Las Vegas Sands Corp. v. Fan Yu Ming
Las Vegas Sands Corp. v. Fan Yu Ming
Opinion of the Court
Pending before the Court is the Motion for Preliminary Injunction, (ECF No. 5), as well as the Supplemental Memorandum in Support, (ECF No. 13), filed by Plaintiff Las Vegas Sands Corp. ("Plaintiff"). Defendants have failed to respond to Plaintiff's Motion and the deadline to do so has passed. For the reasons discussed below, Plaintiff's motion is GRANTED .
I. BACKGROUND
This case arises from Defendants' alleged unlawful use of Plaintiff's trademarks in their operation of online casinos. Plaintiff is a Fortune 500 company that owns and operates several properties as casinos and maintains websites on which it markets its hotel and casino services and enables customers to book hotel reservations. (See Mot. for Preliminary Injunction ("Mot. for PI") 3:5-19, ECF No. 5). Plaintiff owns a series of trademark applications and registrations for its Sands and Venetian trademarks. (Id. 3:20-4:8). One of the Sands marks, over which Plaintiff asserts exclusive, common law trademark rights, depicts two Chinese language characters known as a "Jinsha" in connection with its casino and entertainment services. (Id. 4:9-4:2).
According to Plaintiff, Defendants have "set up a network of Internet websites that are accessible to U.S. citizens and are designed to drive Internet users to one or more online casinos unlawfully using" Plaintiff's marks. (Id. 4:22-24). Defendants have further allegedly registered domains (the "Infringing Domains") for unlawful use of Plaintiff's Sands mark "to falsely affiliate the casinos with [Plaintiff] and confuse customers into believing that the websites are" operated or endorsed by Plaintiff. (Id. 4:25-5:2).
II. LEGAL STANDARD
Federal Rule of Civil Procedure 65 governs preliminary injunctions. A preliminary injunction may be issued if a plaintiff establishes: (1) likelihood of success on the merits; (2) likelihood of irreparable harm in the absence of preliminary relief; (3) the balance of equities tips in its favor; and (4) that an injunction is in the public interest. Winter v. Natural Res. Def. Council, Inc. ,
III. DISCUSSION
Plaintiff seeks a preliminary injunction requiring registries for the Infringing Domains to place the associated domains on hold and lock pending a further order from the Court. (See Mot. for PI 16:4-12). As to Defendants, their failure to file any opposition constitutes consent to the granting of Plaintiff's Motion under this District's local rules.
A. Likelihood of Success on the Merits
To prevail on a trademark infringement claim, a plaintiff must show it is: "(1) the owner of a valid, protectable mark, and (2) that the alleged infringer is using a confusingly similar mark." Herb Reed Enters., LLC v. Fla. Entm't Mgmt., Inc. ,
With respect to the likelihood of consumer confusion, courts consider: "(1) strength of the allegedly infringed mark; (2) proximity or relatedness of the goods; (3) similarity of the sight, sound, and meaning of the marks; (4) evidence of actual confusion; (5) degree to which the marketing channels converge; (6) type of the goods and degree of care consumers are likely to exercise in purchasing them; (7) intent of the defendant in selecting the allegedly infringing mark; and (8) likelihood that the parties will expand their product lines." E. & J. Gallo Winery v. Gallo Cattle Co. ,
i. Strength of the Mark
The stronger a mark, the greater the protection it is accorded by trademark laws. Network Automation, Inc. v. Advanced Sys. Concepts, Inc. ,
*1077Kendall-Jackson Winery, Ltd. v. E. & J. Gallo Winery ,
Here, the marks in question include the "SANDS" and "JINSHA" marks, which Plaintiff contend are arbitrary because there is no intrinsic connection to its hotel or casino services. (Mot. for PI 7:4-6). Plaintiff also asserts that the "VENETIAN" mark is "at least suggestive." (Id. 7:6). Finally, Plaintiff argues the "long standing and extensive use" of its marks in connection with its commercially successful "world famous hotel casinos" lends support to the marks' strength. (Id. 7:6-9).
