Wynn Resorts Holdings, LLC v. Martin Mir
Claim Number: FA1205001443434
Complainant is Wynn Resorts Holdings, LLC (“Complainant”), represented by John C. Baum of Owen, Wickersham & Erickson, P.C. , California, USA. Respondent is Martin Mir (“Respondent”), United Arab Emirates.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <wynnhotelsvegas.com> and <wynnhotelsmacau.com>, registered with GoDaddy.com, LLC.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 10, 2012; the National Arbitration Forum received payment on May 10, 2012.
On May 11, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <wynnhotelsvegas.com> and <wynnhotelsmacau.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 May 18, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 7, 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@wynnhotelsvegas.com and postmaster@wynnhotelsmacau.com. Also on May 18, 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 June 12, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) 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
Complainant owns the group of Wynn hotels, located in Las Vegas, Nevada and Macau. Wynn hotels are operated by Wynn Resorts, which does business under the WYNN trademark.
Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the WYNN mark (e.g., Reg. No. 2,977,862 registered September 7, 2011). Complainant also owns various trademark registrations with the United Arab Emirates, Ministry of Economy, Trade Mark Section (“METMS”) for WYNN-related marks, such as ENCORE AT WYNN (e.g., Reg. No. 99,634 registered January 30, 2010), WYNN LAS VEGAS (e.g., Reg. No. 99,396 registered January 14, 2010), and WYNN RESORTS (e.g., Reg. No. 99,391 registered January 14, 2010).
Complainant began using the WYNN mark in relation with its resort, hotels, and casinos since 2003 and has acquired substantial notoriety in its mark prior to Respondent’s registration of the disputed domain names. The WYNN hotel and casino in Las Vegas opened on April 28, 2005, and the WYNN hotel and casino opened in Macau on September 6, 2006.
Respondent registered the <wynnhotelsvegas.com> and <wynnhotelsmacau.com> domain names in January 2012. Respondent’s domain names resolve to websites that claim to be the “Official Vegas Promotion Booking Site” and offer reservation services for competing hotels and casinos in Las Vegas.
The <wynnhotelsvegas.com> and <wynnhotelsmacau.com> domain names are confusingly similar to Complainant’s WYNN mark.
Respondent has no connection or affiliation with Complainant and is not authorized to use the WYNN mark in any way.
The disputed domain names are not used in accordance with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent registered the disputed domain names with the intent to commercially benefit.
Respondent registered numerous infringing domain names, demonstrating a pattern of bad faith registration and use. Respondent must have been aware of Complainant’s rights in the WYNN mark at the time Respondent registered the disputed domain names and demonstrated opportunistic bad faith in its registration and use.
B. Respondent
On May 12, 2012, Respondent sent an e-mail to the National Arbitration Forum which is classified as “Other Correspondence” and not as a Response. In the Other Correspondence, Respondent states that it runs an online hotel marketing affiliate business at the website resolving from the <wynnhotelsvegas.com> domain name and that Respondent does not use the <wynnhotelsmacau.com> domain name.
