MGM Resorts International v. Domain Admin / High Tech Investments LTD
Claim Number: FA1610001698742
Complainant is MGM Resorts International (“Complainant”), represented by Steven M. Levy, Pennsylvania, United States. Respondent is Domain Admin / High Tech Investments LTD (“Respondent”), Seychelles.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mgminsider.com>, registered with Key-Systems GmbH.
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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 18, 2016; the Forum received payment on October 25, 2016.
On October 19, 2016, Key-Systems GmbH confirmed by e-mail to the Forum that the <mgminsider.com> domain name is registered with Key-Systems GmbH and that Respondent is the current registrant of the name. Key-Systems GmbH has verified that Respondent is bound by the Key-Systems GmbH 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 October 25, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 14, 2016 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@mgminsider.com. Also on October 25, 2016, 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 Forum transmitted to the parties a Notification of Respondent Default.
On November 15, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 uses its MGM mark in connection with its leading global hospitality companies, operating a portfolio of famous destination hotel and resort brands, including MGM Grand, Bellagio, Mandalay Bay, and The Mirage. Complainant has registered the MGM mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,060,489, registered Mar. 1, 1977), which demonstrates Complainant’s rights in its mark. The <mgminsider.com> domain name is confusingly similar to Complainant’s mark as it wholly incorporates the mark and merely adds the generic term “insider” and the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the domain name. Respondent is not commonly known by the domain name. Further, Respondent does not use the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent’s domain name resolves to a website that contains hyperlinks, which divert Internet users to other websites, many of which are not associated with Complainant and, in many cases, are associated with Complainant’s competitors.
Respondent registered and is using the domain name in bad faith. First, Respondent has engaged in a pattern of bad faith, which is made evident by at least two UDRP cases that have been successfully brought against Respondent. Second, Respondent uses the domain name to host competing hyperlinks. Third, Respondent listed false or non-functioning information in the WHOIS record for the domain name, namely the address. Fourth, after Complainant filed this Complaint, Respondent utilized a privacy service to hide its identity. Finally, Respondent was on actual notice of Complainant’s rights in the MGM mark when it registered the domain name as a result of Complainant’s extensive and worldwide use of the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <mgminsider.com>domain name.
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(f), 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 (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 uses its MGM mark in connection with its leading global hospitality companies, operating a portfolio of famous destination hotel and resort brands, including MGM Grand, Bellagio, Mandalay Bay, and The Mirage. Complainant has registered the MGM mark with the USPTO (Reg. No. 1,060,489, registered Mar. 1, 1977), which Complainant contends demonstrates its rights in the mark. The Panel finds that trademark registrations with the USPTO suffice to demonstrate a complainant’s rights in its mark for the purposes of Policy ¶ 4(a)(i), with respect to the geographic disparity of the parties. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”). Thus, the Panel finds that Complainant has demonstrated its rights in its mark under Policy ¶ 4(a)(i).
Complainant argues that the <mgminsider.com> domain name is confusingly similar to Complainant’s mark as it wholly incorporates the mark and merely adds the generic term “insider” and the “.com” gTLD. Panels have held that the addition of a generic term does not serve to adequately distinguish a respondent’s domain name from a complainant’s mark under Policy ¶ 4(a)(i). See Am. Express Co. v. MustNeed.com, FA 257901 (Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). Panels have also held that the affixation of the “.com” gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant). For these reasons, the Panel finds that Respondent’s domain name is confusingly similar to Complainant’s mark.
Complainant has proved 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 (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 (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 asserts that Respondent has no rights or legitimate interests in the domain name. According to Complainant, Respondent is not commonly known by the domain name. The Panel notes that the WHOIS information merely lists “Domain Admin / High Tech Investments LTD” as registrant and that Respondent has failed to provide any evidence for the Panel’s consideration. As such, the Panel finds no basis in the available record to find Respondent commonly known by the domain name pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (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).
Complainant alleges that Respondent does not use the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Complainant maintains that Respondent’s domain name resolves to a website that contains hyperlinks, which divert Internet users to other websites, many of which are not associated with Complainant and, in many cases, are associated with Complainant’s competitors. Panels have held that a respondent’s use of a domain name to display links that are competitive with a complainant’s business does not 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). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”). Thus, the Panel finds that Respondent is not using the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Complainant has proved this element.