The Court agrees with Plaintiff that the "SANDS" and "JINSHA" marks are strong as they do not appear to describe or distinguish Plaintiff's underlying hotel and casino services. See Entrepreneur Media, Inc. v. Smith ,
ii. Proximity of the Goods and Marketing Channels Used
"Related goods are generally more likely than unrelated goods to confuse the public as to the producers of the goods."
*1078iii. Similarity of the Marks
As to the similarity between the allegedly infringing marks and Plaintiff's marks, the general rule is "the greater the similarity between the two marks at issue, the greater the likelihood of confusion." GoTo.com, Inc. v. Walt Disney Co. ,
iv. Evidence of Actual Confusion
Plaintiff contends it does not have evidence of customer confusion but has "received complaints from customers experiencing actual confusion from other websites of a similar nature and that are likely associated with each other." (Mot. for PI 8:19-22). The Court nonetheless recognizes that a lack of evidence of customer confusion need not weigh for or against a finding of a likelihood of confusion. See La Quinta Worldwide LLC v. Q.R.T.M., S.A. de C.V. ,
v. Degree of Care Consumer Care
Plaintiff asserts that the degree of consumer care in the context of Internet services is low and that Ninth Circuit authority is in accord with this proposition. (Mot. for PI 5:3-9). While Ninth Circuit courts previously presumed that Internet consumers lack sophistication, see, e.g. , Goto.com, Inc. ,
vi. Intent of the Defendants
Although "an intent to confuse consumers is not required for a finding of trademark infringement, intent to deceive is strong evidence of a likelihood of confusion" Entrepreneur Media ,
Even so, because of the obvious similarity between the marks and Defendants' use of them in the promotion of gambling, an inference may be drawn that Defendants intended to deceive the public as to the source of their services. See, e.g. , CytoSport, Inc. v. Vital Pharm., Inc. ,
vii. Likelihood of the Parties Expanding Their Product Lines
The final factor weighs neutrally on the balance as Plaintiff and Defendants utilize their respective Internet websites to promote and market avenues and opportunities for gaming. See Playboy Enters., Inc. v. Netscape Commc'ns Corp. ,
In summary, Plaintiff has sufficiently demonstrated a likelihood of success on the merits of its trademark infringement claim. Of the relevant factors, half of them-the strength of the marks, proximity of the services, similarity of the marks, and Defendants' intent-weigh decisively in Plaintiff's favor, and the balance of the factors are either neutral or inapplicable. The Court now turns to the remaining Winter factors.
B. Irreparable Harm
A plaintiff must "demonstrate a likelihood of irreparable injury-not just a possibility-in order to obtain preliminary relief." Winter ,
Plaintiff argues that irreparable harm is evidenced in the following ways. First, Plaintiff states the infringement impacts Plaintiff's goodwill and reputation because Plaintiff opposes legalized Internet gambling and has received complaints from customers who have used similar websites only to be "duped into paying money or gambling on these websites." (Mot. for PI 10:16-25). Second, Plaintiff asserts that because Defendants have no domestic presence, it may be impossible to recover monetary damages. (Id. 11:17-12:2). Third, Plaintiff contends that the potential for Defendants transferring the domains to *1080another registrant during the pendency of this case constitutes a credible risk of irreparable harm. (Id. 12:3-19).
