Wynn Resorts Holdings, LLC v. Oleksiy Oleksiy
Claim Number: FA1009001348797
Complainant is Wynn Resorts Holdings, LLC ("Complainant"), represented by John C. Baum of Townsend and Townsend and Crew LLP, California, USA. Respondent is Oleksiy Oleksiy ("Respondent"), Macau.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wynnencoremacau.com>, registered with Melbourne IT, Ltd. d/b/a Internet Names Worldwide.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 27, 2010; the National Arbitration Forum received payment on September 27, 2010.
On September 28, 2010, Melbourne IT, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <wynnencoremacau.com> domain name is registered with Melbourne IT, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the name. Melbourne IT, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne IT, Ltd. d/b/a Internet Names Worldwide registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 29, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 19, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@wynnencoremacau.com. Also on September 29, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 27, 2010 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin as Panelist.
Respondent has submitted correspondence concerning the transfer of the subject domain name, and it has been taken into consideration
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent other than the correspondence heretofore mentioned.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <wynnencoremacau.com> domain name is confusingly similar to Complainant’s ENCORE WYNN MACAU mark.
2. Respondent does not have any rights or legitimate interests in the <wynnencoremacau.com> domain name.
3. Respondent registered and used the <wynnencoremacau.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Wynn Resorts Holdings, LLC, is the owner and operator of high quality casino resort facilities and services, including the Wynn Macau and the Wynn Encore Macau. Complainant owns numerous trademark registrations for the ENCORE WYNN MACAU mark with the Intellectual Property Department of the Macau Economic Services (“IPDMES”):
Reg. No. N/36 324 issued October 30, 2008;
Reg. No. N/36 325 issued October 30, 2008;
Reg. No. N/36 326 issued October 30, 2008;
Reg. No. N/36 327 issued October 30, 2008;
Reg. No. N/36 328 issued October 30, 2008; and
Reg. No. N/36 329 issued October 30, 2008.
Respondent, Oleksiy Oleksiy, registered the <wynnencoremacau.com> domain name on December 29, 2008. The disputed domain name is not currently in active use and displays no content other than an “under construction” message.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant owns numerous trademark registrations for the ENCORE WYNN MACAU mark with the IPDMES:
Reg. No. N/36 324 issued October 30, 2008;
Reg. No. N/36 325 issued October 30, 2008;
Reg. No. N/36 326 issued October 30, 2008;
Reg. No. N/36 327 issued October 30, 2008;
Reg. No. N/36 328 issued October 30, 2008; and
Reg. No. N/36 329 issued October 30, 2008.
The Panel finds that Complainant’s registration of its ENCORE WYNN MACAU mark with the trademark authority of Macau is sufficient to establish its rights in the mark pursuant to Policy ¶ 4(a)(i). See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority).
Complainant argues that Respondent’s <wynnencoremacau.com> domain name is confusingly similar to Complainant’s ENCORE WYNN MACAU mark. The disputed domain name modifies Complainant’s mark only by transposing the terms “wynn” and “encore,” deleting the spaces between the terms, and adding the generic top-level domain (“gTLD”) “.com.” The Panel finds that transposing terms of Complainant’s mark fails to distinguish the disputed domain name from Complainant’s mark. See NCRAS Mgmt., LP v. Cupcake City, D2000-1803 (WIPO Feb. 26, 2001) (finding the domain name <nationalrentalcar.com> confusingly similar to the mark NATIONAL CAR RENTAL and holding that “merely inverting the terms of a mark . . . is quite insufficient to dispel consumer confusion; the mark and the resulting domain name are simply too similar to each other”); see also Bloomberg L.P. v. Herrington Hart, NIRT, FA 464790 (Nat. Arb. Forum June 1, 2005) (“The Panel finds that the use of transposed words, similar to transposed letters does not suffice to differentiate the disputed domain name from Complainant’s mark to create a separate and distinct mark.”). The Panel also finds that deleting the spaces between the terms and adding the gTLD do not prevent confusing similarity. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). Therefore, the Panel finds that Respondent’s <wynnencoremacau.com> domain name is confusingly similar to Complainant’s ENCORE WYNN MACAU mark according to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks rights and legitimate interests in the disputed domain name. According to Policy ¶ 4(a)(ii), once Complainant puts forth a prima facie case, the burden shifts to Respondent to demonstrate that it does have rights and legitimate interests in the disputed domain name. The Panel finds that Complainant has put forth a sufficient prima facie case in these proceedings. As Respondent failed to respond to the allegations made against it, the Panel may assume that Complainant’s allegations are true and that Respondent lacks rights and legitimate interests in the disputed domain name. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the disputed domain name). The Panel, however, elects to consider the evidence in the record in light of the Policy ¶ 4(c) factors to determine whether Respondent possesses rights and legitimate interests in the disputed domain name.
Complainant asserts that Respondent is not commonly known by the <wynnencoremacau.com> domain name. The WHOIS information for the disputed domain name lists the registrant as “Oleksiy Oleksiy,” which has no nominal association with the disputed domain name. The Panel therefore finds that Respondent is not commonly known by the <wynnencoremacau.com> domain name and consequently lacks rights and legitimate interests under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the disputed domain name); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant alleges that Respondent is not actively using the <wynnencoremacau.com> domain name because there is no content on the resolving website aside from an “under construction” message. The Panel finds that failure to make active use of the disputed domain name does not support a finding of a bona fide offering of goods or services according to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Complainant also contends that Respondent offered to transfer the <wynnencoremacau.com> domain name to Complainant for compensation in excess of Respondent’s out-of-pocket costs. Complainant asserts that Respondent offered the disputed domain name to Complainant for “1 free dinner for 2 persons in Wynn Macau restaurant of my choice” in addition to Respondent’s out-of-pocket costs. Complainant argues that later, for simplicity’s sake, Respondent withdrew the demand for dinner, replacing it with a demand for HKD 38,888. The Panel finds that Respondent’s efforts to transfer the disputed domain name in this manner reveal Respondent’s lack of rights and legitimate interests according to Policy ¶ 4(a)(ii). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleges that Respondent offered to transfer the <wynnencoremacau.com> domain name to Complainant on more than one occasion for compensation in excess of Respondent’s out-of-pocket costs. Complainant argues that Respondent first offered to transfer the disputed domain name in exchange for “1 free dinner for 2 persons in Wynn Macau restaurant of my choice” and then later changed the demand to HKD 38,888. The Panel finds that Respondent’s attempts to transfer the disputed domain name for excessive compensation indicates Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(i). See Vanderbilt Univ. v. U Inc., FA 893000 (Nat. Arb. Forum Feb. 19, 2007) (finding that the respondent’s requests for money as well as advice from professors at the complainant’s university in exchange for transferring the disputed domain name suggested bad faith registration and use under Policy ¶ 4(b)(i)); see also Lyon v. Casserly, FA 193891 (Nat. Arb. Forum Oct. 29, 2003) (finding that the domain name was acquired primarily for the purpose of transferring the domain name to the complainant for valuable consideration in excess of the respondent's out-of-pocket costs because the respondent made various requests for concert tickets, backstage passes, press passes and a website development contract).
Complainant contends that Respondent’s <wynnencoremacau.com> domain name is not currently in active use as the only content on the resolving website is an “under construction” message. The Panel finds that Respondent’s failure to actively use the disputed domain name is further evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wynnencoremacau.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: November 2, 2010
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