MGM Resorts International v. Park KyungSuk
Claim Number: FA1701001713768
Complainant is MGM Resorts International (“Complainant”), represented by CSC Digital Brand Services Group AB, Sweden. Respondent is Park KyungSuk (“Respondent”), South Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mgmgrand.net>, (‘the Domain Name’)registered with GoDaddy.com, LLC.
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.
Dawn Osborne of Palmer Biggs IP as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 23, 2017; the Forum received payment on January 23, 2017.
On January 24, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <mgmgrand.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 24, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 13, 2017 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@mgmgrand.net. Also on January 24, 2017, 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 February 21, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs IP 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’s contentions can be summarised as follows:
Complainant is the owner of trade mark registrations in, inter alia, the USA for MGM and MGM GRAND for, inter alia, entertainment services.
The Domain Name contains Complainants’ MGM GRAND mark in its entirety and is therefore identical to Complainant’s mark for the purposes of the Policy as the relevant comparison is only between the second level portion of the Domain Name and the trade mark.
Respondent is not sponsored by or affiliated with Complainant in any way. Complainant has not given Respondent permission to use Complainant’s trade marks in any manner.
Respondent is not commonly known by the Domain Name and does not have any rights or legitimate interest in the Domain Name and is not using it for any non commercial fair use.
Respondent is not using the Domain Name in relation to a bona fide offering of goods and services. The Domain Name is used to point to third party commercial sites offering competing services. Additionally the Domain Name occasionally resolves to a web site that attempts to infect user’s computers with viruses or malware.
The Domain Name is being offered for sale in an amount that far exceeds Respondent’s out of pocket expenses in registering a domain name.
The Domain Name was registered in 2015 significantly after Complainant’s registration of its domain name MGMgrand.com in 1997 and first use in commerce of the MGM GRAND trade mark in 1973.
Respondent has intentionally attempted to attract for commercial gain Internet users to Respondent’s web site by creating a likelihood of confusion between Complainant’s mark as to the source or affiliation of Respondent’s web site or products or services featured on it.
Respondent holds registrations for several other domain names that misappropriate the brands of well known businesses. This shows a pattern of cybersquatting.
Respondent is currently offering to sell the Domain Name and has demonstrated an intent to sell the Domain Name for valuable consideration in excess of out of pocket expenses.
The Domain Name has been registered and used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is the owner of trade mark registrations in the USA for MGM GRAND for, inter alia, entertainment services with first use in commerce recorded as 1973.
The Domain Name has been pointed to third party web sites that compete with Complainant and distribute malware. The Domain Name has been offered for sale.
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 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.”).
Identical and/or Confusingly Similar
The Domain Name consists of Complainant's MGM GRAND mark (which is registered,inter alia, in the USA for, inter alia, entertainment services with first use recorded as 1973) and the gTLD .net.
The gTLD .net does not serve to distinguish the Domain Name from the MGM GRAND mark, which is the distinctive component of the Domain Name ( See Katadyn N Am. v Black Mountain Stores, FA 520677 (Forum Sept. 7 2005) under policy 4 (a)(i).
Accordingly, the Panel holds that the Domain Name is confusingly similar for the purpose to a mark in which Complainant has rights.
As such the Panel holds that Complainant has satisfied the first limb of the Policy.
Rights or Legitimate Interests
Respondent has not provided any response in these proceedings. Respondent does not appear to have any trade marks associated with the name MGM GRAND. There is no evidence that it is commonly known by this name and it does not have any consent from Complainant to use this name.
Respondent does not appear to have used the Domain Name for any bona fide offering of services of its own. Distributing malware is not a bona fide purpose. See Google Inc. v Gridasov, FA 474816 (Forum July 5, 2005). The Domain Name has been pointed to a page featuring links to third party commercial sites including competitors of Complainant which is not legitimate or fair use. See Ashley Furniture Industries, Inc. v domain admin/private registrations aktien gesellschaft, FA 1506001626253 (Forum July 29, 2015)(Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds this does not constitute a bona fide offering or a legitimate non commercial or fair use’).
Given the evidence that the Domain Names were registered after Complainant had established rights in the MGM GRAND mark and the Domain Name has been offered for sale, there is no credible evidence why the Domain Name would be appropriate for registration and such use or why Respondent should be entitled to register a domain name effectively consisting of Complainant’s mark. See University of Rochester v Park HyungJin, FA 1410001587458 (Forum Dec. 9, 2014)(The Panel finds Respondent’s willingness to sell in excess of out of pocket registrations costs weighs against Respondent’s case for rights or legitimate interests in the domain name).
Accordingly, the Panel finds that Respondent does not have any rights or legitimate interests in the Domain Name.
Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four non exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including
"circumstances indicating that [Respondent has] registered or [has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [its] documented out-of-pocket costs directly related to the domain name;" (s4(b)(i)).
Respondent has offered the Domain Name for sale and has given no satisfactory reason why it has a legitimate interest in a domain name comprising the distinctive trade mark belonging to Complainant or why the Domain Name has been offered for sale for a sum in excess of likely costs of domain name registration. The use of the Domain Name to point to commercial sites including those of competitors of Complainant also suggests that Respondent is aware of Complainant and its business. Accordingly, the Panel finds on the balance of probabilities that Respondent has registered or acquired the Domain Names primarily for the purpose of selling, renting, or otherwise transferring them to Complainant who is the owner of the trademark or to a competitor of Complainants, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Names;" See Google Inc. v Trademark Worx LLC, FA 1101001370035 (Forum Mar. 16, 2010)(ordering transfer). The Panel, therefore, finds that bad faith has been demonstrated under s 4(b)(i) of the Policy. There is, therefore no need to consider further alleged grounds of bad faith registration and use.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mgmgrand.net> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: February 28, 2017
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