For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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 asserts that it owns trademark rights in the WYNN mark through its various trademark registrations with the USPTO (e.g., Reg. No. 2,977,862 registered September 7, 2011). Complainant claims to own rights in the WYNN marks in the United Arab Emirates. The Panel notes that the marks registered with the METMS are for the ENCORE AT WYNN (e.g., Reg. No. 99,634 registered January 30, 2010), WYNN LAS VEGAS (e.g., Reg. No. 99,396 registered January 14, 2010), and WYNN RESORTS marks (e.g., Reg. No. 99,391 registered January 14, 2010). The Panel finds that Complainant established trademark rights for its WYNN mark through its trademark registration with the USPTO pursuant to Policy ¶ 4(a)(i), and the Panel also finds that Complainant established rights in the ENCORE AT WYNN, WYNN LAS VEGAS, and WYNN RESORTS marks through its trademark registrations with the METMS. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”). The Panel further finds that Complainant is not required to register its WYNN mark in the United Arab Emirates, where Respondent resides and operates, for the purposes of Policy ¶ 4(a)(i). See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Complainant contends that the <wynnhotelsvegas.com> and <wynnhotelsmacau.com> domain names are confusingly similar to its WYNN mark. Complainant alleges that the addition of the generic top-level domain (“gTLD”) “.com,” the descriptive term “hotels,” and the geographic terms “vegas” or “macau” to its WYNN mark is sufficient to establish confusing similarity. The panel in Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007), stated that adding the gTLD “.com” is not enough to differentiate a domain name from a mark. In Radisson Hotels Int’l, Inc. v. Qian, FA 1263366 (Nat. Arb. Forum July 1, 2009), held that adding the term “hotel,” a word describing the complainant’s business, does not distinguish a domain name from a mark under Policy ¶ 4(a)(i). In Wynn Resorts Holdings, LLC v. Ross, FA 1349926 (Nat. Arb. Forum Nov. 22, 2010), the panel stated that adding geographic terms such as “japan” or “tokyo” to a mark in its entirety “do[es] not avoid a finding of confusing similarity as between the mark and the domain names under the standards of the Policy.” The Panel concludes that, despite the changes made in the disputed domain names, the domain names are confusingly similar to the WYNN mark under Policy ¶ 4(a)(i).
Complainant has proven this element.
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 claims that Respondent is not commonly known by either of <wynnhotelsvegas.com> or the <wynnhotelsmacau.com> domain names and asserts that Complainant has not authorized Respondent’s use of its WYNN mark in any way. Complainant provides evidence that the WHOIS information for the disputed domain names identifies “Martin Mir” as the registrant of both domain names. The Panel concludes that, absent Complainant’s consent to use the domain name and based on the WHOIS information, Respondent is not commonly known by the disputed domain names for the purposes 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 Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
Complainant alleges that Respondent does not make a bona fide offering of goods or services or a legitimate noncommercial use of the <wynnhotelsvegas.com> and <wynnhotelsmacau.com> domain names at the resolving website. Complainant contends that Respondent offers reservation and hospitality services at the resolving websites that directly compete with Complainant’s services, from which Respondent receives “click-through” advertising revenue for each diverted Internet user. The Panel notes that Complainant provides evidence of the website corresponding with <wynnhotelsvegas.com> domain name. The panel in LodgeWorks, L.P. v. Kirchhof, FA 1336564 (Nat. Arb. Forum Sept. 1, 2010), found that the respondent’s use of a mark to maintain a website that displays links to competing hotel and hospitality services is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. In Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005), the panel stated that using a domain name to misdirect Internet users to a website that contained links to a travel service that competed with the complainant was not a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Panel concludes that Respondent’s use of the <wynnhotelsvegas.com> domain name to host a website offering Internet users a variety of hyperlinks to competing hotel and casino services is not 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)(ii).
Although Complainant does not provide evidence of the website resolving from the <wynnhotelsmacau.com> domain name, Respondent, in its Other Correspondence, admits that it is not making an active use of the disputed domain name. Respondent’s failure make to an active use of the <wynnhotelsmacau.com> domain name does not demonstrate rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii). See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s failure to associate content with its disputed domain name evinces a lack of rights and legitimate interests pursuant to Policy ¶ 4(a)(ii).”).
Complainant has proven this element.
Complainant alleges that Respondent demonstrates a pattern of registering domain names using third-party registered marks and lists six domain names not involved in the present dispute as evidence of Respondent’s pattern of bad faith registration. Based on the registration of these third-party domain names, the Panel concludes that Respondent has established a pattern of bad faith registration and use pursuant to Policy ¶ 4(b)(ii) and that such a pattern is evidence that Respondent registered and uses the <wynnhotelsvegas.com> and <wynnhotelsmacau.com> domain names in bad faith under Policy ¶ 4(b)(ii). See Nabisco Brands Co. v. Patron Group, Inc., D2000-0032 (WIPO Feb. 23, 2000) (holding that registration of numerous domain names is one factor in determining registration and use in bad faith).