In the Court's order on Plaintiff's Motion for Temporary Restraining Order, the Court recognized these are sufficient grounds to support a finding of irreparable harm. (See Order 9:19-10:8, ECF No. 7). At the hearing on Plaintiff's Motion for Preliminary Injunction, the Court noted that one of Plaintiff's arguments to establish irreparable harm-consumer confusion and the corresponding damage to reputation-apparently conflated the likelihood-of-success inquiry with the irreparable-harm question. (Mins. of Proceedings, ECF No. 11). The Court requested a supplemental brief discussing the standard in light of the Ninth Circuit's pronouncement in Herb Reed , where the Court affirmed that a showing of a likelihood of success on the merits, standing alone, is insufficient to establish irreparable harm. See Herb Reed Enters., LLC v. Fla. Entm't Mgmt., Inc. ,
In its brief, Plaintiff emphasizes that it only seeks to "lock the domain names at issue to prevent their transfer to registrars outside" the Court's jurisdiction rather than an order preventing "Defendants from using [Plaintiff's] marks on the websites at issue." (Pl.'s Suppl. Br. 1:22-25, ECF No. 13). Plaintiff contends that the relevant inquiry is whether irreparable harm will arise "if the Court does not order the registrar to maintain the lock on the domain names." (Id. 1:26-28). Therefore, according to Plaintiff, irreparable harm may be shown based upon Plaintiff's inability to "recover a monetary judgment against a foreign defendant with no presence in the United States." (Id. 3:14-15). The Court agrees.
In cases that postdate Herb Reed , Courts in this District have concluded irreparable harm may be demonstrated, in part, where a defendant "has no presence in the United States," making it "difficult or impossible ... to recover a money judgment." Omix-ADA, Inc. v. Qingdao Hairunkaiyuan Auto Parts Co., Ltd. , No. 2:17-cv-02748-MMD-PAL,
Irreparable harm is also implicated where there is a potential for an infringing defendant to transfer domain names to a different registrar outside of a court's jurisdiction. See, e.g. , *1081Las Vegas Sands Corp. v. First Cagayan Leisure & Resort Corp. , No. 2:14-cv-00424-JCM-NJK,
The Court is satisfied that Plaintiff has made a sufficient showing of irreparable harm based upon these benchmarks. Defendants in this matter are believed to be Chinese residents whose identities are unknown because they registered the Infringing Domains through a privacy service. (See McCue Decl. ¶¶ 4-6, Ex. 3 to Mot. for PI, ECF No. 5-3). The potential for Plaintiff's inability to recover based upon this fact, the risk that Defendants may transfer the domains to registrars outside this Court's jurisdiction, and Defendants' unwillingness to participate in this case all counsel in favor of a finding of irreparable harm. Additionally, as noted above, the Court agrees that loss of goodwill and control over Plaintiff's reputation can reasonably be inferred because of the distinct similarities between the marks and their use in a manner contrary to Plaintiff's public stance against online gaming. (See Siemer Decl. ¶ 9, Ex. 1 to Mot. for PI, ECF No. 5-1).
C. Balance of the Equities
"Before issuing a preliminary injunction, courts must weigh 'the competing claims of injury and [ ] consider the effect on each party of the granting or withholding of the requested relief.' " Moroccanoil, Inc. ,
Plaintiff argues that its requested relief appropriately balances the equities because it is limited to prohibiting "Defendants from transferring the domain names for the Infringing Domains to a registrar or registrant located outside of the Court's jurisdiction during the pendency of this case." (Mot. for PI 13:1-4). The Court agrees that the scope of the relief Plaintiff seeks respects an equitable balance by temporarily locking Defendants' domain names. Additionally, as discussed above, Plaintiff would suffer irreparable harm in the absence of an injunction due its loss of control over its goodwill and reputation and the credible risk that monetary damages may be unavailable absent an injunction. Finally, because the Court is satisfied that the similarity of the marks gives rise to an inference of intent, the Court concludes that the equities weigh in favor of injunctive relief.
D. Public Interest
It is well established that trademark law "protect[s] the public from confusion by accurately indicating the source of a product." State of Idaho Potato Comm'n v. G & T Terminal Packaging, Inc. ,
*1082Here, given the strong public policy in favor of mitigating customer confusion coupled with Plaintiff's strong showing of a likelihood of success on the merits, the Court finds that the public interest supports issuance of a preliminary injunction.
IV. CONCLUSION
IT IS HEREBY ORDERED that Plaintiff's Motion for Preliminary Injunction, (ECF No. 5), is GRANTED .
