Wynn Resorts Holdings, LLC v. Jeremy Lai
Claim Number: FA2101001927240
Complainant is Wynn Resorts Holdings, LLC (“Complainant”), represented by Peter H. Ajemian of Brownstein Hyatt Farber Schreck, Nevada, USA. Respondent is Jeremy Lai (“Respondent”), Malaysia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wynnbetsmy.com>, registered with GoDaddy.com, LLC.
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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 5, 2021; the Forum received payment on January 5, 2021.
On January 6, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <wynnbetsmy.com> 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 7, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 27, 2021 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@wynnbetsmy.com. Also on January 7, 2021, 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 January 28, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims ownership of rights in the WYNN mark established through its portfolio of trademark registrations described below and the goodwill that it has accrued by use of the mark in providing casino, hotel resort, restaurant, bar, spa and entertainment services.
Complainant submits that it has built a substantial reputation and goodwill in the WYNN mark by investing in advertising, promoting and protecting its trademark rights in print, broadcast and Internet media, including through its websites.
Complainant alleges that the disputed domain name is confusingly similar to its WYNN mark as it incorporates the WYNN trademark in its entirety with the addition of the generic terms “bets” and “my,” along with the generic top-level domain (“gTLD”) <.com>.
Complainant argues that because it uses the WYNN mark to offer entertainment, casino, gaming, and gambling-related services, the use of the generic terms “bets” and “my” in the disputed domain name actually elevates its confusing similarity. See Fiesta Palms, LLC v. The Palms Poker Room, FA 495283 (Forum Aug. 11, 2005) (finding <palmspoker.com> to be confusingly similar to complainant's PALMS mark because “poker” was generic and described a service provided by complainant).
Complainant submits that the disputed domain name is therefore identical or confusingly similar to the WYNN trademark in which Complainant has rights pursuant to the Policy ¶ 4(a)(i).
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name arguing that there is no evidence to suggest that Respondent is commonly known by the text of any component of the disputed domain name. Rather, the evidence suggests that Respondent is not commonly known by any specific name because all identifying information in the disputed domain name’s WhoIs account has been redacted for privacy purposes.
Moreover, Complainant asserts that Respondent is not licensed or authorized to use the WYNN mark and has no legitimate interest in using the disputed domain name. See Big Canoe Company, LLC v. Daniel J. Elliot, FA 799382 (Forum Nov. 17, 2006) (finding that the respondent’s use of Complainant’s mark in the respondent’s <bigcanoerealestate.net> domain name is not legitimate because the respondent’s WhoIs information did not indicate that the respondent was commonly known by such domain).
Complainant refers to a screenshot of the active website linked to the disputed domain name which is exhibited in an annex to this Complaint and submits that it illustrates that since Respondent registered the disputed domain name on December 4, 2020, it has been linked to an active website which prominently displays Complainant’s WYNN mark used in connection with the provision of online gambling services, including live casino games, slot games, and sports betting, among others.
It is alleged that Respondent’s use of the website at the disputed domain name to advertise and provide gaming and casino-related services, as well as sports betting services, creates a false consumer association with Complainant and is likely to mislead consumers into believing that the disputed domain name originates with, or is approved, sponsored, affiliated, associated with or supplied by Complainant, when it is not.
Complainant submits that such unauthorized use of the WYNN mark constitutes trademark infringement and therefore Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(ii).
Accordingly, Complainant asserts that it has submitted sufficient evidence to demonstrate that Respondent has no rights or legitimate interests in the disputed domain name pursuant to the Policy ¶ 4(a)(ii).
The Complaint further alleges that the disputed domain name was registered and is being used in bad faith, arguing that when Respondent registered the disputed domain name on December 4, 2020, Complainant had already filed and/or secured registrations for its famous WYNN mark, giving Respondent constructive notice of its rights in the mark.
Complainant adds that because of the high level of consumer recognition that the WYNN mark has achieved in the United States and internationally, it is likely that Respondent had actual notice of the WYNN mark at the time of registration.
