national
arbitration forum
DECISION
Mandalay Resort Group c/o MGM MIRAGE Operations, Inc.
v. Peter Cannon
Claim
Number: FA0908001281191
PARTIES
Complainant is Mandalay Resort Group c/o MGM MIRAGE
Operations (“Complainant”),
represented by John L. Krieger, of Lewis and Roca LLP, Nevada, USA. Respondent is Peter Cannon (“Respondent”), Washington,
USA.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <mandalaybayplayerstickets.com>,
registered with Enom, 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 August 24, 2009;
the National Arbitration Forum received a hard copy of the Complaint on August 25, 2009.
On August 25, 2009,
Enom, Inc. confirmed by e-mail to the
National Arbitration Forum that the <mandalaybayplayerstickets.com>
domain name is registered with Enom, Inc.
and that Respondent is the current registrant of the name. Enom, Inc.
has verified that Respondent is bound by the Enom,
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 August 26, 2009,
a Notification of Complaint and Commencement of Administrative Proceeding (the
"Commencement Notification"), setting a deadline of September 15, 2009
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@mandalaybayplayerstickets.com
by e-mail.
Having received no response from
Respondent, the National Arbitration Forum transmitted to the parties a
Notification of Respondent Default.
On September 21, 2009, 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.
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
<mandalaybayplayerstickets.com>
domain name is confusingly similar to Complainant’s MANDALAY BAY
mark.
2. Respondent
does not have any rights or legitimate interests in the <mandalaybayplayerstickets.com>
domain name.
3. Respondent
registered and used the <mandalaybayplayerstickets.com>
domain name in bad faith.
B.
Respondent failed to submit a formal Response in this proceeding. Respondent has submitted emails wherein he
concedes that the disputed domain name belongs to Complainant.
FINDINGS
Complainant, Mandalay Resort
Group c/o MGM MIRAGE Operations, Inc., holds a registration of the MANDALAY BAY mark (Reg. No. 2,275,015 issued August 31, 1999)
with the United States Patent and Trademark Office (“USPTO”). Complainant has used the mark in connection
with its hotel and casino in Las Vegas,
Nevada since 1999. Complainant also offers a “Players Club”
service to customers.
Respondent registered the <mandalaybayplayerstickets.com>
domain name on November
20, 2008. The website
resolving from the disputed domain name purports to be a website offering
Internet users the opportunity to purchase tickets for events and shows in Las Vegas, but, in fact,
is a directory site that redirects Internet uses to Complainant’s
competitors. Additionally, the background
of the resolving website is the same as the background Complainant uses on its
official website.
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
The Panel finds that Complainant has established rights in
the MANDALAY BAY mark under Policy ¶ 4(a)(i) via its registration of the mark with the USPTO (Reg.
No. 2,275,015 issued August
31, 1999). See Expedia, Inc. v. Tan, FA 991075
(Nat. Arb. Forum June 29, 2007)
(“As the [complainant’s] mark is registered with the USPTO, [the] complainant
has met the requirements of Policy ¶ 4(a)(i).”); Paisley Park Enters. v. Lawson, FA
384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had
established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through
registration of the mark with the USPTO).
The <mandalaybayplayerstickets.com>
domain name contains Complainant’s MANDALAY
BAY mark (omitting the
space), the words “players tickets,” and the generic
top-level domain (“gTLD”) “.com.” The
Panel finds that omission of a space from Complainant’s MANDALAY BAY
mark is irrelevant to an analysis under Policy ¶ 4(a)(i)
since spaces are not allowed characters in domain names. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007)
(finding that the elimination of spaces between terms and the addition of a
gTLD do not establish distinctiveness from the complainant’s mark under Policy
¶ 4(a)(i)). Likewise, the Panel finds that the addition of
a gTLD is also irrelevant to a Policy ¶ 4(a)(i)
analysis because a top-level domain is a required part of every domain
name. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb.
Forum May 27,
2003) (“The addition of a top-level domain is irrelevant when
establishing whether or not a mark is identical or confusingly similar, because
top-level domains are a required element of every domain name.”). Respondent’s addition of the words “players
tickets” does nothing to diminish the confusing similarity that results from
using Complainant’s MANDALAY
BAY mark. Complainant calls its frequent customer club
“Players Club,” so Respondent’s addition of “players
tickets” has an obvious relationship to Complainant’s business. The Panel finds that the <mandalaybayplayerstickets.com>
domain name is confusingly similar to Complainant’s MANDALAY BAY
mark under Policy ¶ 4(a)(i). See
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).”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Rights or Legitimate Interests
Pursuant to Policy
¶ 4(a)(ii), Complainant must first establish a prima
facie case that Respondent has no rights or legitimate interests in the <mandalaybayplayerstickets.com>
domain name. If the Panel finds that Complainant’s
allegations establish such a prima facie case, the burden shifts to
Respondent to show that it does indeed have rights or legitimate interests in
the disputed domain name pursuant to the guidelines in Policy ¶ 4(c). The Panel finds that Complainant’s
allegations are sufficient to establish a prima
facie case that Respondent has no rights or legitimate interests in the <mandalaybayplayerstickets.com>
domain name pursuant to Policy ¶ 4(a)(ii). Since
no response was submitted in this case, the Panel may presume that Respondent
has no rights or legitimate interests in the <mandalaybayplayerstickets.com> domain name.
