Venetian Casino Resort, LLC v. Venetiangold. Com

380 F. Supp. 2d 737, 76 U.S.P.Q. 2d (BNA) 1609, 2005 U.S. Dist. LEXIS 15934, 2005 WL 1869450
CourtDistrict Court, E.D. Virginia
DecidedJuly 28, 2005
DocketCIV.A. 04-118
StatusPublished
Cited by7 cases

This text of 380 F. Supp. 2d 737 (Venetian Casino Resort, LLC v. Venetiangold. Com) is published on Counsel Stack Legal Research, covering District Court, E.D. Virginia primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Venetian Casino Resort, LLC v. Venetiangold. Com, 380 F. Supp. 2d 737, 76 U.S.P.Q. 2d (BNA) 1609, 2005 U.S. Dist. LEXIS 15934, 2005 WL 1869450 (E.D. Va. 2005).

Opinion

*739 MEMORANDUM ORDER

LEE, District Judge.

THIS MATTER is before the Court on Plaintiffs Motion for Summary Judgment and Defendants’ cross Motion for Summary Judgment. The Court granted Plaintiffs Motion for Summary Judgment and denied Defendants’ Motion for Summary Judgment by Order dated June 17, 2005. This Opinion explains that ruling. Plaintiff is the famous Venetian Casino Resort, located on the Las Vegas Strip. Besides gambling, the Venetian Casino Resort is best known for its elaborate Venice-themed decorations and architecture. Vincent Coyle registered VenetianGold.com and six other Defendant Domain Names that link to a website offering worldwide casino-type gaming services on the Internet. In addition to the defendant Domain Names, Vincent Coyle also registered Ven-etianCasinoVegas.com and VenetianCasi-noUSA.com. Plaintiff brought this action under the Anti-Cybersquatting Consumer Protection Act (“ACPA”), 15 U.S.C § 1125(d)(1)(A), alleging that Defendant Domain Names are confusingly similar to Plaintiffs trademarks and that the registrant of Defendant Domain Names had a bad faith intent to profit from those marks. The issues before the Court are (1) whether Plaintiffs marks are distinctive or famous, (2) whether Defendant Domain Names are confusingly similar to Plaintiffs marks, (3) whether the registrant of Defendant Domain Names had a bad faith intent to profit from Plaintiffs marks, and (4) whether Plaintiff is entitled to summary judgment. The Court grants Plaintiffs Motion for Summary Judgment because no genuine issue of material fact remains unresolved and Plaintiff is entitled to summary judgment as a matter of law. For the reasons which follow, the Court holds that Defendant Domain Names violate the ACPA because they are confusingly similar to Plaintiffs distinctive marks and the registrant of Defendant Domain Names evinced a bad faith intent to profit from those marks.

I. BACKGROUND

The Venetian Casino Resort (‘Venetian,” “Plaintiff,” “VCR”) is a hotel and casino resort that has operated on the Las Vegas Strip since 1999. VCR has at least fifteen United States Trademark Registrations for its service marks, including VENETIAN, THE VENETIAN, THE VENETIAN RESORT HOTEL CASINO. Ten of VCR’s Trademark Registrations were issued before Vincent Coyle and Global DIP Gaming SA registered Defendant Domain Names VenetianGold.com, VenetianGold.net, VenetianGoldCasi-no.com, VenetianGoldCasino.net, Veneeian-Gold.com, VeniceGoldCasino.com, and Ven-icianGold.com. Furthermore, Vincent Coyle knew about the VCR in Las Vegas before he registered any of the defendant Domain Names. PL’s Mem. Supp. Mot. Summ. J. at 6. Vincent Coyle also registered VenetianCasinoVegas.com and Vene-tianCasinoU S A. com.

Defendants in this case are seven domain names that are linked to a website offering internet casino-type gaming services vrithin and outside the United States. Vincent Coyle is the President and Chief Executive Officer of Global DIP, a Costa Rican Corporation. Global DIP launched its VenetianGold.com website in June of 2001. Since then, the website’s business has been conducted in the United Kingdom by Vincent Coyle, but the website’s servers are in Costa Rica. Vincent Coyle concedes that he placed at least four advertisements in gaming publications distributed within the United States, and failed to exclude at least 132 players who registered with U.S. addresses. Defs.’ Resp. Pl.’s Opp’n Defs.’ Mot. Summ. J. at 11-12.

*740 II. DISCUSSION

A. Standard of Review

Under Rule 56(c), the Court must grant summary judgment if the moving party demonstrates that there is no genuine issue as to any material fact, and that the moving party is entitled to judgment as a matter of law. See Fed. R. Civ. P. 56(c). When reviewing a motion for summary judgment, the Court views the facts in a light most favorable to the non-moving party. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). Once a motion for summary judgment is properly made and supported, the opposing party has the burden of showing that a genuine dispute exists. See Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586-87, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986). The mere existence of some alleged factual dispute between the parties will not defeat an otherwise properly supported motion for summary judgment; the requirement is that there be no genuine issue of material fact. Anderson, 477 U.S. at 248, 106 S.Ct. 2505. “Rule 56(e) requires the non-moving party to go beyond the pleadings and by [its] own affidavits, or by the ‘depositions, answers to interrogatories, and admissions on file,’ designate ‘specific facts showing that there is a genuine issue for trial.’ ” Celotex Corp. v. Catrett, 477 U.S. 317, 324, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986).

B. Analysis

The Court grants Plaintiffs Motion for Summary Judgment because no genuine issues of material fact remain for trial and Plaintiff is entitled to summary judgment as a matter of law. Plaintiff has established that Defendant Domain Names violate the ACPA. First, the Venetian’s marks are distinctive. Second, Venetian-gold.com and the other defendant Domain Names are confusingly similar in sight, sound, and meaning to Plaintiffs marks. Third, the registrant of Defendant Domain Names evinced a bad faith intent to profit from Plaintiffs marks. The Court grants Plaintiffs motion because no reasonable jury could conclude that Defendant Domain Names do not violate the ACPA.

The Anti-Cybersquatting Consumer Protection Act

Congress enacted the Anti-Cybersquat-ting Consumer Protection Act (“ACPA”) on November 29, 1999, in response to an onslaught of e-savvy entrepreneurs who registered domain names incorporating protected trademarks. See Virtual Works, Inc. v. Volkswagen of America, Inc., 238 F.3d 264, 267 (4th Cir.2001). Congress viewed the practice of cybersquatting as harmful because it threatened “the continued growth and vitality of the Internet.” S.Rep. No. 106-140, at 9 (1999). Under the ACPA, a person is a cybersquatter and is liable to the owner of a protected mark if that person:

(i) has a bad faith intent to profit from [a mark]; and
(ii) registers, traffics in, or uses a domain name that-
(I) in the case of a mark that is distinctive at the time of registration of the domain name, is identical or confusingly similar to that mark;

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380 F. Supp. 2d 737, 76 U.S.P.Q. 2d (BNA) 1609, 2005 U.S. Dist. LEXIS 15934, 2005 WL 1869450, Counsel Stack Legal Research, https://law.counselstack.com/opinion/venetian-casino-resort-llc-v-venetiangold-com-vaed-2005.