issue, another factor that shows its bad faith. See, e.g., Geoffrey, Inc. v. Babys Russian, D2000-1011 (WIPO October 13, 2000) For instance, Respondent has admittedly given its registrar Network Solutions either inaccurate or at least outdated information about its address. Further, when asked to provide an accurate address so that the Venetian could send hard copies of its complaint, the Respondent fell silent. More over, the Respondent refuses to identify by name any of the persons who actually represent the Respondent in this proceeding, using only the alias "The Accountant" in its e-mail correspondence and registration information. In context, this deception should also amount to bad faith.
Worse, it appears that the Respondent has further attempted to immunize itself from domain-name arbitration by changing the registration information for <venetiancasino.org>, one of the three domain names at issue here. The Venetian initially filed this Complaint in May 2001 and noted then that the Respondent had all three domain names registered with Network Solutions. At that time, the Network Solutions database verified this information as correct. Recently, the WIPO notified the Venetian and advised it that the registrar for <venetiancasino.org> had changed to Domain Banks, Inc. On information and belief, it appears the Respondent managed to have the registrar for this domain name changed despite the prohibition against doing so after an ICANN proceeding has begun. This form of bad-faith behavior has occurred in other cases. Compare British BroadcastingCorp. v. Data Art Corp., D2000-0683 (WIPO September 20, 2000) (discussing how respondent changed registrar for domain name after the complainant had initially filed its WIPO complaint). And it certainly constitutes bad faith. See, e.g., Geoffrey, Inc. v. Babys Russian,supra (Annex V) (bad faith present when respondent attempts to avoid detection by changing the registration information for domain names at issue).
In a similar vein, the Respondent also appears to have transferred this domain name to a nominal corporation located in Costa Rica, another factor that simply adds to the bad faith already present in this case. See McClatchy Newspapers, Inc. v. Moldava S.A., D2001-0304 (WIPO May 7, 2001) (Annex X). According to current registration records, a Costa Rican company called "Internet Billions Domains, Inc." now owns <venetiancasino.org>. But a close inspection of this company indicates that the Respondent International Services itself probably owns or controls the company and the Venetian’s domain name. This is so because Internet Billion Domains’ domain names -- <InternetBillionDomains.com> and <InternetBillions.com> -- belong to International Services itself, the Respondent. To solidify this suspicion, the telephone number listed for this alleged company begins with a "506" area code, the area code for New Brunswick, Canada, not Costa Rica.
This level of deception also of course rises to the level of bad faith contemplated by the Rules and the Policy. Compare McClatchy Newspapers, Inc. v. Moldava S.A., supra ("The covert attempts to transfer the domain name in question through a number of nominees in a variety of countries demonstrates a transparently nefarious scheme to delay justice and further harm the Complainant"). The Panel should find accordingly.
The Respondents contends that:
This is a case of attempted Reverse Domain Hijacking.
The Complainant brought these proceedings without an understanding of the scope of the Uniform Dispute Resolution Policy. It is clear from the Complaint itself, that Complainant is acting on the mistaken belief that the UDRP enables Complainant to obtain Respondent’s domain name in the absence of all of the requirements pursuant to Paragraph 4 of the UDRP.
No bad faith exists in this case. The Respondent has a legitimate interest in the subject domain name.
Complainant has resorted to these proceedings in a brazen attempt to acquire names that it has no rights to whatsoever.
Complainant owns a single hotel and casino in Las Vegas, Nevada, known as "The Venetian". It owns no other properties elsewhere in the world.
It is a relatively new business. The Venetian opened up for business on May 3, 1999.
The Venetian operates its own website under the domain name, Venetian.com. This domain name was registered by Complainant on August 28, 1998.
Respondent, International Services Incorporated ("ISI"), is a major multinational corporation and carries on business as an owner and operator of Internet Casinos. ISI, in fact, operates a large number of differently themed Internet casinos. ISI has offices in Canada and Costa Rica.
ISI has been operating Internet Casinos since 1997 and has been very successful. Tens of thousands of visitors play at ISI’s various Internet Casinos.
ISI is the registrant of <venetiancasino.com> and <venetiancasino.net>. <venetiancasino.com> was registered by ISI on September 28, 1998. Ventiancasino.net was registered on January 24, 1999.
