Wynn Resorts Holdings, LLC v. Lee pil jung
Claim Number: FA2301002027559
Complainant is Wynn Resorts Holdings, LLC (“Complainant”), represented by Peter H. Ajemian of Brownstein Hyatt Farber Schreck, US. Respondent is Lee pil jung (“Respondent”), KR.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <wynn-01.com>, <wynn-02.com>, and <wynn-03.com>, registered with HANGANG Systems, Inc. dba Doregi.com.
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.
The Honorable Neil Anthony Brown KC as Panelist.
Complainant submitted a Complaint to Forum electronically on January 13, 2023; Forum received payment on January 13, 2023.
On January 17, 2023, HANGANG Systems, Inc. dba Doregi.com confirmed by e-mail to Forum that the <wynn-01.com>, <wynn-02.com>, and <wynn-03.com> domain names are registered with HANGANG Systems, Inc. dba Doregi.com and that Respondent is the current registrant of the names. HANGANG Systems, Inc. dba Doregi.com has verified that Respondent is bound by the HANGANG Systems, Inc. dba Doregi.com 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 20, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 9, 2023 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@wynn-01.com, postmaster@wynn-02.com, postmaster@wynn-03.com. Also on January 20, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On February 16, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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 names be transferred from Respondent to Complainant.
Preliminary Issue: Required Language of Complaint
Complainant submitted a Complaint to Forum electronically on January 13, 2023; Forum received payment on January 13, 2023. Then, after the commencement of the case by the Forum, correspondence was received from the HANGANG Systems, Inc. dba Doregi.com registrar that stated that the language of the Registration Agreement is Korean. The Panel may decide, per Rule 11, that because the Respondent signed an agreement in Korean, the Complaint should be resubmitted in Korean and the case recommenced. However, Rule 11 also gives to the Panel a discretion to decide whether in all the circumstances an alternative language is more appropriate than the language of the registration agreement.
Complainant has submitted that because the disputed domain names incorporate the English-language mark WYNN, and that the disputed domain names all link to websites that are written in English or include English translations under the corresponding Korean words, that Respondent understands English and the proceeding should therefore be conducted in English. The Panel notes that Complainant has offered screenshots of the disputed domain names’ resolving websites showing they are either written in English or include English translations under the corresponding Korean words. See Compl. Annex 5. See FilmNet Inc. v Onetz, FA 96196 (Forum Feb. 12, 2001 (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English).
Having regard to all the circumstances, the Panel finds that English is a more appropriate language than Korean and the proceeding may go forward on that basis.
A. Complainant
Complainant made the following contentions.
Complainant, Wynn Resorts Holdings, LLC, owns and operates the luxury casino resorts Wynn Las Vegas, Encore in Las Vegas, and Wynn Macau in Macau, China. Complainant asserts rights to the WYNN mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., reg. no. 2,998,762, registered September 20, 2005). See Compl. Annex 1. Respondent’s <wynn-01.com>, <wynn-02.com>, and <wynn-03.com> domain names are confusingly similar to Complainant’s WYNN mark because they contain the WYNN mark in its entirety, merely adding the numbers “01”, “02”, and “03” and the generic top-level domain (“gTLD”) “.com” to form the disputed domain name.
Respondent does not have rights or legitimate interests in the <wynn-01.com>, <wynn-02.com>, and <wynn-03.com> domain names. Respondent is not licensed or authorized to use Complainant’s WYNN mark and is not commonly known by the disputed domain names. Respondent does not use the disputed domain names for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain names to pass off as Complainant.
Respondent registered and uses the <wynn-01.com>, <wynn-02.com>, and <wynn-03.com> domain names in bad faith. Instead, Respondent is using the disputed domain names to pass off as Complainant for commercial gain. Finally, Respondent registered the disputed domain names with constructive and/or actual knowledge of Complainant’s rights in the WYNN mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that owns and operates the luxury casino resorts Wynn Las Vegas, Encore in Las Vegas, and Wynn Macau in Macau, China.
2. Complainant has established its rights to the WYNN mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., reg. no. 2,998,762, registered September 20, 2005).
3. Respondent registered the <wynn-01.com>, <wynn-02.com>, and <wynn-03.com> domain names on December 19, 2022.
4. Respondent has caused the domain names to be used to pass itself off as Complainant.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights to the WYNN mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., reg. no. 2,998,762, registered September 20, 2005). See Compl. Annex 1. Registration of a mark with the USPTO demonstrates rights in such a mark for the purposes of Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”); see also Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). Here, Complainant has provided evidence of registration of the mark with the USPTO. Therefore, as the Panel agrees, it finds Complainant has rights in the mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s WYNN mark. Complainant contends that Respondent’s <wynn-01.com>, <wynn-02.com>, and <wynn-03.com> domain names are confusingly similar to Complainant’s WYNN mark because they contain the WYNN mark in its entirety, merely adding hyphens and the numbers “01”, “02”, and “03” respectively and the generic top-level domain (“gTLD”) “.com” to form the disputed domain names. The addition of numbers and a gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i). See Pandora Media, Inc. v. MASATAMI KITA, FA 1622614 (Forum July 20, 2015) (holding the <pandora1.com> domain name confusingly similar to the PANDORA trademark because the only difference between the two was the addition of the numeral “1”); see also Novartis AG v. boggs, william, FA 1570988 (Forum Aug. 25, 2014) (finding that the <freshlook2.com> domain name was confusingly similar to the complainant’s FRESHLOOK mark because the domain name contained the mark in its entirety and merely added the number “2”).
