Wednesday, November 7, 2007

Las Vegas’ Cosmopolitan Resort and Casino goes after cybersquatters

Over the last two weeks, 3700 Associates, LLC (“3700 Associates”), the developer of the Cosmopolitan Resort & Casino in Las Vegas, has filed several trademark infringement lawsuits in the U.S. District Court for the District of Nevada against various defendants. See 3700 Associates, LLC v. Griffin et al, Case No 2:2007cv01453 (D. Nev. Filed October 31, 2007); 3700 Associates, LLC v. Roshni et al, Case No. 2:2007cv01459 (D. Nev. Filed November 1, 2007); and 3700 Associates, LLC v. Inter Wires, Inc., Case No. 2:2007cv01460 (D. Nev. Filed November 1, 2007).

Until yesterday, however, the nature of these lawsuits was not apparent (I apologize for not shelling out the $1 to download the complaint from PACER). But after looking at the named defendants in the trademark infringement lawsuit filed by 3700 Associates yesterday, one can take an educated guess at the nature of the lawsuits.

On November 6, 2007, 3700 Associates filed a complaint against the following named defendants --,,, and See 3700 Associates, LLC v., et al, Case No. 2:2007cv01479 (D. Nev.). Without seeing a copy of the actual complaint, 3700 Associates appears to be going after domain registrants buying up domain names that are similar to the THE COSMOPOLITAN RESORT & CASINO mark.

3700 Associates announced the name for its hotel and casino project back on November 24, 2004 (click here for article announcing the name of the Cosmopolitan Resort & Casino). The day before, 3700 Associates filed several applications for federal registration of THE COSMOPOLITAN RESORT & CASINO word mark and stylized variation thereof: a) the word mark and stylized mark covering real estate services featuring condominiums (which applications are scheduled for registration in due course) and b) the word mark and stylized mark covering vacation time shares, casino services, and resort hotels (which have received notices of allowance and are awaiting Statements of Use).

3700 Associates was not as lucky, however, with some of its other pending applications for registration. When two of its applications for THE COSMOPOLITAN RESORT & CASINO were published for opposition (for restaurant and bar services and clothing), a notice of opposition was filed by Hearst Communications, Inc. (“HCI”), the publisher of the Cosmopolitan magazine and holder of several registrations for the mark COSMOPOLITAN. See Hearst Communications, Inc. v. 3700 Associates, LLC, Opposition No. 91177407 (T.T.A.B. Filed May 21, 2007). The consolidated opposition includes HCI’s opposition to several other pending applications filed by 3700 Associates which contain the word COSMOPOLITAN, including THE COSMOPOLITAN BEACH CLUB and COSMO BEACH CLUB. HCI argues that registration will cause confusion in violation of Section 2(d) of the Trademark Act (15 USC §1052(d)) and will cause dilution of HCI’s famous marks under 43(c) of the Trademark Act (15 USC §1125(c)). 3700 Associates’ answer to HCI’s opposition does not give any clues as to how the company plans to defend HCI’s allegations of likelihood of confusion and dilution.

Getting back to 3700 Associates’ cybersquatting lawsuits, the lawsuits likely resemble the lawsuit filed by Las Vegas Sands Corp against a Venetian cyber squatter (Vegas™Esq Blogged here). 3700 Associates is likely arguing that the defendants are violating Section 43(d) of the Lanham Act (15 USC §1125(d)), which holds a registrant liable 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). And given that the defendant domain name registrants are not even attempting to use the registered sites (they are being parked by GoDaddy and protected by the company’s private domain registration), 3700 Associates is likely to be successful in arguing the “bad faith intent to profit” and obtaining an order to transfer the domains at issue.

I cannot write about the Cosmopolitan without providing a link to my favorite Las Vegas real estate agent. If anyone is interested in purchasing a Cosmopolitan condominium (or any real estate in the Las Vegas area), please check out her website. Tell her the “Vegas Trademark Attorney” sent you.

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