The Respondent, Internet Billions Domains, Inc. (Internet Billions), is a holding company affiliated with ISI. Internet Billions registered <venetiancasino.org> on May 10, 1999.
Complainant’s Burden of Proof
Complainant must prove each of the three requirements under Paragraph 4 of the UDRP (Easyjet Airline Company v. Steggles, WIPO Case No. D2000-0024, Judgment: March 17, 2000), i.e.:
a) Confusing similarity to a trade-mark or service mark in which Complainant has rights;
b) Respondent has no legitimate interest in domain name; and
c) Respondent registered domain name in bad faith.
Confusing Similarity, etc.
Complainant has led evidence that it owns two trademarks:
a) "The Venetian" (Registered in the United States on November 30, 1999 in connection with making hotel reservations for others); and
b) "The Venetian Resort Hotel Casino" (Registered in the United States on May 16, 2000 in connection with casino and gaming services, etc.. No claim is made to the exclusive right to use "Resort Hotel Casino" apart from the mark as shown).
Both of these trademarks were registered after Respondents registered the disputed domain names.
It is submitted that prima facie, Complainant’s websites are not identical to Respondents’ respective domain names.
It is also submitted that the subject domain names are not confusingly similar to Complainant’s respective websites.
In particular, Respondents state that the word, Venetian, refers to persons from the City of Venice, in Italy - it is a geographic designation. Accordingly, Venetiancasino refers to a Casino in Venice. It can fairly be concluded that Complainant named its own business after the well-known Italian city as well..
The fact is that Respondents entire business is predicated on the development and operation of themed casinos, and many use a particular locale or name, in this case Venice, to evoke association with the City of Venice.
Respondents have in fact, used numerous cities throughout the world as domain names. For example:
It is therefore submitted that this demonstrates that Respondents had no intention of copying Complainant's name whatsoever, but were legitimately following their business model of registering descriptive names.
Respondents state that the word, Venetian, is by no means such a famous or fanciful mark that it is exclusively associated with Complainant.
The word, Venetian, is a very common word in commerce. For example, a search on Amazon.com or Google.com reveals thousands of different companies and products that all use the word Venetian.
In fact, a search of the United States Patent and Trademark Office records reveals that there are no less than 99 (ninety-nine) various websites registered that use the word, Venetian.
Complainant has not led any evidence to demonstrate that it is commonly known as "Venetian Casino" as opposed to "The Venetian" or "The Venetian Resort Hotel Casino".
Furthermore, Complainant has not led any evidence that its descriptive name has acquired a secondary meaning as understood by trademark law. Complainant must prove that its descriptive marks have acquired a secondary meaning in order to demonstrate that it has enforceable trademark rights (George Wimpey Plc v. Easy4all Internet Solutions, CPR 0103).
It is submitted that had Respondents registered the <venetian.com> or <venetianhotelcasino.com>, then it could be reasonably concluded that Complainant’s websites are identical or confusingly similar to the subject domain names. The fact is that the subject domain names share some of the words of Complainant’s trademarks, but are by no means virtually identical so as to be considered confusingly similar pursuant to the UDRP (See: Reed Publishing v. Select Gourmet, CPR 004).
The Complainant must demonstrate that "the overall commercial impression created by the cited marks" creates confusing similarity (George Wimpey Plc v. Easy4all Internet Solutions, CPR 0103). It is submitted that Complainant ought to have considered coining a more fanciful and exclusive name for its business if it wants to avoid any confusion with another business who also uses the geographic indicator, Venetian.
Complainant has merely asserted that a visitor to Respondents’ websites would be confused as to the ownership of the Internet Casino and has provided no evidence of this. Complainant has offered no evidence whatsoever of a single user being confused. Respondents has never received any communications from a single visitor as to confusion.
In any event, Respondents state that their respective registrations of the subject domain names pre-date Complainant’s respective trade-mark registrations. Accordingly, it is submitted that Complainant cannot reasonably or fairly seek to capitalize on its marks as against Respondents who had no notice of Complainant’s marks when the subject domain names were registered. Accordingly, Respondents state that they have rights to the subject domain names that pre-date any rights that Complainant may have acquired subsequent to registration.
