MGM Resorts International v. Ronald Krupinski / Named Domains
Claim Number: FA1401001537377
Complainant is MGM Resorts International (“Complainant”), Nevada, USA. Respondent is Ronald Krupinski / Named Domains (“Respondent”), Rhode Island, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mgmgrandcasino.net>, 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 6, 2014; the National Arbitration Forum received payment on January 6, 2014.
On January 6, 2014, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <mgmgrandcasino.net> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name. 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 January 6, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 27, 2014 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@mgmgrandcasino.net. Also on January 6, 2014, 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 January 29, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant is the owner of the MGM GRAND mark (e.g., Reg. No. 1,060,488 registered Mar. 1, 1977), registered with the United States Patent and Trademark Office (“USPTO”), used in connection with casino goods and services.
The <mgmgrandcasino.net> domain name is confusingly similar to the MGM GRAND mark. Respondent adds the term “casino,” which describes Complainant’s business, along with the generic top-level domain (“gTLD”) “.net” and omits the space between words.
Respondent does not have rights or legitimate interests in the <mgmgrandcasino.net> domain name. Respondent is not commonly known by the <mgmgrandcasino.net> domain name. Respondent is, as demonstrated by the WHOIS information, known by an entity other than that which is reflected by the disputed domain name, and Complainant has not given Respondent permission to use the MGM GRAND mark. Respondent is not using the <mgmgrandcasino.net> domain name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use. Respondent uses the <mgmgrandcasino.net> domain name to host commercial pay-per-click links.
The domain name should be considered as having been registered and being used in bad faith.
Respondent was in a previous UDRP proceeding where the domain name was ordered to be transferred from Respondent to the complainant. By continuing to register trademarked names, Respondent has engaged in a pattern of abusive registrations with the explicit knowledge of his wrongdoing. Respondent has intentionally attempted to attract, for commercial gain, Internet users to the <mgmgrandcasino.net> domain name by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the <mgmgrandcasino.net> domain name. The MGM GRAND mark is known internationally in connection with Complainant, and Complainant has marketed and sold services using the Complainant’s marks since 1973. Respondent’s registration of a domain name incorporating not only the mark but also a term that directly identifies the services provided under that mark demonstrates that Respondent had knowledge of Complainant’s rights in the MGM GRAND mark prior to registering the <mgmgrandcasino.net> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns a USPTO registered trademark for the MGM GRAND mark.
Respondent is not affiliated with Complainant and had not been authorized to use the MGM GRAND mark in any capacity.
Respondent registered the at-issue domain name after Complainant acquired trademark rights in MGM GRAND.
Respondent uses the <mgmgrandcasino.net> domain name to host pay-per-click links.
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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant demonstrates that it has rights in a mark for the purposes of the Policy by virtue of its USPTO registration for the MGM GRAND mark. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations). The at-issue domain name contains Complainant’s MGM GRAND mark in its entirety less its space, suffixes the suggestive descriptive term “casino” thereto, and appends the top level domain name, “.net,” to the resulting string. However, the differences between the Complainant’s mark and the at-issue domain name fail to distinguish the two under Policy ¶4(a)(i). Therefore the Panel concludes that the at-issue <mgmgrandcasino.net> domain name is confusingly similar to Complainant’s MGM GRAND trademark. See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark); 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)).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with affirmative evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond and as discussed below there is no evidence supporting any finding pursuant to Policy 4(c) suggesting that Respondent has rights in the at-issue domain name, Complainant’s prima facie showing acts conclusively.
The WHOIS information for the at-issue domain name identifies Respondent as “Ronald Krupinski / Named Domains” and the record before the Panel contains no evidence that might otherwise tends to prove that Respondent is commonly known by the at-issue domain name notwithstanding the contrary WHOIS information. The Panel therefore finds that Respondent is not commonly known by the <mgmgrandcasino.net> domain name 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).
Respondent uses the <mgmgrandcasino.net> domain name to host a website containing pay-per-click links. Respondent’s use of the at-issue domain name in this manner is neither a bona fide offering of goods or services under Policy ¶¶ 4(c)(i), nor a legitimate or fair use of the domain name under Policy ¶¶ 4(c)(iii). 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)).
In light of the uncontroverted evidence, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
The at-issue domain name was registered and is being used in bad faith. As discussed below Policy ¶4(b) bad faith circumstances are present and there is additional non-Policy ¶4(b) evidence from which the Panel may independently conclude that Respondent acted in bad faith pursuant to Policy ¶4(a)(iii).
First, Respondent was party to a previous UDRP proceeding where one of Respondent’s domain names was ordered to be transferred from Respondent to the complainant.[1] Here again, Respondent registered a trademark as part as of a confusingly similar domain name. Respondent’s behavior indicates that it has engaged in a pattern of abusive registrations thereby suggesting bad faith pursuant to Policy ¶ 4(b)(ii). 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).
Next, given Respondent’s use of its confusingly similar at-issue domain name to host a pay-per-click website, the Panel finds that Respondent has intentionally attempted to attract Internet users to the <mgmgrandcasino.net> website for commercial gain by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the at-issue domain name. Therefore, Respondent’s bad faith is demonstrated under Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites having services similar to the complainant’s services).
Finally, Respondent had knowledge of Complainant’s rights in the MGM GRAND mark prior to registering the at-issue domain name. Complainant’s MGM GRAND trademark is long established, well-known and unique. It is highly unlikely that anyone would register the mark in a domain name without first having knowledge of its existence. Moreover, Respondent’s combining of Complainant’s mark with the suggestive term “casino” further urges that Respondent knew of Complainant’s trademark at the time it registered the at-issue domain name. Importantly, Respondent’s prior knowledge of Complainant's MGM GRAND trademark shows Respondent’s bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name"); see also 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mgmgrandcasino.net> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: January 31, 2014
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