Wynn Resorts Holdings, LLC v. SHAMSUL HUDA
Claim Number: FA2202001983823
Complainant is Wynn Resorts Holdings, LLC (“Complainant”), represented by Peter H. Ajemian of Brownstein Hyatt Farber Schreck, Nevada, USA. Respondent is SHAMSUL HUDA (“Respondent”), Arab Emirates.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wynndubai.com>, registered with FastDomain Inc..
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.
Dr. Reinhard Schanda as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 9, 2022; the Forum received payment on February 9, 2022.
On February 10, 2022, FastDomain Inc. confirmed by e-mail to the Forum that the <wynndubai.com> domain name is registered with FastDomain Inc. and that Respondent is the current registrant of the name. FastDomain Inc. has verified that Respondent is bound by the FastDomain Inc. 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 February 11, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 3, 2022 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@wynndubai.com. Also on February 11, 2022, 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.
An untimely Response was received on March 4, 2022.
On March 7, 2022 Complainant submitted an Additional Submission filed in a timely manner according to the Forum’s Supplemental Rule 7.
On March 10, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dr. Reinhard Schanda 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 timely, formal response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: DEFICIENT RESPONSE
Respondent was informed of its response date of March 3, 2022, but did not submit a response until March 4. Thus the Forum does not consider the Response to be in compliance with ICANN Rule 5. However, the Panel, at its discretion, has chosen to accept and consider this Response. See Victoria’s Secret Stores Brand Mgmt., Inc. v. LaFond, FA 1362225 (Forum Jan. 7, 2011) (deciding that while the response was deficient, “the Panel has nonetheless decided to consider the deficient Response.”).
A. Complainant
Complainant contends that it is a well-known luxury resort and casino business. Complainant has rights in the WYNN mark through its registrations with the United States Patent and Trademark Office (“USPTO”) and has continuously used the WYNN Mark since at leaast as early April 28, 2005 in connection with casino, hotel resort, restaurant, bar, spa and entertainment services. Respondent’s <wynndubai.com> domain name is identical or confusingly similar to Complainant’s mark as it incorporates the mark in its entirety adds the geographic term “Dubai” along with the “.com” generic top-level domain (“gTLD”).
Complainant further contends that Respondent lacks rights and legitimate interests in the <wynndubai.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its WYNN mark in the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, but instead inactively holds the disputed domain name’s resolving website.
Complainant finally contends that Respondent registered and uses the <wynndubai.com> domain name in bad faith. Respondent inactively holds the disputed domain name’s resolving website. Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the WYNN mark.
B. Respondent
Respondent contends that it registered the <wynndubai.com> domain name on Jul. 8, 2019, nearly 1000 days ago. Respondent put up its landing page then in preparation to implement its business plan, but was derailed by COVID-19.
Respondent’s use of the word “wynn” is as an acronym for the commonly used phrase “What You Need Now”, as well as for a “cool person”. Respondent uses the term in connection with the business it is rolling out of an ad-based model schedule generator for various tourist destinations, in this case in particular Dubai.
Respondent is interested in starting a dialogue, but notes that an abrupt change to its domain name would drastically disrupt its business model. Furthermore, Complainant does not own the word “WYNN” as a acronym.
Respondent failed to submit a timely Response in this proceeding.
C. Additional Submissions
In its Additional Submission Complainant replies to the statements and allegations in the Response an contends that Respondent submits an untimely response and cites obscure definitions of the word “Wynn”, definitions which are not commonly associated with the word in the mind of the public, the standard by which trademarks are judged. Respondent’s own cited dictionaries back up Complainant’s assertion, as these sources also refer to Complainant’s own brand. Respondent’s use of Complainant’s mark with a geographic term resembles Complainant’s own use of its legitimate mark to maintain websites in cities where it has presence. Thus, this pattern may confuse Internet users into mistakenly believing they are visiting Complainant’s website.
The Panel finds that:
(1) The domain name <wynndubai.com> is confusingly similar to Complainants’ registered trademarks.
(2) The Respondent has not established rights or legitimate interests in the domain name <wynndubai.com>.
(3) The Respondent has registered and is using the domain name <wynndubai.com> in bad faith.
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.
Complainant claims rights in the WYNN mark through its registrations with the USPTO. Registration with the USPTO is generally sufficient in demonstrating rights in a mark under Policy ¶ 4(a)(i). See Ecolab USA Inc. v. (name redacted), FA 2003001888902 (Forum Apr. 20, 2020) (“Complainant’s ownership of a USPTO registration for ECOLAB is sufficient to demonstrate its rights in a mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <wynndubai.com> domain name is identical or confusingly similar to the WYNN mark. Under Policy ¶ 4(a)(i), adding a geographical term and the “.com” may be insufficient in differentiating a disputed domain name from the mark it wholly incorporates. See Franklin Covey Co. v. franklincoveykorea, FA 1774660 (Forum Apr. 11, 2018) (finding that the <franklincoveykorea.com> domain name is confusingly similar to the FRANKLIN COVEY mark, as “[t]he addition of a geographic term and a gTLD do not negate confusing similarity between a domain name and a mark per Policy ¶ 4(a)(i).”). The disputed domain name adds the geographic term “Dubai”, along with the “.com” gTLD. Therefore, the Panel finds that Respondent’s domain name is identical or confusingly similar to the WYNN mark under Policy ¶ 4(a)(i).