A domain name should not be transferred where Respondents’ registration of the domain name pre-dates the filing of an application for trademark registration by Complainant. In Plan Express v. Plan Express, WIPO D2000-0565, Judgement: July 17, 2000;
Respondent provided evidence to support its claim that it registered the domain name before Complainant’s application for trademark registration. Furthermore, Respondent was not aware of Complainant’s business or trademark at the time of registering the domain name. Similarly, in this case Respondents had no notice of registered marks. In fact, an employee for Respondent, ISI, conducted a trade-mark search for Registered Trade-marks prior to registering the subject domain names and was unable to locate any registered trademarks.
It should also be noted that Complainant has no trade-mark registrations whatsoever in either Canada or Costa Rica, where Respondents principal offices are respectively located. Trademark registrations are only enforceable in the particular jurisdiction that they are registered in.
Respondents have, in fact, never heard of Complainant’s business. No evidence has been filed that Complainant has a so-called ‘famous’ mark, Like "COKE" or "VOLKSWAGEN". The fact is that Complainant is an American casino and is not so well known as to create any inference that Respondents have necessarily heard of it.
Respondents state that they are legitimately using the disputed domains as part of their international casino business. In particular, Respondents’ practice is to acquire various descriptive domain names that relate to Internet gaming and to build themed casinos around the names.
At any given time, Respondents have at least 80-100 different websites under development. In fact, Respondents have a separate company, WebSiteGraphics.com, that designs and develops Respondents' casino websites. See: http://www.websitesgraphics.com/portfolio.htm.
Respondents have developed a website 'splash page' or 'login page' for Venetian Casino. In fact, this page was developed 14 (fourteen) months ago but due to other ongoing casino development projects, has not been put on line. Respondents therefore submit that this demonstrates bona fide preparations to use the disputed domain names.
To date, Respondents are using the subject domains as referring URL’s to their casinos, until such time as an independent, stand-alone website is built for Venetian Casino.
No Bad Faith
Pursuant to Paragraph 4(a)(iii) of the UDRP, Complainant must prove both "bad faith registration" and "bad faith use".
It is indisputable that there cannot have been "bad faith registration" as Respondent’s registration pre-dated Complainant’s existence.
It is submitted that without proving "bad faith registration", Complainant cannot succeed.
Complainant accuses Respondents of attempting to sell the subject domains. The fact is that Complainant has been misled. Respondent’s financial advisors are preparing an Initial Public Offering for the year 2001. It was upon the advice of the financial advisors that Respondent listed various domain names ‘for sale’ in the hopes of gauging the market value of their domain name property.
Quite simply, it was never the intention of Respondents to actually sell these names. If Complainant had inquired of Respondents, they would have been told as much.
Furthermore, Complainant incorrectly points to the fact that Respondents have wrongly registered names of famous personalities, as in, <clintoncasino.com> and <pamelaandersoncasino.com>. The fact is that Respondents are not actively using these names however in the past, Respondents intended to create more themed casinos surrounding these well known personalities, with proper licensing if necessary.
Complainant also accuses Respondents of having been parties to previous ICANN proceedings. The fact is that Respondents own or manage literally thousands of names and are very large companies. Respondents have in fact lost ICANN proceedings that were all brought by the same Complainant in respective of related names. These decision are currently the subject of a court action commenced by Respondents in Virginia, United States.
Complainant accuses Respondent of 'diluting and tarnishing' its marks. This is not the proper subject of an ICANN Complaint. Nevertheless, it is nothing short of remarkable that the Complainant, should accuse Respondents of operating 'rigged' casino without any evidence of this whatsoever. The fact is that Respondents operate legitimate, legal, and scrupulously honest Internet casinos. Las Vegas casinos on the other hand, have historically been run by the mafia until recently.
Complaint inexplicably accuses Respondent of attempting to avoid arbitration by switching registrars for <venetiancasino.org>. This is nonsense. Arbitration may not be avoided by switching registrars. This falsehood underlines Complainant's misunderstanding of ICANN procedure.
To succeed in its complaint, Complainant must show that each of the conditions of paragraph 4(a) of the Policy are satisfied, namely that:
(i) the domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) the Respondents have no rights or legitimate interests in the domain names; and
(iii) the domain names have been registered and are being used in bad faith.