However, the Panel will still examine the record in consideration of the
factors listed in Policy ¶ 4(c). See
Domtar, Inc. v. Theriault.,
FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a
complainant has made out a prima facie case
in support of its allegations, the burden shifts to respondent to show that it
does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the
Policy.”); see also 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. 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).”).
The Panel finds no evidence in the record suggesting that
Respondent is commonly known by the <mandalaybayplayerstickets.com>
domain name. Complainant asserts that
Respondent has no license or agreement with Complainant authorizing Respondent
to use the MANDALAY
BAY mark, and the WHOIS
information identifies Respondent as “Peter
Cannon.” Thus, Respondent has not
established rights or legitimate interests in the disputed domain name under
Policy ¶ 4(c)(ii).
See Tercent Inc. v. Lee Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly known by’ the disputed domain
name” as one factor in determining that Policy ¶ 4(c)(ii)
does not apply); see also Victoria’s Secret v.
Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (“Given the Complainants’
established use of their famous VICTORIA’S
SECRET marks it is unlikely that the Respondent is commonly known by either
[the <victoriasecretcasino.com> or <victoriasecretcasino.net>]
domain name.”).
Respondent is using the <mandalaybayplayerstickets.com>
domain name to provide links to third-party websites
offering tickets to Las Vegas shows, some of which directly compete with
Complainant’s services. Respondent’s use
of a domain name that is confusingly similar to Complainant’s MANDALAY
BAY mark to redirect Internet users interested in Complainant’s
services to websites that offer competition for those services is 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 under Policy ¶ 4(c)(iii). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002)
(finding that the respondent’s diversionary use of the complainant’s marks to
send Internet users to a website which displayed a series of links, some of
which linked to the complainant’s competitors, was not a bona fide
offering of goods or services); see also 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).
Additionally, the website resolving from the <mandalaybayplayerstickets.com>
domain name copies the background of Complainant’s official website, including
Complainant’s marks and logos displayed at the top of the resolving website. The Panel finds that this gives the
impression that Respondent’s website is part of Complainant’s official website
and business. Further, the Panel finds
that Respondent is passing itself off as Complainant. The Panel finds that this is further evidence
that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services
or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) and (iii), respectively. See Mortgage Research
Center LLC v. Miranda, FA
993017 (Nat. Arb. Forum July 9, 2007)
(“Because [the] respondent in this case is also attempting to pass itself off
as [the] complainant, presumably for financial gain, the Panel finds the
respondent is not using the <mortgageresearchcenter.org> domain name for
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).”); see
also Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003) (“It is neither a bona
fide offerings [sic] of goods or services, nor an example of a legitimate
noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of
a domain name, confusingly similar to a registered mark, attempts to profit by
passing itself off as Complainant . . . .”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Respondent is using the <mandalaybayplayerstickets.com>
domain name to host links offering tickets to events in Las Vegas and elsewhere. Complainant also offers tickets for events in
Las Vegas. The Panel infers that Respondent is
attempting to disrupt Complainant’s business by directly competing under a
confusingly similar domain name. The
Panel finds that this use of the disputed domain name is evidence of bad faith
under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v.
Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005)
(“Respondent is appropriating Complainant’s mark to divert Complainant’s
customers to Respondent’s competing business.
The Panel finds this diversion is evidence of bad faith registration and
use pursuant to Policy ¶ 4(b)(iii).”); see also Jerie v. Burian,
FA 795430 (Nat. Arb. Forum Oct. 30, 2006) (concluding that the respondent
registered and used the <sportlivescore.com> domain name in order to
disrupt the complainant’s business under the LIVESCORE mark because the
respondent was maintaining a website in direct competition with the
complainant).
Additionally, the Panel finds that due to the confusingly
similar nature of the disputed domain name and Respondent’s use of
Complainant’s mark and website background Internet users are likely to become
confused about Complainant’s association or sponsorship of the resolving
website. The Panel infers that
Respondent is attempting to profit from this confusion. Therefore the Panel finds that Respondent registered
and used the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See Dell Inc. v. Innervision Web Solutions, FA 445601
(Nat. Arb. Forum May 23, 2005) (finding evidence of bad faith under Policy
¶ 4(b)(iv) where the respondent was using the <dellcomputerssuck.com>
domain name to divert Internet users to respondent’s website offering competing
computer products and services); see also
AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that
the respondent registered and used the disputed domain name in bad faith
pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining
from the likelihood of confusion between the complainant’s AIM mark and the
competing instant messaging products and services advertised on the
respondent’s website which resolved from the disputed domain name).
On the website
resolving from the disputed domain name, Respondent copied the background
Complainant used on its official website and uses Complainant’s MANDALAY BAY mark at the top of the page, giving the impression that the competing
services are actually those of Complainant when they are not. The Panel finds that Respondent is attempting
to pass itself off as Complainant. The
Panel finds that the act of Respondent passing itself off as Complainant is
evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding
that the respondent's use of <monsantos.com> to misrepresent itself as
the complainant and to provide misleading information to the public
supported a finding of bad faith); see
also Am. Int’l Group, Inc. v. Busby,
FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the disputed domain name was
registered and used in bad faith where the respondent hosted a website that
“duplicated Complainant’s mark and logo, giving every appearance of being
associated or affiliated with Complainant’s
business . . . to perpetrate a fraud upon individual
shareholders who respected the goodwill surrounding the AIG mark”).
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 <mandalaybayplayerstickets.com>
domain name be TRANSFERRED from Respondent to Complainant.
The
Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: October 2, 2009
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