Internet Trademark Case Summaries
Venetian Casino Resort, LLC v. Venetiangold.com
380 F. Supp. 2d 737 (E.D. Va. 2005)
Plaintiff, owner of the Venice-themed Venetian Casino resort, brought this in-rem suit against the following domain names used to offer Internet casino-type gaming services: “VenetianGold.com,” “VenetianGold.net,” “VenetianGoldCasino.com,” “VenetianGoldCasino.net,” “VenecianGold.com,” “VeniceGoldCasino.com,” and “VenicianGold.com.” Before registering any of the domain names, the registrant, Vincent Coyle, knew of plaintiff. Mr. Coyle ran the websites from England, and the servers were located in Costa Rica. Mr. Coyle placed at least four advertisements in U.S. gaming publications and failed to exclude at least 132 Internet users with U.S. addresses. The parties filed cross-motions for summary judgment on plaintiff’s ACPA claim based on a likelihood of confusion. The court initially held that plaintiff’s federally registered mark VENETIAN was arbitrary and thus inherently distinctive. Even if plaintiff’s VENETIAN mark was merely descriptive because it described the Venice theme of plaintiff’s casino, the marks acquired secondary meaning before registration of the domain names based on these facts: plaintiff spent $13.5 million in 2000 and 2001 for advertising throughout the U.S. in various media; plaintiff received substantial unsolicited media coverage including features on all major broadcast and cable television networks; plaintiff earned $566 million gross annual revenue by 2001; plaintiff successfully defended its mark on several occasions; and plaintiff obtained ten federal trademark registrations for “VENETIAN” marks before Coyle registered his domain names. The court next held that the domain names were confusingly similar to plaintiff’s VENETIAN marks. Plaintiff tried to distinguish Harrods by arguing that “GOLD” was suggestive of gambling and not generic like the additional terms at issue in Harrods. According to the court, however, it was irrelevant whether the term “GOLD” was generic or suggestive of gambling because the domain names “’bear such a visual resemblance that internet users would reasonably assume that the names were modified, used, approved, and/or permitted’ by the plaintiff.” The court then held that Coyle registered the domain names with a bad-faith intent to profit from plaintiff’s marks because: Coyle had no intellectual property rights in the domain names before registering them; the domain names did not include the legal name or names commonly used to identify Coyle or his company; the domain names were not previously used in connection with the bona fide offering of any goods or services; the domain names were not used in connection with noncommercial or fair use of plaintiff’s marks; Coyle intended to divert consumers from plaintiff’s website to his websites because he knew about plaintiff before registering the domain names, he advertised in the United States, and he also registered the domain names “VenetianCasinoVegas.com” and “VenetianCasinoUSA.com”—“persuasive evidence” that Coyle did not select the domain names merely to “conjure up an image of Venice, the birthplace of gambling”; Coyle registered multiple domain names known to be identical or confusingly similar to marks of others (in addition to the seven defendant domain names, Coyle registered ten other domain names including “gold” and misspellings of “Venetian”); and plaintiff’s VENETIAN mark was famouse. Finally, the court held that ACPA’s safe-harbor provision did not apply here because the statutory bad-faith factors strongly supported bad faith by the registrant. The court therefore granted plaintiff’s summary-judgment motion and denied defendant’s motion, and ordered the registry to change the registrar of the domain names to a registrar selected by plaintiff that will then register the domain names in plaintiff’s name.