Identical or Confusingly Similar Trademark
The Panel finds that:
The trademark Venetian is not inherently descriptive for casino or gaming services that are not provided in or do not have any real connection with Venice. Venetian is the distinctive element in the US trademarks which have been registered by the Complainant.
Venetian is also the most distinctive element in the Domain Names registered by the Respondent, given that the word "Casino" would be likely to be taken merely as an indication that the Domain Names are to be used in the provision of casino and gaming services, which indeed they are.
Two of the Complainant’s registered marks are for "The Venetian Resort Hotel Casino". Members of the public seeing the Domain Names could easily believe that they were connected with the Complainant due to the similarity between these registered marks of the Complainant and the Domain Names, particularly if they were aware of the field in which the Complainant operates.
Accordingly, the Panel holds that the Domain Names are confusingly similar to Complainant's registered trademarks.
Respondents’ Rights or Legitimate Interests
The Respondent has not been commonly known as Venetian Casino nor has it been making any non-commercial or fair use of the name.
The Panel is of the opinion that while the overall obligation to prove the elements of paragraph 4 (a) of the Policy rests on the shoulders of the Complainant, paragraph 4 (a)(ii) of the Policy involves proving a negative. The interaction between paragraphs 4 (a)(ii) and 4 (c) results in an obligation on the Complainant to make out a prima facie case. When this has been done, it is then for the Respondent to demonstrate the contrary (Document Technologies, Inc. v International Electronic Communications Inc., WIPO Case No. D2000-0207; Universal City Studios,Inc v G.A.B. Enterprises WIPO Case No. D2000-0416; Newman/Haas Racing v Virtual Agents Inc., WIPO Case No. D2000-1688). In this case the majority of the panel did not see on the preponderance of the evidence that the Respondent had shown demonstrable preparations to use the Domain Names themselves or a corresponding domain name in connection with the bona fide offering of goods or services. The Respondent was merely funneling visitors to a general website. The failure to provide business plans or evidence reasonably related to preparations for legitimate use discredits any argument that it is preparing to make a bona fide use of the Domain Names.
Accordingly, the Panel holds that the Respondent has no rights or legitimate interests in the Domain Names.
Use and Registration in Bad Faith
By offering the Domain Names for sale and by seeking to hide its contact details and changing domain name registrar to make filing of a Complaint more difficult, the Panel finds that the Respondents have used the Domain Names in bad faith. (There is also some evidence that the Respondents have registered the names of famous individuals and also <microsoftcasino.com> as domain names. The latter registration may necessarily be in bad faith due to the very established and famous trademark which it contains, but it is not the registration which is being considered here.)
The question as to whether the Domain Names were registered in bad faith is more difficult.
The panel is satisfied that the names had been used and registered in bad faith for the following reasons:
Bad faith use can be evidence of bad faith registration (William Hill Organisation Ltd. v Lisa Jane Statton, WIPO Case No. D2000-0827) The offering of the Domain Names on the web, particularly <venetiancasino.com> for $450,000 after the Complainant’s casino is up and running very successfully, would fall into this category. Whilst the doctrine of constructive notice does not apply where the registration of the Domain names precedes the application by the Complainant to register its mark this is not the case here with regard to the Complainant’s filing dates. The Respondent maintains it had no notice of the Complainant’s rights and contends that it conducted a trademark search prior to registering the Domain Names. However, this search must have disclosed the Complainant’s pending applications. Despite this knowledge the Respondent proceeded with registration of the Domain Names in question. This evidence reflects not only on bad faith but also on Respondent’s rights and legitimate interests.
Accordingly, the Domain Names had been registered and used in bad faith.
7. Domain Name Hijacking
The Complaint has been successful. Accordingly, the Respondents’ request for a declaration that the Complaint is an attempt at reverse domain name hijacking is denied.
In the light of the foregoing, the Panel decides that the Domain Names are confusingly similar to the Complainant’s trademark and the Respondent has no rights or legitimate interests relating to the Domain Names which were registered and used in bad faith.
Accordingly, in light of the above, the Panel orders that the Domain Names, specifically <venetiancasino.com>, <venetiancasino.net> and <venetiancasino.org> BE TRANSFERRED to the Complainant.
Cecil Branson, QC
Alan Lawrence Limbury
Dated: September 14, 2001