National Arbitration Forum

 

DECISION

 

Wynn Resorts Holdings, LLC v. Turk Global, LLC

Claim Number: FA0805001190419

 

PARTIES

Complainant is Wynn Resorts Holdings, LLC (“Complainant”), represented by Tyler R. Andrews, of Greenberg Traurig, LLP, Nevada, USA.  Respondent is Turk Global, LLC (“Respondent”), Nevada, USA.

 

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <lasvegaswynnhotel.com>, registered with Godaddy.com, Inc.

 

PANEL

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.

 

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on May 14, 2008; the National Arbitration Forum received a hard copy of the Complaint on May 15, 2008.

 

On May 14, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <lasvegaswynnhotel.com> domain name is registered with Godaddy.com, Inc. and that the 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 May 16, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 5, 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@lasvegaswynnhotel.com by e-mail.

 

A timely Response was received and determined to be complete on June 4, 2008.

 

On June 11, 2008, Complainant submitted an untimely Additional Submission.  The Panel, in its discretion, shall consider Complainant’s additional submission.   

 

On June 11, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

A.        Complainant, Wynn Resort Holdings, LLC, makes the following assertions:

 

1.      Respondent’s <lasvegaswynnhotel.com> domain name is confusingly similar to Complainant’s WYNN mark, including WYNN LAS VEGAS.

 

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

 

3.      Respondent registered and used the <lasvegaswynnhotel.com> domain name in bad faith.

 

B. Respondent

 

Respondent, Turk Global, LLC, argues that the <lasvegaswynnhotel.com> domain name

is not confusingly similar to Complainant’s mark.  Respondent contends that none of

Complainant’s marks contain the term “hotel,” so this sufficiently distinguishes the

disputed domain name from Complainant’s mark. The disputed domain name contains

four different words which are "Las", "Vegas", "Wynn" and "Hotel".  The words "Las"

and "Vegas" are together "Las Vegas" and represent the city where the "Turk Global

LLC" business is located.  More than 90% of the domain names that "Turk Global LLC"

registers contain the words "Las Vegas", simply the name of the city, which can not be

considered infringement. 

 

Respondent contends that GoDaddy, and not Respondent, placed the competing hyperlinks on the website resolving from the disputed domain name.  Respondent further contends that it does not receive any advertising revenue.

 

Respondent contends that it has never made any use of the <lasvegaswynnhotel.com> domain name, and therefore has not violated Policy ¶¶ 4(c)(i) or (iii).  Respondent notes that it is an IT company based in Las Vegas, and this fact confers rights and legitimate interests to Respondent.  In addition, Respondent alleges that the hyperlinks posted to the resolving website were posted by GoDaddy, and not Respondent. 

 

Respondent contends it is not Complainant’s direct competitor. 

 

Respondent contends it did not post the competing hyperlinks to the website resolving from the disputed domain name, and does not collect any click-through or advertising revenue.

 

Respondent alleges it is an IT consulting company, and conducts its business in Las Vegas.  Respondent also contends it has never actively used the disputed domain name to advertise its business, and did not post the competing hyperlinks on the resolving website.

 

C. Complainant’s Additional Submission

 

Complainant contends that the addition of the geographically descriptive term “Las Vegas” does nothing to eliminate the confusion that Respondent created by registering a domain name containing the entirety of the WYNN mark.

 

Complainant says that Respondent’s argument that research was conducted at the Nevada Secretary of State website is irrelevant as Complainant has applied for and maintained registrations for several state and federally registered trademarks with both the Nevada Secretary of State and the United States Patent and Trademark Office.

 

Respondent’s argument that the domain name uses the word “hotel,” while Complainant’s website uses the term “Resort,” lacks merit as these words describe the same category of consumer services.

