national arbitration forum

 

DECISION

 

Wynn Resorts Holdings, LLC v. Vistreon

Claim Number: FA0710001093839

 

PARTIES

Complainant is Wynn Resorts Holdings, LLC (“Complainant”), represented by Kelley L. Nyquist, of Greenberg Traurig, LLP, 3773 Howard Hughes Parkway, Suite 500 North, Las Vegas, NV 89169.  Respondent is Vistreon (“Respondent”), 134 Darrow Lane, Greenlawn, NY 11740.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <wynn-casino.com>, registered with Godaddy.com, Inc.

 

PANEL

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.

 

Sandra J. Franklin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 11, 2007; the National Arbitration Forum received a hard copy of the Complaint on October 12, 2007.

 

On October 12, 2007, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <wynn-casino.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name.  Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

On October 17, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 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 postmaster@wynn-casino.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On November 12, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist.

 

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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <wynn-casino.com> domain name is confusingly similar to Complainant’s WYNN RESORTS mark.

 

2.      Respondent does not have any rights or legitimate interests in the <wynn-casino.com> domain name.

 

3.      Respondent registered and used the <wynn-casino.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Wynn Resorts Holdings, LLC, is the sole member of Wynn Las Vegas, LLC, the owner and operator of the “Wynn Las Vegas” resort hotel casino.  Since at least the selection and public announcement of the Wynn Las Vegas name in June 2003, Wynn Resorts has continuously used the marks WYNN RESORTS, WYNN DD DESIGN AND DEVELOPMENT, WYNN LAS VEGAS and WYNN MACAU (the “WYNN Marks”) in connection with advertising and promoting its affiliated properties in the United States and around the world.  Complainant owns several trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the WYNN family of marks including WYNN RESORTS (Reg. No. 2,901,872, February 3, 2004), WYNN DD DESIGN AND DEVELOPMENT (Reg. No. 2,585,021, April 30, 2001), WYNN LAS VEGAS (Reg. No. 2,983,712, November 21, 2003) and WYNN MACAU Reg. No. 3,276,061, June 23, 2003).

 

Respondent registered the <wynn-casino.com> domain name on October 12, 2004.  Respondent’s disputed domain name currently resolves to a website containing no content.

 

DISCUSSION

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 the 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:

 

(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.

 

Identical and/or Confusingly Similar

 

Complainant has established rights in the WYNN RESORTS mark, which date back to the filing of trademark applications with the United States Patent and Trademark Office (“USPTO”).  Complainant owns several trademark registrations with the USPTO.  The Panel finds that where Complainant has submitted evidence of a valid trademark registration, Policy ¶ 4(a)(i) has been satisfied.  See Lockheed Martin Corp. v. Hoffman, FA 874152 (Nat. Arb. Forum Jan. 31, 2007) (finding that the complainant had sufficiently established rights in the SKUNK WORKS mark through its registration with the USPTO); see also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive [or] have acquired secondary meaning.”).

 

Respondent’s <wynn-casino.com> domain name is confusingly similar to Complainant’s mark.  Respondent’s domain name contains Complainant’s entire WYNN mark, removes the term “Resorts” and adds a hyphen, the generic term “casino” and the generic top-level domain (“gTLD”) “.com.”  The Panel finds that such changes fail to distinguish Respondent’s domain name from Complainant’s mark in any meaningful way for purposes of Policy ¶ 4(a)(i).  See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy); see also Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to the complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which the complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the addition of a gTLD, whether it be “.com,” “.net,” “.biz,” or “.org,” is irrelevant to a Policy ¶ 4(a)(i) analysis).

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

Complainant states that Respondent lacks rights to or legitimate interests in the <wynn-casino.com> domain name.  Where Complainant makes a prima facie case under Policy ¶ 4(a)(ii), the burden shifts to Respondent to set forth concrete evidence that it does possess rights to or legitimate interests in the disputed domain name.  The Panel finds that Complainant has established a prima facie case in the matter at hand.  See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent.  In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also 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”).

Complainant contends that the disputed domain name, <wynn-casino.com>, currently resolves to a website that contains no content.  Without evidence of demonstrable preparations to use the disputed domain name, the Panel finds that Respondent’s use is not 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).  Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question); see also U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (finding that a respondent had no rights or legitimate interests in a confusingly similar domain name where it had failed to use it).

Respondent is neither commonly known by the <wynn-casino.com> domain name nor authorized to register domain names featuring Complainant’s WYNN family of marks in any way.  Absent evidence to the contrary, the Panel finds that Respondent has not established rights to or legitimate interests in the domain name in accordance with 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 the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Complainant alleges that Respondent registered and used the disputed domain name in bad faith.  The disputed domain name does not currently resolve to an active website.  Respondent presented no evidence of preparations to use the disputed domain name. For these reasons, the Panel finds that Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).  See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that such lack of use permits an inference of registration and use in bad faith).

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).

DECISION

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-casino.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Sandra J. Franklin, Panelist

Dated:  November 26, 2007

 

 

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