MGM Resorts International v. WEB MASTER INTERNET SERVICES PRIVATE LIMITED
Claim Number: FA1203001435071
Complainant is MGM Resorts International (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is WEB MASTER INTERNET SERVICES PRIVATE LIMITED (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <circuscirus.com> and <bellaigo.com>, registered with Tirupati Domains and Hosting Pvt Ltd.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 18, 2012; the National Arbitration Forum received payment on March 18, 2012.
On March 21, 2012, Tirupati Domains and Hosting Pvt Ltd. confirmed by e-mail to the National Arbitration Forum that the <circuscirus.com> and <bellaigo.com> domain names are registered with Tirupati Domains and Hosting Pvt Ltd. and that Respondent is the current registrant of the names. Tirupati Domains and Hosting Pvt Ltd. has verified that Respondent is bound by the Tirupati Domains and Hosting Pvt Ltd. 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 April 19, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 9, 2012 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@circuscirus.com and postmaster@bellaigo.com. Also on April 19, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 May 14, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch as Panelist.
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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <circuscirus.com> and <bellaigo.com> domain names are confusingly similar to Complainant’s BELLAGIO and CIRCUS CIRCUS marks.
2. Respondent does not have any rights or legitimate interests in the <circuscirus.com> and <bellaigo.com> domain names.
3. Respondent registered or used the <circuscirus.com> and <bellaigo.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
1. Complainant uses the BELLAGIO and CIRCUS CIRCUS marks in connection with the provision of hotel services in Las Vegas, Nevada.
2. Complainant owns trademark registrations for the BELLAGIO (e.g., Reg. No. 2,232,486 registered March 16, 1999) and CIRCUS CIRCUS marks (e.g., Reg. No. 891,114 registered May 12, 1970) with the United States Patent and Trademark Office (“USPTO”).
3. Respondent registered both the <circuscirus.com> domain name and the <bellaigo.com> domain name on November 27, 2005.
4. Respondent’s <circuscirus.com> domain name is confusingly similar to Complainant’s CIRCUS CIRCUS mark, and Respondent’s <bellaigo.com> domain name is confusingly similar to Complainant’s BELLAGIO mark.
5. Respondent is not commonly known by either disputed domain name.
6. Each disputed domain name resolves to a website featuring links to competing websites.
7. Respondent commercially benefits from these hyperlinks through the collection of click-through fees.
8. Respondent’s registration of the disputed domain names evidences typosquatting.
9. Respondent is a serial typosquatter.
10. Respondent has offered each disputed domain name for sale to the public.
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."
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.
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.”).
Complainant claims that its registration of the BELLAGIO (e.g., Reg. No. 2,232,486 registered March 16, 1999) and CIRCUS CIRCUS marks (e.g., Reg. No. 891,114 registered May 12, 1970) with the USPTO establish its rights in the mark pursuant to Policy ¶ 4(a)(i). The Panel agrees, finding that Complainant’s registration with the USPTO is sufficient to confer rights in the marks pursuant to Policy ¶ 4(a)(i), despite the fact that Respondent resides in a country other than that in which Complainant has registered its mark. See Enter. Rent-A-Car Co. v. David Mizer Enters., Inc., FA 622122 (Nat. Arb. Forum Apr. 14, 2006) (finding that the complainant’s registration of the ENTERPRISE, ENTERPRISE RENT-A-CAR, and ENTERPRISE CAR SALES marks with the USPTO satisfied the requirement of demonstrating rights in the mark under consideration pursuant to Policy ¶ 4(a)(i)); see also Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007) (“Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).”); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Complainant claims that the <circuscirus.com> domain name is confusingly similar to its CIRCUS CIRCUS mark under Policy ¶ 4(a)(i). The Panel finds that the disputed domain omits a single letter from Complainant’s mark, while deleting the space between words and affixing the generic top-level domain (“gTLD”) “.com.” The Panel finds that past panels have not been sympathetic to the argument that these changes create a distinct domain name for the purposes of Policy ¶ 4(a)(i). See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). The Panel determines that the <circuscirus.com> domain name is confusingly similar to its CIRCUS CIRCUS mark under Policy ¶ 4(a)(i).
Complainant also claims that the <bellaigo.com> domain name is confusingly similar to its BELLAGIO mark under Policy ¶ 4(a)(i). The Panel notes that the disputed domain name transposes the letters “a” and “i” in Complainant’s mark, while adding the gTLD “.com.” The Panel further notes that these changes have not been found to create a distinctive domain name under Policy ¶ 4(a)(i) in previous UDRP cases. See Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to the complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error”); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). The Panel determines that the <bellaigo.com> domain name is confusingly similar to its BELLAGIO mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant contends that Respondent is not commonly known by the <circuscirus.com> or <bellaigo.com> domain names within the meaning of Policy ¶ 4(c)(ii). The WHOIS information for the disputed domain name identifies the domain name registrant as “WEB MASTER INTERNET SERVICES PRIVATE LIMITED.” The Panel concludes that there is little or no similarity between this name and the <circuscirus.com> or <bellaigo.com> domain names. Complainant also asserts that Respondent is not legitimately affiliated with Complainant in any way. Finally, the Panel notes that Respondent in this case has failed to satisfy its burden of providing a Response. Without such a submission, the Panel finds that there is no evidence in the record to indicate that Respondent is in fact commonly known by either disputed domain name pursuant to Policy ¶ 4(c)(ii). The Panel concludes, therefore, that Respondent is not commonly known by the <circuscirus.com> or <bellaigo.com> domain name within the meaning of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also 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 of that it is commonly known by the disputed domain name).