 

Respondent’s admission that the domain name has not been used is evidence of bad faith.  Respondent’s argument that it has nothing to do with the pay-per-click advertising program is inaccurate as Respondent has ultimate control over the domain name and the parked page associated with the parked domain name offering links to the websites of Complainant and Complainant’s competitors.  Respondent’s argument that Complainant and Respondent are two different companies shows Respondent’s lack of authority to use any WYNN marks.

 

FINDINGS

 

Wynn Resorts Limited is the sole member of Complainant, Wynn Resorts Holdings, LLC.  Complainant is the sole member of Wynn Las Vegas, LLC, the owner and operator of the “Wynn Las Vegas” resort hotel casino located on the “Strip” in Las Vegas, Nevada.  Wynn Las Vegas opened for business on April 28, 2005.  The “Wynn” name and mark, as seen in “Wynn Resorts” and “Wynn Las Vegas,” is attributed to the President and Chief Executive Officer of Wynn Resorts, Stephen A. Wynn, who is world-renowned as a developer and operator of destination casino resorts.  Before Wynn Las Vegas, Mr. Wynn was responsible for developing and managing several prominent casinos.  Mr. Wynn has granted an exclusive license to use his surname and persona to Complainant, which in turn sublicenses Mr. Wynn’s surname and persona to its operating affiliates.

 

Complainant has rights to numerous trademarks containing its WYNN mark, including WYNN LAS VEGAS, which Complainant registered with the United States Patent and Trademark Office (“USPTO”) on November 21, 2003 (Reg. No. 2,983,712).  Since the selection of the Wynn Las Vegas name in June 2003, Complainant has continuously used the WYNN mark in connection with advertising and promoting its properties in the United States and around the world.  The Wynn mark is a recognized and respected name in the resort hotel industry.  Wynn Las Vegas offers high quality resort services under the WYNN brand.

 

Respondent registered the disputed domain name, <lasvegaswynnhotel.com>, on June 26, 2005.  

 

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2)   the 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 rights to numerous trademarks containing its WYNN mark, including WYNN LAS VEGAS, which Complainant registered with the United States Patent and Trademark Office (“USPTO”) on November 21, 2003 (Reg. No. 2,983,712).  Complainant’s USPTO trademark registration for the WYNN LAS VEGAS mark sufficiently confers rights in the mark to Complainant for the purposes of Policy ¶ 4(a)(i).  See Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007) (“Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).”); see also State Farm Mut. Auto. Ins. Co. v. Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy ¶ 4(a)(i).”).

 

Complainant contends that the <lasvegaswynnhotel.com> domain name is confusingly similar to its WYNN LAS VEGAS mark.  The disputed domain name contains Complainant’s mark in its entirety, albeit inverted.  The disputed domain name also adds the generic word “hotel,” and the generic top-level domain (“gTLD”) “.com.”  Complainant alleges that the word “hotel” describes its business, and therefore adds to the confusing similarity of the disputed domain name.  The Panel finds that these changes do not sufficiently distinguish the disputed domain name from Complainant’s mark, and therefore concludes that the <lasvegaswynnhotel.com> domain name is confusingly similar to Complainant’s WYNN LAS VEGAS mark pursuant to Policy ¶ 4(a)(i).  See Pearl Jam, A Gen. P’ship v. Lyn, FA 221238 (Nat. Arb. Forum Feb. 16, 2004) (finding that merely transposing the elements of a mark in a domain name, in this case PEARL JAM in the <jampearl.com> domain name, does not avoid a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”).

 

Rights or Legitimate Interests

 

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

 

Complainant contends there is no evidence to indicate that Respondent is commonly known by the <lasvegaswynnhotel.com> domain name.  Complainant notes that the WHOIS information identifies Respondent as “Turk Global, LLC” which does not suggest that Respondent is commonly known by the disputed domain name.  The Panel concludes that Respondent lacks rights and legitimate interests in the <lasvegaswynnhotel.com> domain name pursuant to Policy ¶ 4(c)(ii).  See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip’t as the registrant of the disputed domain name and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).

