MGM Mirage v. Beroca Holdings B.V.I. Limited c/o Wayne Nicholas
Claim Number: FA0707001031948
Complainant is MGM Mirage (“Complainant”), represented by John
L. Krieger, of Lewis and Roca LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mgmgrand.mobi>, registered with EuroDNS
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 11, 2007; the National Arbitration Forum received a hard copy of the Complaint on July 12, 2007.
13, 2007, EuroDNS
On July 17, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 6, 2007 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 9, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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." 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 makes the following assertions:
Complainant has continuously used the MGM GRAND service mark
in connection with its famous destination resort hotel casino located in
Complainant has registered the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,906,197, issued July 18, 1995).
Respondent has not sought, nor has Complainant granted, a license or permission for Respondent to use Complainant’s mark in any way.
Respondent registered the <mgmgrand.mobi> domain name on September 26, 2006 and has since made no use of the domain name.
Respondent currently also holds numerous other “.mobi” domain names incorporating famous marks, including <wards.mobi>, which includes the WARDS trademark owned by the company Montgomery Wards.
Many of these other “.mobi” domain names have been transferred from Respondent by other Panels. See Kuoni Reisen Holding AG v. Beroca Holdings B.V.I. Ltd., D2007-0216 (WIPO April 17, 2007) (transferring <kuoni.mobi> to Complainant: Kurt Geiger Ltd. V. Beroca Holdings B.V.I. Ltd., D2007-0195 (WIPO April 17, 2007) (transferring <kurtgeiger.mobi> to Complainant); Advance Magazine Publishers Inc. v. Beroca Holdings B.V.I. Ltd., D2007-0026 (WIPO March 28, 2007) (transferring <codenast.mobi> to Complainant).
Respondent’s <mgmgrand.mobi> domain name is substantially identical to Complainant’s MGM GRAND mark.
Respondent does not have any rights or legitimate interests in the <mgmgrand.mobi> domain name.
Respondent registered and uses the <mgmgrand.mobi> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is substantially identical to a 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 same domain name was registered and is being used by Respondent 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."
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 a 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.”
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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has sufficiently established its rights in the MGM
GRAND mark pursuant to Policy ¶ 4(a)(i) through
registration of the mark with the USPTO.
[O]nce the USPTO has made a determination that a mark is registrable, by so issuing a registration, as indeed was the case here, an ICANN panel is not empowered to nor should it disturb that determination.
See also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; rather it is sufficient that a complainant can demonstrate a mark in some jurisdiction).
Respondent’s <mgmgrand.mobi> domain name fully incorporates Complainant’s MGM GRAND mark, with the addition of a generic top level domain (“gTLD”). The addition of a gTLD is not relevant in a Policy ¶ 4(a)(i) analysis. Therefore, we conclude that the disputed domain name is identical to Complainant’s mark for purposes of Policy ¶ 4(a)(i). See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to a complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002):
[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.
The Panel thus concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), Complainant must initially make out a prima facie case that Respondent has no rights or legitimate interests in the domain name at issue. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002): “Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent.” See also VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000.
The Panel finds that Complainant has met this burden. Accordingly, the burden is shifted to Respondent to demonstrate that it does have rights or legitimate interests in the disputed domain name.
Respondent has failed to submit a Response to the Complaint. We may therefore presume that Respondent has no rights or legitimate interests in the <mgmgrand.mobi> domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002):
[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.
See also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002): “Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”
We will nonetheless consider the available evidence with respect to the factors listed in Policy ¶ 4(c) to determine whether there is any basis for concluding that Respondent has rights or interests under the Policy.
In this connection, we note that nowhere in the record, including Respondent’s WHOIS information, is there an indication that Respondent is or ever has been commonly known by the <mgmgrand.mobi> domain name. Further, Respondent does not deny Complainant’s allegation that Respondent has not sought, nor has Complainant granted, a license or permission to Respondent to use Complainant’s mark in any way. Therefore, we conclude that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where a respondent was not commonly known by a mark and never applied for a license or permission from a complainant to use a trademarked name); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) a respondent is not a licensee of a complainant; (2) that complainant’s prior rights in the domain name precede that respondent’s registration; (3) that respondent is not commonly known by the domain name in question).
The Panel therefore concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
It is already established that Respondent has made no active use of the disputed domain name. Having in mind both the length of time that has passed since Respondent’s registration of the domain name and its failure to respond to the Complaint, we find this failure of active use to evidence bad faith registration and use within the meaning of the Policy. See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000):
The requirement in the ICANN Policy that a complainant prove that domain names are being used in bad faith does not require that it prove in every instance that a respondent is taking positive action. Use in bad faith can be inferred from the totality of the circumstances even when the registrant has done nothing more than register the names.
See also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that, although a respondent made no active use of the domain name or website that connects with a domain name, such non-use permits an inference of registration and use in bad faith).
We also note the unrefuted allegation of the Complaint that Respondent has engaged in a pattern of registering domain names incorporating famous marks, and that it currently holds numerous other “.mobi” domain names incorporating such marks, many of which have been found by other Panels to have been registered in bad faith. Consequently, we conclude that such a pattern of conduct helps to establish bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(ii). See Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith pursuant to Policy ¶ 4(b)(ii) because the domain name prevented a complainant from reflecting its mark in a domain name and a respondent had several adverse decisions against it in previous UDRP proceedings, which established a pattern of cybersquatting).
For these reasons, the Panel concludes that Complainant has satisfied Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <mgmgrand.mobi> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: August 23, 2007
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