On October 9, 2007, Las Vegas Sands Corp. (“Las Vegas Sands”) filed a lawsuit against Joshua Murega, a California resident, in the U.S. District Court for the District of Nevada. A copy of the complaint can be downloaded here (courtesy of me).
As most people who live in Las Vegas know, Las Vegas Sands operates The Venetian Resort Hotel and Casino. In addition, Las Vegas Sands holds numerous registered trademarks and service marks for various goods and services that are variants of the mark VENETIAN. See, e.g., VENETIAN, THE VENETIAN, and THE VENETIAN RESORT HOTEL CASINO.
At issue in the complaint is Murega’s registration and ownership of various .COM domain names which contain the word “venetian,” including the following (for which I have purposely not included any hyperlinks):
Mr. Murega registered the domain names on or about August 29, 2007. On September 25, 2007, Las Vegas Sands’ counsel sent a cease and desist letter to Murega demanding that Murega cease all use of the domain names and that the domain names be transferred to Las Vegas Sands. Murega responded with a letter offering to transfer the domain names “if your response is favorable.” It is not clear from the complaint what, if anything, happened after that.
Las Vegas Sands alleges that the domain names were not registered in good faith and that Murega derives income from the links posted on the website. The complaint sets forth five counts: cybersquatting under 15 U.S.C. §1125(d), false designation of origin/unfair competition under 15 U.S.C. §1125(a), common law trademark infringement, deceptive trade practices under NRS 598.0903 et seq., and intentional interference with prospective economic advantage.
Las Vegas Sands is asking for an injunction prohibiting Murega from using the VENETIAN mark and from registering any more domain names containing the VENETIAN mark. Las Vegas Sands also requests an order to the domain name registrar of Murega’s domain names transferring the domain names to Las Vegas Sands. Finally, Las Vegas Sands asks for damages (compensatory, consequential, statutory, exemplary, and/or punitive) as well as interests, costs, and attorney’s fees.
Focusing on just the § 1125(d) cyber squatting count, the law states that a domain name registrant is liable to a trademark owner if the registrant (i) registers, traffics in, or uses a domain name that a) is identical or confusingly similar to a distinctive mark or b) is identical or confusingly similar to or dilutive of a famous mark and (ii) has a bad faith intent to profit from that trademark, including a personal name, which is protected as a trademark under Section 43 of the Lanham Act. See 15 U.S.C. § 1125(d)(1)(A).
It is safe to say that Mr. Murega has registered and is using a domain name that is confusingly similar to and possibly even dilutive (for some of the domain names) of a famous mark. So his liability for cybersquatting rests of the question of bad faith. The law sets forth the nine factors that courts can consider in determining whether a person had a “bad faith intent to profit.” See § 1125(d)(1)(B).
I seriously doubt Mr. Murega can show any other trademark rights to the name. He has no prior use of the domain name in connection with a bona fide offering of any goods or services. Upon receiving Las Vegas Sands’ cease and desist letter, he offered to transfer the sites without having used or having a bona fide attempt to use the domain name to offer any goods or services. Given the fame of the VENETIAN mark, he could not have legitimately believed or had reasonable grounds to believe that the use of the domain name was a fair use or otherwise lawful. The combination of the word VENETIAN with such words as weddings, casinos, shows, and dining clearly shows a connection of the mark VENETIAN to the Las Vegas hotel and casino (and not as an adjective pertaining to Venice). Finally, the complaint alleges that his domain names went to directory websites that provided "click-through" links to various other hotel websites which compete with The Venetian. All of these factors favor a finding of “bad faith intent to profit.”
However, Mr. Murega may be setting up to assert a “fair use” defense. I did not download all of the exhibits to the complaint, and therefore, do not know what the websites looked like before today. But when I visited a few of Murega’s sites (the few that were even working), what I discovered was a page with a 10 second countdown that said “You Are Being Redirected to The . . . .” (origin of gaming, beautiful city of the world, etc.) On this page (for at least one of the sites), there was a Vegas.com banner ad that one could click on. Then after the 10 second countdown, a page appears providing eleven paragraphs of factual data about Venice. If you are really curious and have to see it to believe it, click here and have a good laugh at a web page that looks like it was put together by a 12-year old.
Very clever, Mr. Murega. But judges are not as naïve as you may think. They have a great deal of discretion in this area, and will likely see this lame attempt to make some “fair use” out of your website as further evidence that your original registration of such domains was indeed in bad faith.
I would be surprised if Mr. Murega even answers the complaint. If he does, I would suspect it will be “in pro per” as I doubt any attorney would want to represent Mr. Murega in defending his domain names – at least not without making sure to get a large retainer upfront.
As for why Las Vegas Sands did not first pursue arbitrations under ICAAN’s Uniform Domain-Name Dispute-Resolution Policy, the most likely reason is that Las Vegas Sands wanted a legal order in place that it can assert to prevent Mr. Murega , under penalty of the law, from ever doing this again. After all, now that Las Vegas Sands has opened The Venetian Macao, Mr. Murega may try again. http://www.venetianmacaocasinos.com/ is available!