A. The bond that the Plaintiff posted in the amount of $ 100 as security shall remain in place pending further order of the Court.
B. The domain name registrar and registries, including but not limited to GoDaddy and VeriSign, Inc., shall maintain the Infringing Domains, as identified in Exhibit A to this Order, on hold and lock pending a further order of the Court.
EXHIBIT A
DOMAINS TO BE LOCKED PENDING RESOLUTION OF ACTION
*1083Domain Registrant Name Registrant Email 508091.com Fan Yu Ming [email protected] 120454.com Hu Weisheng [email protected] 454511.com Hu Weisheng [email protected] 554182.com Jie Guo [email protected] vn98805.com Liio Nan Feioo [email protected] 11989d.com Linl Linlin [email protected] 11989t.com Lint Linlin [email protected] 11989w.com Linl Linlin [email protected] v881888.com Mulong Wong [email protected] 368js.com Naa Feii [email protected] js8808.com Nanfei Li [email protected] vn1111.com Nanfei Li [email protected] vn505.com Nanfei Li [email protected] www-44221.com Ruixing Jiang [email protected] 6218m.com Xen Wang [email protected] 6218r.com Xen Wang [email protected] 6218t.com Xen Wang [email protected] 6218w.com Xen Wang [email protected] 621802.com Yan Huang [email protected] v116.net Yuebin Chen [email protected] v11622.com Yuebin Chen [email protected] 58668bb.com Zhu Yuxia [email protected] 58668ee.com Zhu Yuxia [email protected] 1101444234.com Registration Private [email protected] 117487.com Registration Private [email protected] 124122949.com Registration Private [email protected] 13233833330.com Registration Private [email protected] 17828c.com Registration Private [email protected] 17828n.com Registration Private [email protected] 17828p.com Registration Private [email protected] 17828s.com Registration Private [email protected] 17828w.com Registration Private [email protected] 17858i.com Registration Private [email protected] 17858m.com Registration Private [email protected] 17858s.com Registration Private [email protected] 17858t.com Registration Private [email protected] 17858x.com Registration Private [email protected] 17869g.com Registration Private [email protected] 17869n.com Registration Private [email protected] 17869r.com Registration Private [email protected] 777789.net Registration Private [email protected] *1084962466.com Registration Private [email protected] baliren.com Registration Private [email protected] blr666.com Registration Private [email protected] chenwen138.com Registration Private [email protected] hk999hk.com Registration Private [email protected] js9900.com Registration Private [email protected] v5888.com Registration Private [email protected] v6181.com Registration Private [email protected] v6184.com Registration Private [email protected] v66366.com Registration Private [email protected] v66566.com Registration Private [email protected] v7181.com Registration Private [email protected] v7982.com Registration Private [email protected] v7987.com Registration Private [email protected] v88998.com Registration Private [email protected] v8999.com Registration Private [email protected] vnsr1005.com Registration Private [email protected] vnsr1006.com Registration Private [email protected] vnsr1007.com Registration Private [email protected] vnsr1008.com Registration Private [email protected] vnsr1009.com Registration Private [email protected] vnsr11011.com Registration Private [email protected] vnsr22022.com Registration Private [email protected] vnsr33033.com Registration Private [email protected] vnsr44044.com Registration Private [email protected] vnsr55055.com Registration Private [email protected] vnsr66066.com Registration Private [email protected] vnsr77077.com Registration Private [email protected] vnsr88088.com Registration Private [email protected] vnsr99099.com Registration Private [email protected] XJS000.com Registration Private [email protected] yyyy5555.com Registration Private [email protected]
Plaintiff effected service upon Defendants on December 12, 2018, (ECF No. 10). Defendants did not appear at the Court's hearing on the instant Motion, (ECF No. 11), and have neglected to appear in this action.
Reference
- Full Case Name
- LAS VEGAS SANDS CORP., a Nevada corporation v. FAN YU MING
- Cited By
- 5 cases
- Status
- Published