MGM Resorts International v. Leander Calhoun
Claim Number: FA1607001685559
Complainant is MGM Resorts International (“Complainant”), represented by Michael J. McCue, Nevada, USA. Respondent is Leander Calhoun (“Respondent”), Maryland, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <mgmnationalharborchauffeurs.com>, <mgmnationalharborchauffeurs.org>, <mgmnationalharborexecutivechauffeurs.org>, <mgmnationalharborexecutivelimo.com>, <mgmnationalharborlimo.com>, <mgmnationalharborlimoservice.com>, <mgmnationalharborpremiumlimo.com>, <mgmnationalharborpremiumlimo.org>, <mgmnationalharborpremiumlimoservice.com>, <mgmnationalharborpresidentallimo.com>, <mgmnationalharborpresidentallimo.org>, <mgmnationalharborpresidentialchauffeurs.com>, and <mgmnationalharborpresidentialchauffeurs.org>, 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.
Flip Jan Claude Petillion as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 26, 2016; the Forum received payment on July 26, 2016.
On July 27, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <mgmnationalharborchauffeurs.com>, <mgmnationalharborchauffeurs.org>, <mgmnationalharborexecutivechauffeurs.org>, <mgmnationalharborexecutivelimo.com>, <mgmnationalharborlimo.com>, <mgmnationalharborlimoservice.com>, <mgmnationalharborpremiumlimo.com>, <mgmnationalharborpremiumlimo.org>, <mgmnationalharborpremiumlimoservice.com>, <mgmnationalharborpresidentallimo.com>, <mgmnationalharborpresidentallimo.org>, <mgmnationalharborpresidentialchauffeurs.com>, and <mgmnationalharborpresidentialchauffeurs.org> 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 July 28, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 17, 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@mgmnationalharborchauffeurs.com, postmaster@mgmnationalharborchauffeurs.org, postmaster@mgmnationalharborexecutivechauffeurs.org, postmaster@mgmnationalharborexecutivelimo.com, postmaster@mgmnationalharborlimo.com, postmaster@mgmnationalharborlimoservice.com, postmaster@mgmnationalharborpremiumlimo.com, postmaster@mgmnationalharborpremiumlimo.org, postmaster@mgmnationalharborpremiumlimoservice.com, postmaster@mgmnationalharborpresidentallimo.com, postmaster@mgmnationalharborpresidentallimo.org, postmaster@mgmnationalharborpresidentialchauffeurs.com, and postmaster@mgmnationalharborpresidentialchauffeurs.org. Also on July 28, 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.
A timely Response was received and determined to be complete on August 15, 2016.
On August 18, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Flip Jan Claude Petillion as Panelist.
On August 18, 2016, Complainant filed an additional submission, to which Respondent replied on August 22, 2016.
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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant argues to be the holder of the MGM mark by virtue of its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,060,489, registered Mar. 1, 1977). See Compl., at Ex. 6. Complainant submits it has rights in the NATIONAL HARBOR mark (Reg. No. 3,139,684, registered Sep. 5, 2006) through a licensing agreement with NH Media Associates, the owner of the mark. See Compl., at Attached Ex. 8. Complainant considers that Respondent’s disputed domain names are confusingly similar to Complainant’s marks. According to Complainant, Respondent uses both marks while adding generic terms related to car services such as “chauffeurs,” “limo,” “executive,” “presidential,” and a generic top level domain (“gTLD”).
Complainant contends that Respondent has no rights or legitimate interest in the disputed domain names. Complainant argues: First, Respondent is not commonly known by the disputed domain name or any derivative of Complainant’s mark. Second, Respondent is not licensed or authorized to use Complainant’s mark. Finally, Respondent is not making a bona fide offering of goods or services through the disputed domain name or a legitimate noncommercial or fair use. Rather, many of Respondent’s disputed domain names are currently inactive. Those which are active attempt to pass Respondent off as Complainant through the use of Complainant’s trademarks.
Finally, Complainant considers that Respondent has registered and is using the disputed domain names in bad faith. According to Complainant, Respondent is attempting to profit commercially through Internet user confusion as to the source, sponsorship, affiliation, and/or relationship of the disputed domain names to Complainant. Respondent has not made active use of 12 of the 13 disputed domain names. Respondent had actual notice of Complainant’s rights in the MGM and NATIONAL HARBOR marks at the time it registered the disputed domain names.
B. Respondent
Respondent submits that Complainant’s USPTO application for trademark protection for the MGM NATIONAL HARBOR mark was rejected. See Resp., at Attached Correspondence—Respondent. Complainant, therefore, does not have rights in the MGM NATIONAL HARBOR mark.
Respondent argues that, when it registered the disputed domain names on August 10, 2015, Complainant had no valid trademark rights in the MGM NATIONAL HARBOR mark.