The addition of a top-level domain is irrelevant when establishing whether a mark is confusingly similar because top-level domains are a required element of every domain name. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”); see also Longo Brothers Fruit Markets Inc. v. John Obeye / DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM, FA 1734634 (Forum July 17, 2017) (“[O]f course it is well established in prior UDRP cases that the addition of a ‘.com’ suffix is irrelevant when determining if a disputed domain name is identical or confusingly similar to a trademark.”).
Thus, the Panel finds that the disputed domain names are confusingly similar to the WYNN mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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 evidence of its rights or legitimate interests”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s mark and to use it in its domain names, adding hyphens and the numbers “01”, “02”, and “03” which do not negate the confusing similarity between the domain names and the trademark;
(b) Respondent registered the <wynn-01.com>, <wynn-02.com>, and <wynn-03.com> domain names on December 19, 2022;
(c) Respondent has caused the disputed domain names to be used to attempt to pass itself off as Complainant;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent does not have rights or legitimate interests in the <wynn-01.com>, <wynn-02.com>, and <wynn-03.com> domain names as Respondent is not licensed or authorized to use Complainant’s WYNN mark and is not commonly known by the disputed domain names. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain names. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The WHOIS information for the disputed domain names lists the registrant as “Lee pil jung”. See Registrar Verification Email. Therefore, the Panel finds Respondent is not commonly known by the disputed domain names per policy ¶ 4(c)(ii);
(f) Complainant submits that Respondent does not use the <wynn-01.com>, <wynn-02.com>, and <wynn-03.com> domain names for any bona fide offering of goods or services or legitimate noncommercial or fair use, instead, Respondent uses the disputed domain names to pass itself off as Complainant. An attempt by a respondent to profit by passing itself off as a complainant through the use of a confusingly similar domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also Crow v. LOVEARTH.net, FA 203208 (Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .”). Here Complainant has provided screenshots of the disputed domain names’ resolving websites, one offering gambling services that Complainant argues creates a likelihood of confusion, the other two showing an admin login page. See Compl. Annex 5.The Panel also finds that it agrees with the submission of Complainant that the websites are “likely to mislead consumers into believing that the Infringing Domain Names originate with Wynn or are approved, sponsored, affiliated, associated with or supplied by Wynn, when they are not. Accordingly, such unauthorized use of the WYNN Marks constitutes trademark infringement.” As such, the Panel finds that the Respondent is not using the domain names to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant submits that Respondent registered and uses the <wynn-01.com>, <wynn-02.com>, and <wynn-03.com> domain names in bad faith, and that Respondent is using the disputed domain names to pass itself off as Complainant for commercial gain. An attempt to pass off as a complainant is prohibited conduct under Policy ¶ 4(b)(iv). See Russell & Bromley Limited v. Li Wei Wei, FA 1752021 (Forum Nov. 17, 2017) (finding the respondent registered and used the at-issue domain name in bad faith because it used the name to pass off as the complainant and offer for sale competitive, counterfeit goods); see also Monsanto Co. v. Decepticons, FA 101536 (Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith). Here Complainant has provided screenshots of the disputed domain names’ resolving websites, one offering gambling services that Complainant argues creates a likelihood of confusion, the other two showing an admin login page. See Compl. Annex 5. In particular, the Panel finds that it agrees with the submission of Complainant that Respondent has registered and used the disputed domain names “for the purposes of perpetuating fraud, intentionally misleading consumers, and attempting to benefit from the goodwill and reputation that Wynn has spent years developing in its gaming and casino-related services in a blatant act of trademark infringement.”
Thus, as the Panel agrees, it finds Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(b)(iv).
Secondly, Complainant contends Respondent registered the <wynn-01.com>, <wynn-02.com>, and <wynn-03.com> domain names with constructive and/or actual knowledge of Complainant’s rights in the WYNN mark. Panels usually disregard arguments of bad faith based on constructive notice as prior UDRP decisions generally decline to find bad faith as a result of constructive knowledge. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). However, the Panel may choose to determine whether Respondent had actual knowledge of Complainant’s rights in the mark prior to registering the disputed domain names as actual knowledge can adequately demonstrate bad faith registration and use under Policy ¶ 4(a)(iii). See WordPress Foundation v. mich delorme / mich d dots tlds, FA1410001584295 (Forum, Nov. 25, 2014) (“Because Respondent here relies on the WORDPRESS mark in the disputed domain name and also makes use of Complainant’s services at the resolving page, the Panel finds that Respondent had actual knowledge of Complainant’s mark, and that such knowledge evidences Policy ¶ 4(a)(iii) bad faith.”).; see also Norgren GmbH v. Domain Admin / Private Registrations Aktien Gesellschaft, FA1501001599884 (Forum Feb. 25, 2014) (holding that the respondent had actual knowledge of the complainant and its rights in the mark, thus demonstrating bad faith registration under Policy ¶ 4(a)(iii), where the respondent was using the disputed domain name to purposely host links related to the complainant’s field of operation). To support this contention, Complainant points to its high level of consumer recognition, the confusing similarity between Complainant’s mark and the disputed domain names, that <wynn-01.com> resolves to a gambling website featuring the WYNN marks, and in view of the offering of online gaming-related services branded under the WYNN mark. See Compl. Annex 1; Compl. Annex 2; Compl. Annex 5. As such, the Panel finds that Respondent did have actual knowledge of Complainant’s right in its mark, which supports a finding of bad faith registration and use under Policy ¶ 4(a)(iii).
engaged in when using the domain names, Respondent registered and used them in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wynn-01.com>, <wynn-02.com>, and <wynn-03.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown KC
Panelist
Dated: February 19, 2023
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