Complainant contends that Respondent’s use of the disputed domain names to resolve to websites which feature links to Complainant’s competitors in the Las Vegas area hotel industry. Complainant argues that such a use cannot constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). The Panel discovers that previous panels have refused to recognize rights or legitimate interests in a website which features competing hyperlinks. See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with 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)). The Panel finds that Respondent’s use of the disputed domain names constitutes neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
Complainant also alleges that Respondent lacks rights or legitimate interests in the disputed domain names based on Respondent’s offer to sell the disputed domain names to the public on the websites housed at the disputed domain names. The Panel notes that UDRP precedent indicates that a respondent’s willingness to sell a disputed domain name evidences a lack of rights or legitimate interests in the domain name. See Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“UDRP precedent is clear that auctioning domains does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use of domains.”). Based on these findings, the Panel finds that Respondent lacks rights or legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii).
Complainant further alleges that Respondent’s registration of the disputed domain names, which the Panel notes include only Complainant’s marks with small typographical errors, constitutes typosquatting, which Complainant argues is further evidence that Respondent is without rights or legitimate interests in the disputed domain names. The Panel agrees that Respondent’s activity constitutes typosquatting, further exhibiting Respondent’s lack of rights or legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii). See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, the respondent had “engaged in typosquatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”); see also IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”).
Complainant claims that Respondent has registered the disputed domain names in bad faith under ¶ 4(b)(i) based on Respondent’s offer to sell the domain names to the public on the websites housed at the disputed domain names. The Panel notes that such evidence of an offer for sale has supported findings of bad faith registration and use in the past, so long as the Panel also finds that the respondent primarily intended for such an offer when registering the disputed domain name. See Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner"); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding that the attempted sale of a domain name is evidence of bad faith). The Panel concludes that Respondent registered the disputed domain names for the purpose of selling them, and the Panel finds bad faith under ¶ 4(b)(i).
Complainant asserts that past UDRP holdings ordering the transfer of domain names registered by Respondent evidence bad faith registration and use in the instant case. See Enterprise Holdings, Inc. v. Web Master Internet Services Private Limited / Web Master Internet Services Private Limited, FA 1385869 (Nat. Arb. Forum June 6, 2011); see also W.W. Grainger, Inc. v. Web Master Internet Services Private Limited, FA 1367143 (Nat. Arb. Forum Feb. 18, 2011); see also Priceline.com, Inc. v. Web Master Internet Services Private Limited, FA 103186 (Nat. Arb. Forum Feb. 21, 2002). The Panel finds that these past UDRP rulings against Respondent exhibit a pattern of bad faith registration, and the Panel finds bad faith registration and use pursuant to Policy ¶ 4(b)(ii) in the immediate case. See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants); see also Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith pursuant to Policy ¶ 4(b)(ii) because the domain name prevented the complainant from reflecting its mark in a domain name and the respondent had several adverse decisions against it in previous UDRP proceedings, which established a pattern of cybersquatting).
Complainant alleges that Respondent’s registration and use of the disputed domain names also demonstrates attraction for commercial gain in bad faith under Policy ¶ 4(b)(iv). The Panel assumes that, by operating “pay-per-click” websites at the disputed domain names, Respondent realizes a commercial gain from the operation of its websites. The Panel finds that Respondent seeks to draw traffic to its site by using the confusingly similar disputed domain names, which will in turn generate greater click-through revenues. The Panel observes that previous panels have found a respondent’s attempt to commercially benefit from creating this sort of confusion to demonstrate bad faith as defined by Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). The Panel finds attraction for commercial gain, evidencing bad faith registration and use under Policy ¶ 4(b)(iv).
Complainant contends that Respondent’s typosquatting activity is evidence of bad faith registration and use in and of itself. The Panel notes that past panels have found bad faith registration and use where typosquatting was evident. See Canadian Tire Corp. v. domain adm’r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003) (finding the respondent registered and used the domain name in bad faith because the respondent “created ‘a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location’. . . through Respondent’s persistent practice of ‘typosquatting’”); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)). Accordingly, the Panel finds bad faith registration and use of the disputed domain names under Policy ¶ 4(a)(iii) based on Respondent’s typosquatting activities.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <circuscirus.com> and <bellaigo.com> domain names be TRANSFERRED FROM Respondent to Complainant.
John J. Upchurch, Panelist
Dated: May 25, 2012
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