 

According to Complainant, Respondent is using the <lasvegaswynnhotel.com> domain name to host a pay-per-click website where links to competing services are advertised.  The Panel determines that this use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (holding that using an identical or confusingly similar domain name to earn click-through fees via sponsored links to a complainant’s competitors does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Royal Bank of Scot. Group plc v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with 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), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites).

 

Respondent contends in its Response that GoDaddy, and not Respondent, placed the competing hyperlinks on the website resolving from the disputed domain name.  Respondent further contends that it does not receive any advertising revenue.  Nevertheless, Respondent is responsible for the contents of the website resolving from the disputed domain name, and therefore Respondent lacks rights and legitimate interests in the <lasvegaswynnhotel.com> domain name pursuant to Policy ¶ 4(a)(ii).  See StaffEx Corp. v. Pamecha, FA 1029545 (Nat. Arb. Forum Aug. 27, 2007) (“Respondent has alleged that the registrar, GoDaddy, has posted these [competing] links for the website associated with the Domain Name.  However, the Panel finds this is no excuse and holds Respondent accountable for the content posted to the site that resolves from the Domain Name.”); see also Netbooks, Inc. v. Lionheat Publ’g, FA 1069901 (Nat. Arb. Forum Oct. 18, 2007) (“The Panel also notes that Respondent is responsible for the content of any website using the domain name at issue, and cannot pass that responsibility off to its registrar or domain name service provider.”).

           

Registration and Use in Bad Faith

 

Complainant contends that Respondent’s use of the <lasvegaswynnhotel.com> domain name is likely to confuse the public as to the source, sponsorship, affiliation, or endorsement of Respondent’s resolving website.  Complainant suggests that Respondent is knowingly and intentionally attempting to capitalize from the goodwill associated with Complainant’s WYNN LAS VEGAS mark.  The Panel finds that Respondent’s registration and use of the disputed domain name constitutes bad faith pursuant to Policy ¶ 4(b)(iv).  See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because Respondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees.   Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).

 

Respondent’s registration and use of the <lasvegaswynnhotel.com> domain name to advertise competing services also constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  While Respondent contends it is not Complainant’s direct competitor, the Panel determines that Respondent’s registration and use of the disputed domain name is likely to disrupt Complainant’s business by diverting potential customers to the websites of Complainant’s competitors.  Such circumstances are sufficient to demonstrate a violation of Policy ¶ 4(b)(iii).  See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) when the disputed domain name resolved to a website that displayed commercial links to the websites of the complainant’s competitors); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because the respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).

 

Respondent contends it did not post the competing hyperlinks to the website resolving from the disputed domain name, and does not collect any click-through or advertising revenue.  However, these arguments are immaterial.  The Panel determines that Respondent’s registration and use of the <lasvegaswynnhotel.com> domain name constitutes bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv).  See Baylor Univ. v. Red Hot Web Gems, Inc., FA 1082178 (Nat. Arb. Forum Dec. 3, 2007) (“Respondent has established that it does not receive any of the revenues from the click-through fees from the links displayed on the websites that resolve from sites associated with the domain names at issue … [However], Respondent has allowed the domains to be used to attract, for commercial gain, Internet users who may be confused as to Complainant’s affiliation with those sites.  To a majority of the Panel, this is sufficent evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iv), regardless of the fact that the respondent was not earning click-through fees, because “[a]lthough the websites accessed via the Disputed Domains may be operated by domain parking service providers, that activity is legally and practically attributable back to Respondent … [t]he key fact here is that Respondent, in collaboration with the domain parking service providers, is exploiting Complainant's goodwill.”).

 

As Respondent had knowledge of Complainant’s business at the time it registered the <lasvegaswynnhotel.com> domain name in 2005, the Panel concludes that Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”); see also Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights).

 

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 <lasvegaswynnhotel.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: June 25, 2008

 

 

 

 

 

 

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