Las Vegas Sands Corp. (“Sands”), the international casino and hotel giant, is one of the most famous gaming brands in the world. To protect its famous mark from infringing uses, Sands recently left the casino and took to the internet.
On June 27, 2014, Sands filed suit in the U.S. District Court for the District of Nevada against the unknown registrants of thirty-five internet domain names who were allegedly using the Sands trademark, its Chinese equivalent (“Jinsha” characters, which translate to “golden sands”), and Sands’ Venetian Resort design trademark on websites “to falsely affiliate” with Sands. Sands’ complaint included claims of trademark infringement, false designation of origin, trademark dilution, and unfair competition.
In its complaint, Sands alleged that the defendants operate “a network” of Chinese-language websites that direct users to overseas online casinos not affiliated with or licensed by Sands. Each website prominently features Sands’ registered trademarks. Additionally, some of these websites also display photos and graphics of Sands hotels and casinos, such as the iconic Marina Bay Sands Hotel in Singapore. Screenshots of several of these websites are included as an exhibit to Sands’ complaint (available here). Sands argued that the defendants’ unauthorized use of its marks for commercial purposes diluted Sands famous brand and detracted from the “substantial goodwill and excellent reputation” the marks have come to represent.
The defendants registered their allegedly infringing websites through the domain name registrars eNom, Inc., Name.com, Inc., and GoDaddy.com, Inc. According to Sands, the defendants concealed their identities by using privacy protection services, such as Whois Privacy Protection Service, Inc. and DomainsByProxy, LLC, which are offered directly by the domain name registrars. These services allowed the defendants to register domain names using proxy data, instead of using their true names and contact information.
Three days after Sands filed its complaint, the district court issued a temporary restraining order requiring the domain name registrars to remove or disable the websites in question pending trial. The court also permitted Sands to subpoena the privacy protection services for the purpose of identifying the unknown defendants. In its order, the court stated that Sands would “suffer irreparable injury to its valuable trademarks” unless these domains were temporarily restrained. Moreover, the court reasoned that its order was justified because Sands “is likely to succeed on the merits” of its trademark infringement and false designation of origin claims if the case proceeds to trial.
Despite this order, Sands still faces the constant threat posed by infringing online content. This is particularly true because of the ease with which individuals can anonymously register websites that display infringing content and falsely associate with the Sands brand. The threat of trademark infringement is heightened online because users from all over the world—including countries like China, India, and Russia where intellectual property protections are weak or not enforced—can easily target their content to consumers in the United States. Due to the anonymity of the infringing parties and the variances in foreign legal systems, U.S. trademark owners may find it more difficult to procure enforceable judgments to prevent this activity. As a result, these infringing websites can dilute and tarnish the Sands brand, and allow their unknown registrants to free ride on the strength of Sands’ marks and divert consumers for commercial gain.
Nevertheless, by policing and pursuing known instances of infringing use, Sands has helped protect itself from a future defense of trademark abandonment. It has also successfully removed at least some infringing uses of its trademarks from the marketplace, which will help reduce consumer confusion and protect the Sands brand. The fact remains, however, that even with the protections and remedies afforded under U.S. law, the burden of enforcement for civil matters remains squarely on the shoulders of the trademark owner, whose ability to protect its rights in practice may be limited by its financial resources and its success in locating infringing parties.
The case is Las Vegas Sands Corp. v. Unknown Registrants of WWW.368.COM, case number 2:14-cv-01049, in the U.S. District Court for the District of Nevada.