Wynn Resorts Holdings, LLC v. Rick McMahon
Claim Number: FA0804001178449
Complainant is Wynn Resorts Holdings, LLC (“Complainant”), represented by Tyler
Andrews, of Greenberg Traurig, LLP,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <discoverwynn.com> and <discoverwynnlasvegas.com>, registered with Godaddy.com, 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.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On April
17, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 7, 2008
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@discoverwynn.com and postmaster@discoverwynnlasvegas.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <discoverwynn.com> and <discoverwynnlasvegas.com> domain names are confusingly similar to Complainant’s WYNN mark.
2. Respondent does not have any rights or legitimate interests in the <discoverwynn.com> and <discoverwynnlasvegas.com> domain names.
3. Respondent registered and used the <discoverwynn.com> and <discoverwynnlasvegas.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant operates and develops destination casino resorts
under the WYNN mark, which Complainant registered with the United States Patent
and Trademark Office (“USPTO”) on
Respondent registered the <discoverwynn.com> and <discoverwynnlasvegas.com> domain names on March 19, 2007. The disputed domain names resolve to websites containing an online directory with pay-per-click links to websites offering goods and services from Complainant’s competitors.
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.
The Panel finds that Complainant has established rights in
the WYNN mark for purposes of Policy ¶ 4(a)(i) through
its trademark registration with the USPTO.
See 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.”).
Complainant contends that
Respondent’s <discoverwynn.com> domain name is confusingly similar to its WYNN mark. The <discoverwynn.com> domain name differs from Complainant’s mark in two ways:
(1) the term “discover” has been added to the beginning of the mark; and (2)
the generic top-level domain (“gTLD”) “.com” has been added. Adding a generic term and a gTLD does not
sufficiently reduce the likelihood of confusion between a mark and a domain
name that incorporates that mark.
Therefore, the Panel finds that these changes do not minimize or
eliminate the resulting likelihood of confusion, and so Respondent’s disputed
domain name is not sufficiently distinguished from Complainant’s mark pursuant
to Policy ¶ 4(a)(i).
See Arthur Guinness
Son & Co. (
Complainant contends that
Respondent’s <discoverwynnlasvegas.com> domain name is confusingly similar to its WYNN mark. The <discoverwynnlasvegas.com> domain name differs from Complainant’s mark in three ways:
(1) the term “discover” has been added to the beginning of the mark; (2) the
geographic term “Las Vegas” has been added to the end of the mark; and (3) the
generic top-level domain (“gTLD”) “.com” has been added. As noted above, adding a generic term and a
gTLD does not sufficiently reduce the likelihood of confusion between a mark
and a domain name that incorporates that mark. Likewise, adding a geographic term does not
reduce or eliminate the possibility of confusion. See VeriSign,
Inc. v. Tandon, D2000-1216 (WIPO
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights and legitimate interests in the <discoverwynn.com> and <discoverwynnlasvegas.com> domain names. Under Policy ¶ 4(a)(ii), after the complainant makes a prima facie case against the respondent, the respondent then has the burden of showing evidence that it does have rights and legitimate interests in the disputed domain name. The Panel finds that Complainant has made a prima facie case under Policy ¶ 4(a)(ii). See 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 Respondent is not commonly known
by the <discoverwynn.com> and <discoverwynnlasvegas.com>
domain names, nor has Respondent ever been the owner or licensee of the WYNN
mark. The WHOIS record for the disputed
domain names lists Respondent as “Rick McMahon.” Based on this evidence, along with the fact
that Respondent has failed to show any evidence contrary to Complainant’s
contentions, the Panel finds that Respondent is not commonly known as <discoverwynn.com> or <discoverwynnlasvegas.com>
pursuant to Policy ¶ 4(c)(ii).
See American West Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name
under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration
information, Respondent is not commonly known by the [<awvacations.com>]
domain name.”); see
also Broadcom Corp. v.
Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5,
2001) (finding no rights or legitimate interests because the respondent is not
commonly known by the disputed domain name or using the domain name in
connection with a legitimate or fair use).
Respondent maintains websites at <discoverwynn.com> and <discoverwynnlasvegas.com> that contain an online directory of links to websites that offer goods and services from Complainant’s competitors. The Panel finds that this use of the domain names <discoverwynn.com> and <discoverwynnlasvegas.com> is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (finding that the respondent’s use of a confusingly similar domain name to operate a pay-per-click search engine, in competition with the complainant, was not a bona fide offering of goods or services); see also Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that using a domain name to direct Internet traffic to a website featuring pop-up advertisements and links to various third-party websites is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because the registrant presumably receives compensation for each misdirected Internet user); Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (holding that the respondent’s use of the disputed domain name to host a series of hyperlinks and a banner advertisement was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent is gaining commercially
by diverting Internet users to its sites, both through click-through fees and
through the competing goods and services that Respondent is offering through
the links to third-party websites. The
Panel finds that this is an intentional use of the disputed domain names for
commercial gain through a likelihood of confusion with Complainant’s mark, and
so, pursuant to Policy ¶ 4(b)(iv), this use is
evidence of registration and use in bad faith.
See State Fair of
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <discoverwynn.com> and <discoverwynnlasvegas.com> domain names be TRANSFERRED from Respondent to Complainant.
Dated: May 27, 2008
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