C. Additional Submissions
Complainant filed an additional submission on August 18, 2016 in which it argues that Respondent does not deny that MGM owns the exclusive right to use MGM, which by itself would be sufficient to show that the disputed domains are confusingly similar to a mark in which MGM has rights. Complainant also submits that the refusal by the USPTO to register Complainant’s now abandoned trademark application for MGM NATIONAL HARBOR & Design is not dispositive of Complainant’s rights. Complainant submits that the application was refused registration due to existing United States registrations for marks comprised of or containing the terms NATIONAL HARBOR, all of which are owned by NH Media. Complainant argues that it now benefits from a license agreement with NH Media, which grants Complainant the right to use the NATIONAL HARBOR trade mark.
Finally, Complainant argues that Respondent failed to address (1) whether the disputed domain names are confusingly similar to MGM’s marks, (2) whether Respondent has rights or legitimate interest in the disputed domains, and (3) whether Respondent registered or uses the disputed domains in bad faith. According to Complainant, the Panel is therefore entitled to accept all reasonable allegations and inferences set forth in the Complaint with respect to those issues as true unless the evidence is clearly contradictory.
On August 22, 2016, Respondent filed an additional submission, arguing that Complainant must show it holds a valid MGM NATIONAL HARBOR trademark with the USPTO to claim rights in the mark. As Complainant’s trademark application was refused, Respondent requests to dismiss the Complaint.
Complainant, MGM Resorts International is a large hospitality company, operating a portfolio of destination resorts throughout the United States and elsewhere. Complainant is the holder of various trademark registrations with the USPTO for the MGM mark and MGM-formative marks including the following: MGM (Reg. No. 1060489) for “hotel and restaurant services” and “entertainment services-namely, the presentation of vocal musical and choreographic shows, motion pictures,” the application for which was filed August 11, 1975; and MGM (Reg. No. 2534227) for “casino services.” A non-party to the proceedings, NH Media Associates, L.L.C., is the holder of United States trademark registrations for the NATIONAL HARBOR mark. On October 20, 2014, Complainant’s subsidiary entered into a license agreement with NH Media Associates, L.L.C., whereby Complainant’s subsidiary and Complainant (as its parent company) were granted the right to use NATIONAL HARBOR mark together with its MGM mark in connection with Complainant’s MGM National Harbor Resort.
Respondent is the holder of the 13 disputed domain names that are subject to the present proceedings. The disputed domain names have all been registered on August 10, 2015.
One of the disputed domain names, <mgmnationalharborlimoservice.com>, resolves to a webpage that features several of Complainant’s MGM marks. The website also features images of and information about Complainant’s soon to open MGM National Harbor resort and a promotional video for the resort from Complainant’s public relations YouTube channel. Respondent did not contest the allegation that the 12 other disputed domain names do not resolve to an active website.
On February 18, 2016, Complainant’s representative sent a cease and desist letter to Respondent with respect to the disputed domain name <mgmnationalharborlimoservice.com>. On February 19, 2016, Respondent replied to the cease and desist letter, asking Complainant to stop using the National Harbor trademark.
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 names registered by Respondent are 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 names; and
(3) the domain names have been registered and is being used in bad faith.
Complainant has submitted convincing evidence that it is the holder the MGM mark by virtue of its registration with the USPTO (e.g., Reg. No. 1,060,489, registered Mar. 1, 1977). See Compl., at Ex. 6. Further, Complainant states it has rights in the NATIONAL HARBOR mark (Reg. No. 3,139,684, registered Sept. 5, 2006) through a licensing agreement with NH Media Associates, the holder of the mark. The licensing agreement grants Complainant inter alia the right to use the MGM NATIONAL HARBOR sign on the Internet, including in a domain name. See Compl., at Attached Ex. 8. Registration with the USPTO is sufficient to establish a complainants rights in a mark under Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Further, a licensing agreement stands to confer rights in the licensed mark. See Toyota Motor Sales U.S.A. Inc. v. J. Alexis Prods., D2003-0624 (WIPO Oct. 16, 2003) (holding that a non-exclusive license to a mark has established rights in that mark).
Complainant asserts that Respondent’s disputed domain names are confusingly similar to Complainant’s marks. Respondent uses both marks while adding generic terms related to car services such as “chauffeurs,” “limo,” “executive,” “presidential,” and either the “.com” or “.org” gTLD. The addition of generic terms and a gTLD does not differentiate a disputed domain name from a mark in which complainant has established rights. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.). Therefore, the Panel considers that Complainant has established rights under Policy ¶ 4(a)(i).