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:
(a) He has made preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services prior to the dispute;
(b) He is commonly known by the domain name, even if he has not acquired any trademark rights; or
(c) He intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
The Panel determines that the Complainant has discharged the onus of proof for the second criterion: The Respondent has failed to demonstrate any legitimate right or interest.
According to the majority of Panel decisions this Panel also takes the position that while Complainant has the burden of proof on this issue, once the Complainant has made a prima facie showing, the burden of production shifts to the Respondent to show by providing concrete evidence that it has rights to or legitimate interests in the domain name at issue. See Document Technologies, Inc. v. International Electronic Communications, Inc., D2000-0270 (WIPO June 6, 2000); Inter-Continental Hotel Corporation v. Khaled Ali Soussi, D2000-0252 WIPO July 5, 2000); Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the Complainant has asserted that the Respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the Respondent”); see also G.D. Searle v. Martin Mktg., FA 118277 (Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent.”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Complainant argues that Respondent is not commonly known by the <wynndubai.com> domain name, nor has Complainant authorized or licensed Respondent to use its WYNN mark in the disputed domain name. Under Policy ¶ 4(c)(ii), relevant WHOIS Information, among other evidence, may demonstrate that a Respondent is not commonly known by a disputed domain name, while a lack of evidence demonstrating otherwise may affirm a Complainant’s assertion that it never authorized or licensed Respondent to use its mark in the disputed domain name. See Warner Bros. Entertainment Inc. v. José Gallardo, FA 1712001763166 (Forum Jan. 20, 2018) (“Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <hogwartsmystery.com> domain name, and that Complainant has licensed or otherwise authorized Respondent to use the HOGWARTS mark for any reason. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “José Gallardo,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(ii).”). The WHOIS of record, along with the response, identify Respondent as “Shamsul Huda,” and nothing in the record rebuts Complainant’s assertion that it never authorized or licensed Respondent to use its WYNN mark in the disputed domain name. See Registrar Verification Email. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent does not use the <wynndubai.com> domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use. Under Policy ¶ 4(c)(i) and (iii), inactively holding a disputed domain name’s resolving website may not be considered a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Nutri/System IPHC, Inc. v. Usama Ayub, FA1725806 (Forum June 5, 2017) (holding that “Respondent does not use the <nutrisystemturbo.us> domain for a bona fide offering of goods or services because the domain name resolves to a website that currently is designated as ‘under construction.’”). Complainant provides a screenshot of what it describes as a “placeholder webpage”, which consists of a message stating that the owner is building a “Daily Activities Generator” for going out in Dubai, and no other content. See Compl. Ex. 5. Therefore, the Panel finds that Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Complainant argues that Respondent registered and uses the <wynndubai.com> domain name in bad faith by inactively holding the disputed domain name’s resolving website. Under Policy ¶ 4(a)(iii), inactively holding a disputed domain name’s resolving website may be evidence of bad faith registration and/or use. See Google Inc. v. Jon G., FA 106084 (Forum Apr. 26, 2002) ("Respondent's unsupported statement that a potentially legitimate [genealogy] website will be coming soon will not suffice to demonstrate rights or interests under Policy ¶ 4(a)(ii)" where the respondent provided no evidence that it actually planned to host a genealogy site and misspelled the only instance of the word "genealogy" on its website). The Panel recalls Complainant’s screenshot of the Respondent’s website, which consists of a message stating that the owner is building a “Daily Activities Generator” for going out in Dubai, and no other content. Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant argues that Respondent registered the <wynndubai.com> domain name with actual knowledge of Complainant’s rights in the WYNN mark. Under Policy ¶ 4(a)(iii), actual knowledge is generally sufficient in demonstrating bad faith, and may be established through Complainant’s incorporation of a registered and/or well-known mark into a disputed domain name. See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”). The Panel may recall that the WYNN mark is wholly incorporated into the disputed domain name. Therefore, the Panel finds that Respondent registered the disputed domain name with bad faith actual knowledge of Complainant’s rights in the WYNN mark under 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 <wynndubai.com> domain name be TRANSFERRED from Respondent to Complainant.
Dr. Reinhard Schanda, Panelist
Dated: March 14, 2022
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page