Despite such knowledge, Respondent proceeded to register the disputed domain name, which contains the entirety of the WYNN trademark, along with the addition of the generic terms “bets” and “my” and the gTLD <.com>. Complainant argues that in so doing, Respondent has demonstrated bad faith. See Wynn Resorts Holdings, LLC v. Martinez, FA 1607001683318 (Forum Aug. 19, 2016) (finding that “due to the fame of the [WYNN marks],
It is further submitted that Respondent had actual knowledge of the mark and Complainant’s rights, on account of the fame and reputation of Complainant’s WYNN mark, which supports a finding of bad faith); Robertson-Ceco II Corporation d/b/a Ceco Building Systems v. DVLPMNT MARKETING, INC. / Domain Administrator, FA 1564933 (Forum July 24, 2014) (finding that due to the fame of the complainant’s mark and use of the mark, respondent had actual knowledge of the mark and the complainant’s rights, which was evidence of bad faith registration).
Complainant further argues that after registering the disputed domain name with knowledge of Complainant’s trademark rights, Respondent has used the disputed domain name in the utmost bad faith—for the purposes of perpetuating fraud, intentionally misleading consumers, and attempting to benefit from the goodwill and reputation that Complainant has spent years developing in its gaming and casino-related services in a blatant act of trademark infringement.
It is alleged that it is “inconceivable” that Respondent registered the disputed domain name, which fully incorporates Complainant’s famous WYNN mark, for any reason other than wrongfully diverting users seeking Complainant’s own websites. See Alamo Rent-A-Car Management, LP v. Yong Li, WIPO Case No. D2003-0535 (Aug. 22, 2003) (finding “it inconceivable that Respondent chose to include the word ‘alamo’” in its domain name without knowledge of Complainant’s rights, even where Complainant’s mark was not registered in Respondent’s home country).
Here, Respondent’s prominent use of the WYNN marks throughout the website to offer casino and betting-related services branded under the WYNN mark shows that there is no doubt that Respondent was aware of Complainant’s rights in the WYNN marks and used the WYNN marks in bad faith and for the purpose of wrongfully and unlawfully profiting from the WYNN marks.
Further, Complainant asserts that Respondent’s use of the disputed domain name will wrongfully divert the public away from visiting Complainant’s websites. See Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico, WIPO Case No. D2000 0477 (July 20, 2000) (stating potential customers will visit sites “if only to satisfy their curiosity” which accomplishes Respondent’s objective “of diverting potential customers of Complainant to his websites by use of domain names that are similar to the Complainant’s trademark”).
Due to the ubiquity of Complainant’s WYNN mark, it is likely that consumers will visit the website to which the disputed domain name resolves for information on Complainant and its goods and services under the WYNN mark, diverting consumers away from Complainant’s websites. See Vienna Beef Ltd. v. Texas Int’l Property Associates, WIPO Case No. D2007-1133 (Oct. 10, 2007) (finding that the conduct of diverting traffic away from the complainant’s business and directing it to its competitors for monetary gain constitutes bad faith under the Policy). Complainant adds that Respondent’s bad-faith diversion of traffic for monetary gain further demonstrates its bad faith use and registration of the disputed domain name.
Moreover, a Panel established under the Policy has recently ruled against Respondent in connection with his registration of the domain name <wynnbets.com> on December 21, 2020. See Wynn Resorts Holdings, LLC v. Jeremy Lai, FA 2011001920058 (Dec. 21, 2021) (finding it “indeed likely – If not even obvious – that [Mr. Lai] did have actual knowledge of Complainant’s right in [the WYNN mark]” before concluding that Respondent acted in bad faith and ultimately awarding <wynnbets.com> to Complainant). This previous proceeding conclusively shows that Respondent had actual knowledge of Complainant’s rights in the WYNN marks. Complainant initiated the proceeding under the Policy related to the domain name <wynnbets.com> on November 9, 2020 with service being made to Respondent on November 13, 2020—several weeks before Respondent registered <wynnbetsmy.com>.
Thus, after receiving actual notice of Complainant’s rights in the WYNN mark directly from the Forum, and while that case was still pending, Respondent proceeded to register yet another confusingly similar domain name which incorporates the entirety of the WYNN mark for use in connection with online gaming and casino services. In fact, the same infringing trademarks that were previously used on <wynnbets.com> have been reused on <wynnbetsmy.com> in the exact same fashion.
Clearly, Respondent is intentionally attempting to profit from the goodwill that Complainant has spent decades building in the WYNN Marks, even after being notified of his infringing actions.
Accordingly, Complainant submits that it has adduced sufficient evidence demonstrating that the disputed domain name was registered and is being used in bad faith pursuant to the Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns and operates casino resorts in Nevada, USA and Macau, China and uses the WYNN mark for its casino, hotel resort, restaurant, bar, spa and entertainment services, among other goods and services for which it owns a portfolio of trademark registrations including the following:
· United States registered trademark WYNN, registration number 2,983,695, registered on the Principal Register on August 5, 2005 for services in international Class 41;
· United States registered trademark WYNN, registration number 2,983,696, registered on August 5, 2005 for services in international Class 43.