Complainant contends that Respondent uses the <wynnhotelsvegas.com> and <wynnhotelsmacau.com> domain names to promote its website as the “Official Vegas Promotion and Booking Site.” Complainant claims that Respondent attracts Internet users for its own commercial gain by creating confusion between Complainant’s mark and the disputed domain names. Complainant argues that Respondent maintains a website corresponding to the disputed domain names that competes with Complainant’s hotel and casino services by taking advantage of the reputation associated with Complainant’s business and offer hyperlinks to Complainant’s competitors. Complainant provides evidence of the website corresponding to the <wynnhotelsvegas.com> domain name that shows hyperlinks displayed on the page. Using a confusingly similar domain name to attract Internet traffic in order to generate revenue, demonstrates that Respondent registered and uses the <wynnhotelsvegas.com> domain name in bad faith under Policy ¶ 4(b)(iv). See BPI Comm’cns, Inc. v. Boogie TV LLC, FA 105755 (Nat. Arb. Forum Apr. 30, 2002) (“Complainants are in the music and entertainment business. The links associated with <billboard.tv> and <boogie.tv> appear to be in competition for the same Internet users, which Complainants are trying to attract with the <billboard.com> web site. There is clearly a likelihood of confusion between <billboard.tv> and BILLBOARD as to the source, sponsorship, affiliation, or endorsement of the web site or of a product or service on the web site.”); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
Complainant failed to provide any evidence of how Respondent uses the <wynnhotelsmacau.com> domain name, aside from broad assertions that the domain name is used in the same way as the <wynnhotelsvegas.com> domain name. However, in Respondent’s Other Correspondence, Respondent stated that it was not currently using the <wynnhotelsmacau.com> domain name. The Panel finds that Respondent’s inactive use of the disputed domain name demonstrates Respondent’s bad faith registration and use under Policy ¶ 4(a)(iii). See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (“[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”).
Complainant argues that Respondent engaged in opportunistic bad faith registration and use by registering the disputed domain names in order to take advantage of the substantial publicity and reputation of Complainant’s business. The Panel finds that, by registering domain names that are tied to Complainant’s well-publicized business, Respondent engaged in opportunistic bad faith registration and use of the disputed domain names under Policy ¶ 4(a)(ii). See Wynn Resorts Holdings, LLC v. Walton, FA 1072983 (Nat. Arb. Forum Nov. 2, 2007) (stating that the respondent demonstrated opportunistic bad faith registration and use by registering the domain name on the same day that the complainant’s hotel casino opened); see also Sota v. Waldron, D2001-0351 (WIPO June 18, 2001) (finding that the respondent’s registration of the <seveballesterostrophy.com> domain name at the time of the announcement of the Seve Ballesteros Trophy golf tournament “strongly indicates an opportunistic registration”).
Further, registration of more than one domain name using a complainant’s trademark is evidence of bad faith. State Farm Mutual Automobile Insurance Company v. Life en Theos, FA 94663 (Nat. Arb. Forum June 1, 2000) (“Multiple registrations without permission and for no permissible purpose demonstrate bad faith.”). Here the record is clear that Respondent registered at least two domain names containing Complainant’s marks that refer specifically to Complainant’s hotels.
Complainant asserts that Respondent was “undoubtedly aware of [Complainant’s] rights in the WYNN marks” when it registered the <wynnhotelsvegas.com> and <wynnhotelsmacau.com> domain names. Complainant alleges that Respondent’s knowledge of Complainant’s rights in the WYNN mark is evidenced by Respondent’s inclusion of geographic and descriptive terms, which Complainant claims refer directly to Complainant’s business and business locations. The Panel finds that the content on Respondent’s resolving website demonstrates that Respondent had actual knowledge of Complainant’s rights in the WYNN mark at the time Respondent registered the disputed domain names, which demonstrates registration in bad faith pursuant to Policy ¶ 4(a)(ii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <wynnhotelsvegas.com> and <wynnhotelsmacau.com> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: June 19, 2012
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