MGM Resorts International v. Joe Ainsworth
Claim Number: FA1401001537379
Complainant is MGM Resorts International (“Complainant”), Nevada, USA. Respondent is Joe Ainsworth (“Respondent”), Great Britain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mgmpoker.net>, registered with 1&1 Internet AG.
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.
David A. Einhorn appointed 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 7, 2014, 1&1 Internet AG confirmed by e-mail to the National Arbitration Forum that the <mgmpoker.net> domain name is registered with 1&1 Internet AG and that Respondent is the current registrant of the name. 1&1 Internet AG has verified that Respondent is bound by the 1&1 Internet AG 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 8, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 28, 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@mgmpoker.net. Also on January 8, 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 February 3, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David A. Einhorn 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’s Contentions
1. Complainant’s international hospitality company is one of the world’s leaders in the hospitality and entertainment industry and is thus well known around the world.
2. Complainant has rights in the MGM mark through its registrations with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,060,489 registered March 1, 1977) and (Reg. No. 2,534,227 registered January 29, 2002).
3. Respondent’s <mgmpoker.net> domain name is confusingly similar to Complainant’s MGM mark.
a. Respondent adds the term “poker” to Complainant’s MGM mark in addition to the generic top-level domain (“gTLD”) “.net.”
b. Adding the term poker to Respondent’s disputed domain name makes it more likely that Internet users will associate the disputed domain name with Complainant’s business.
4. Respondent has no rights or legitimate interests in the <mgmpoker.net> domain name.
a. Respondent is not commonly known by the disputed domain name.
i. Respondent registered the disputed domain name on February 23, 2010 with no permission from Complainant.
ii. Respondent is not a licensee of Complainant and is not affiliated with Complainant in any way.
iii. The WHOIS information for Respondent’s disputed domain name states that “Joe Ainsworth” is the registrant.
b. Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
i. Respondent’s disputed domain name resolves to a parked website featuring pay-per-click links. Respondent is intentionally misleading Internet users to commercial websites thereby tarnishing Complainant’s MGM mark.
5. Respondent registered and is using the <mgmpoker.net> domain name in bad faith.
a. Respondent registered the disputed domain name primarily to sell for valuable consideration in excess of the out-of-pocket expenses.
b. Respondent uses the disputed domain name featuring Complainant’s MGM mark to confuse Internet users and redirect them to a resolving website featuring advertisements and third-party links, presumably raising revenue for Respondent.
c. Respondent was aware of Complainant and Complainant’s MGM mark when it registered the disputed domain name. Complainant has continuously used the MGM mark since 1973.
d. Respondent ignored Complainant’s attempt to resolve this dispute outside of an administrative proceeding.
B. Respondent
Respondent failed to submit a Response in this proceeding.
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 contends that its company is one of the world’s leaders in the hospitality and entertainment industry and is thus well-known around the world. In addition to Complainant’s success and recognition, Complainant alleges that it has rights in the MGM mark through its registrations with the USPTO (Reg. No. 1,060,489 registered March 1, 1977) and (Reg. No. 2,534,227 registered January 29, 2002). Prior panels have found that a complainant has rights in a mark that it owns registrations for with a recognized trademark authority. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). The Panel further notes that it is irrelevant whether a complainant registered a mark in the location of respondent. See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of Policy ¶ 4(a)(i) whether the complainant’s mark is registered in a country other than that of the respondent’s place of business). The Panel therefore concludes that Complainant has rights in the MGM mark under Policy ¶ 4(a)(i).
Complainant additionally claims under Policy ¶ 4(a)(i) that Respondent’s <mgmpoker.net> domain name is confusingly similar to Complainant’s MGM mark. Complainant states that Respondent adds the term “poker” to Complainant’s MGM mark. Complainant contends that adding the term “poker” to Respondent’s disputed domain name makes it more likely that Internet users will associate the disputed domain name with Complainant’s business. Panels have frequently concluded that adding a generic or descriptive word is insufficient to differentiate a disputed domain name from a given mark under Policy ¶ 4(a)(i). 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, was insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). The Panel concludes that Respondent’s <mgmpoker.net> domain name is confusingly similar to Complainant’s MGM mark under Policy ¶ 4(a)(i).
Complainant claims that Respondent has no rights or legitimate interests in the <mgmpoker.net> domain name and that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). Complainant points out that Respondent registered the disputed domain name on February 23, 2010 with no permission from Complainant. Complainant further states that Respondent is not a licensee of Complainant and is not affiliated with Complainant in any way. The Panel notes that the WHOIS information for Respondent’s disputed domain name states that “Joe Ainsworth” is the registrant. Previous UDRP panels have concluded that a respondent is not commonly known by a disputed domain name where nothing on the record or in the WHOIS information suggesting that respondent is commonly known by the disputed domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The Panel therefore concludes that Respondent is not commonly known by the <mgmpoker.net> domain name under Policy ¶ 4(c)(ii).
Complainant additionally claims that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(i) or ¶ 4(c)(iii). Complainant explains that Respondent’s disputed domain name resolves to a parked website featuring pay-per-click links, and that Respondent is intentionally misleading Internet users to commercial websites thereby tarnishing Complainant’s MGM mark. The Panel notes a submitted screenshot of the website resolving from the <mgmpoker.net> domain name. The Panel further notes that Respondent’s resolving website features links such as “Mandalay Bay Resort Hotel,” “MGM Hotel Las Vegas,” and “Signature MGM Grand.” Prior panels have traditionally found that using a confusingly similar domain name to display links and advertisements for third parties with the intent of collecting revenue does not indicate a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. 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)). The Panel concludes that Respondent has no rights or legitimate interests in the <mgmpoker.net> domain name because Respondent did not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
Thus, Complainant has also satisfied Policy ¶ 4(a)(ii).
Complainant claims that Respondent uses the <mgmpoker.net> domain name in bad faith under Policy ¶ 4(b)(iv). Complainant states that Respondent uses the disputed domain name featuring Complainant’s MGM mark to confuse Internet users and redirect them to a resolving website featuring advertisements and third-party links, presumably raising revenue for Respondent. Prior UDRP panels have frequently found that using a disputed domain name to create confusion in relation to a complainant’s mark and commercially profit from that use indicates bad faith under Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to … websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”). The Panel concludes that Respondent registered and is using the <mgmpoker.net> domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant claims that Respondent was aware of Complainant and Complainant’s MGM mark when it registered the <mgmpoker.net> disputed domain name. Complainant states that it has continuously used the MGM mark since 1973. Complainant thus contends that in light of the fame and notoriety of Complainant's MGM mark, it is inconceivable that Respondent could have registered the <mgmpoker.net> domain name without actual knowledge of Complainant's rights in the mark. The Panel finds that Respondent’s incorporation of the entirety of Complainant’s mark and its competing use of the domain name further support that Respondent registered this domain name in bad faith.
Thus, Complainant has also satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mgmpoker.net> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: February 17, 2014
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