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 alleges that Respondent has no rights or legitimate interest in the disputed domain name. First, Complainant asserts that Respondent is not commonly known by the disputed domain name or any variation of Complainant’s mark. Second, Complainant argues that Respondent is not licensed or authorized to use Complainant’s mark. The Panel notes that the WHOIS information merely lists “Leander Calhoun” as registrant and that Respondent has failed to refute Complainant’s contentions. As such, the Panel finds no basis in the available record to find Respondent commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii). Complainant urges that Respondent has failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name <mgmnationalharborlimoservice.com>. Rather, Complainant alleges that Respondent uses the disputed domain name for and to promote its driving services while prominently displaying MGM and NATIONAL HARBOR trademarks and logos, which Complainant believes is likely to mislead Internet users into believing that Respondent is affiliated with Complainant. See Compl., at Attached Ex. 9. Prior panels have held that such use is not consistent with a bona fide offering of goods or services, or a legitimate noncommercial or fair use of a disputed domain name. See Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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).”). Thus, the Panel agrees with Complainant and finds that Respondent’s passing off behavior does not constitute 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) and Policy ¶ 4(c)(iii), respectively.
Complainant argues that Respondent is not making a bona fide offering of goods or services via the other 12 of the 13 disputed domain names, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii), respectively. Instead, the disputed domain names purportedly resolve to inactive webpages. Although Complainant has not submitted any evidence to support this contention, Respondent did not rebut the allegation. Moreover, when the Panel tried to access the url associated to the disputed domain name, it received a warning that the connection was untrusted. Therefore, the Panel finds Complainant’s argument credible and considers that inactive use is not a bona fide offering of goods or services via the disputed domain name, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(ii) and (iii). See Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Forum Apr. 12, 2007) (finding that the respondent lacked rights or legitimate interests in a confusingly similar domain name that it had not made demonstrable preparations to use since its registration seven months prior to the complaint). In light of Respondent’s use of the disputed domain name and the available precedent, the Panel considers that Respondent is not making an offering which would satisfy Policy ¶¶ 4(c)(i) or (iii).
Complainant contends that Respondent has displayed bad faith under Policy ¶ 4(b)(iv) by attempting to commercially profit from a likelihood of confusion. It is argued that by trying to pass itself off as Complainant, Respondent has created a likelihood of confusion from which it is surely attempting to profit. Prior panels have found bad faith under Policy ¶ 4(b)(iv) where the domain name was used to confuse Internet users in the hopes of benefitting commercially. See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”). Thus, the Panel finds bad faith under Policy ¶ 4(b)(iv) with respect to the disputed domain name <mgmnationalharborlimoservice.com>.
Complainant maintains that Respondent has not made an active use of the other 12 out of 13 of the disputed domain names and has made no demonstrable preparations to use them for six months. As mentioned above, although Complainant has not provided the Panel with evidence of this non-use, the allegation is unrebutted and credible. Previous panels have found evidence of bad faith where the respondent does not make an active use of the disputed domain name. See Marsh Supermarkets Company, LLC, formerly known as Marsh Supermarkets, Inc. v. Choi Sungyeon, FA1312001532854 (Forum Feb. 25, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <marshsupermarkets.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii) because Respondent has failed to make an active use of the disputed domain name.”). As such, the Panel finds that Respondent has not made an active use of the disputed domain name, which in the circumstances of the case, is evidence of bad faith pursuant to Policy ¶ 4(a)(iii).
Indeed, Complainant showed on the balance of probabilities that Respondent had actual knowledge of Complainant’s mark at the time of registration. Specifically, Complainant argues that Respondent’s registration of the disputed domain name after Complainant announced its plans for the “MGM National Harbor” resort and casino. Past panels have found bad faith under Policy ¶ 4(a)(iii) where a respondent was well-aware of the complainant’s marks at the time of the disputed domain name registration. 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). The registration of 13 domain names containing Complainant’s trademark shows a pattern of domain name registrations which is likely to disrupt Complainant’s business. For these reasons, the Panel concludes that Respondent registered the disputed domain name in bad faith per 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 <mgmnationalharborchauffeurs.com>, <mgmnationalharborchauffeurs.org>, <mgmnationalharborexecutivechauffeurs.org>, <mgmnationalharborexecutivelimo.com>, <mgmnationalharborlimo.com>, <mgmnationalharborlimoservice.com>, <mgmnationalharborpremiumlimo.com>, <mgmnationalharborpremiumlimo.org>, <mgmnationalharborpremiumlimoservice.com>, <mgmnationalharborpresidentallimo.com>, <mgmnationalharborpresidentallimo.org>, <mgmnationalharborpresidentialchauffeurs.com>, and <mgmnationalharborpresidentialchauffeurs.org> domain names be TRANSFERRED from Respondent to Complainant.
Flip Jan Claude Petillion, Panelist
Dated: September 1, 2016
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