Registration and Use in Bad Faith
Complainant claims that Respondent has engaged in a pattern of bad faith, which is made evident by at least two UDRP cases that have been successfully brought against Respondent. Complainant cites the following UDRP cases: Swift Transportation Co., LLC v. Domain Admin/High Tech Investments LTD, FA 1624050 (Forum July 16, 2015), and Twitter, Inc. v. High Tech Investments LTD, D2011-0030 (WIPO Oct. 19, 2011). Panels have determined that a respondent has engaged in a pattern of bad faith where the respondent has been the subject of previous adverse UDRP rulings. See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).”). The Panel agrees with Complainant and finds that Respondent has engaged in bad faith per Policy ¶ 4(b)(ii).
Complainant contends that Respondent uses the domain name to host competing hyperlinks. Panels have held that a respondent’s use of a domain name to host competing hyperlinks constitutes bad faith registration and use pursuant to Policy ¶¶ 4(b)(iii) and (iv). See Univ. of Texas Sys. v. Smith, FA 1195696 (Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)); see also 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 that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes). Thus, the Panel finds that Respondent’s registration and use of the domain name constitutes bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv).
Complainant maintains that Respondent listed false or non-functioning information in the WHOIS record for the domain name, namely the address. Complainant also contends that Respondent’s listed postal code shows that Respondent is located in New York City, but Respondent’s listed telephone number uses a country code which is designated to the Seychelles, a country in Africa. Panels have decided that a respondent’s use of false WHOIS information in connection with the registration of a domain name is evidence of bad faith. See McDonald’s Corp. v. Holy See, FA 155458 (Forum June 27, 2003) (holding that the respondent’s use of falsified information when it registered the disputed domain name was evidence that the domain name was registered in bad faith, despite the respondent’ claim that such an action was necessary to protect it from a reprisal by the complainant). The Panel accepts Complainant’s argument and finds that Respondent registered the domain name in bad faith.
Complainant asserts that after Complainant filed this Complaint, Respondent utilized a privacy service to hide its identity. The consensus view amongst panels is that use of a privacy service, without more, cannot reach the threshold of bad faith registration and use. See WWF-World Wide Fund for Nature aka WWF International v. Moniker Online Services LLC and Gregory Ricks, D2006-0975 (WIPO November 1, 2006) (finding use of proxy registration service does not of itself indicate bad faith; there are many legitimate reasons for proxy registration services); see also Divex Limited v. ZJ, Sam Chang and Tim NG, D2007-0861 (WIPO September 21, 2007) (finding privacy services may be justified by the need to avoid spam and identity theft). However, the totality of the circumstances which surround a respondent’s engagement of a privacy service may give rise to a finding of bad faith registration and use. See, e.g., HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, D2007-0062 (WIPO June 4, 2007) (finding a change of privacy service after notice of complaint indicative of bad faith); see also Sermo, Inc. v. CatalystMD, LLC, D2008-0647 (WIPO July 2, 2008) (stating that use of privacy shield can be “treated as evidence of bad faith . . . when serial registrants use privacy shields to mask each registrant’s actual date of registration”). Therefore, the Panel agrees that Respondent has utilized a privacy shield in a manner which materially adversely affects or obscures the facts of this proceeding and agrees that Respondent has registered and used the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Finally, Complainant argues that Respondent was on actual notice of Complainant’s rights in the MGM mark when it registered the domain name as a result of Complainant’s extensive and worldwide use of the mark. Panels have held that a respondent demonstrated bad faith registration and use pursuant to Policy ¶ 4(a)(iii) where the respondent was well-aware of the complainant’s mark at the time the disputed domain name was registered. See Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). Accordingly, the Panel finds that Respondent registered the disputed domain name with actual knowledge of Complainant’s mark, thereby violating Policy ¶ 4(a)(iii).
Complainant has proved this element.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mgminsider.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.) Panelist
Dated: November 28, 2016
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