The disputed domain name was registered on December 3, 2020 and resolves to a website purporting to offer gambling services.
There is no information available about Respondent except for that which is provided in the Complaint, the Registrars WhoIs, and the information provided by the Registrar to the Forum in response to the request for verification of the registration details of the disputed domain name in the course of this proceeding.
The Registrar disclosed that the disputed domain name is registered by Respondent who has availed of a privacy service to disclose his identity.
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”).
Complainant has provided clear, convincing and uncontested evidence that it owns rights in the WYNN mark established through its portfolio of trademark registrations described above and at common law because of the goodwill that it has established by use of the mark in its casino, hotel resort, restaurant, bar, spa and entertainment business.
The disputed domain name incorporates the WYNN trademark in its entirety, in combination with the generic terms “bets” and “my” together with the gTLD <.com> extension.
Complainant’s the WYNN trademark is the initial, dominant and only distinctive element in the disputed domain name. The generic terms “bets” and “my” have no distinguishing characteristics and the gTLD <.com> extension would be regarded by Internet users as a necessary technical element in the subject domain name.
This Panel finds therefore that the disputed domain name is confusingly similar to the WYNN trademark in which Complainant has rights. Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name arguing that:
· there is no evidence to suggest that Respondent is commonly known by the text of any component of the disputed domain name;
· the evidence suggests that Respondent is not commonly known by any specific name;
· the identifying information in the disputed domain name’s Whois account has been redacted for privacy purposes;
· Respondent is not licensed or authorized to use the WYNN mark and as such, has no legitimate interest in using the disputed domain name;
· the screenshot of the active website to which the disputed domain name resolves, illustrates that since Respondent registered the disputed domain name on December 4, 2020, it has been linked to an active website which prominently displays Complainant’s WYNN mark used in connection with the provision of online gambling services, including live casino games, slot games, and sports betting, among others; and
· Respondent’s use of the website at the disputed domain name to advertise and provide gaming and casino-related services, as well as sports betting services, creates a false consumer association with Complainant that is likely to mislead consumers into believing that the disputed domain name originates with, or is approved, sponsored, affiliated, associated with or supplied by Complainant, when it is not;
· such unauthorized use of the WYNN mark constitutes trademark infringement; and
· therefore, Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(ii).
It is well established that where a complainant makes out a prima facie case that respondent has no rights or legitimate interests in a subject domain name, the burden of production shifts to the respondent to show that he, she or it, has such rights.
Respondent has failed to discharge the burden of production in this proceeding and therefore this Panel is obliged find that Complainant has established on the balance of probabilities that Respondent has no right or legitimate interests in the disputed domain name. Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
Complainant has provided convincing evidence that Respondent was actually aware of Complainant’s rights in the WYNN mark when the disputed domain name was chosen and registered. Specifically, Complainant refers to recent case Wynn Resorts Holdings, LLC v. Jeremy Lai, FA 2011001920058 (Dec. 21, 2020) which it successfully brought against Respondent.
It is implausible that by coincidence Respondent would have chosen and registered the disputed domain name and used it as the address of a website purporting to offer gambling services without knowledge of Complainant, its name, mark and casino business.
It is most improbable that Respondent registered the disputed domain name, which fully incorporates Complainant’s famous WYNN mark, for any reason other than wrongfully diverting users seeking Complainant’s own websites.
This Panel finds therefore that the balance of probabilities, Respondent chose and registered the disputed domain name in bad faith in order to take predatory advantage of Complainant’s rights, and in particular to divert Internet traffic intended for Complainant.
The evidence adduced by Complainant in the form of the screenshot of the website to which the disputed domain name resolves shows that Respondent is using the disputed domain name in bad faith in order to pass itself off as Complainant unsuspecting Internet users to whom it is offering casino and betting-related services branded under the WYNN mark.
This Panel finds therefore that Respondent is using the disputed domain name in bad faith intentionally and without authority attempting to profit from the goodwill of Complainant.
Accordingly, as at this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has succeeded in the third element of the test in Policy ¶ 4(a)(iii) also is entitled to the reliefs sought in the Complaint.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wynnbetsmy.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: February 1, 2021
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