Mohegan
Tribal Gaming Authority d/b/a Mohegan Sun v. Thomas Wheeler
Claim Number: FA1004001316801
PARTIES
Complainant is Mohegan Tribal Gaming Authority d/b/a Mohegan
Sun (“Complainant”), represented by Kimberly S. Doubleday,
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is <mohegansunarenatickets.com>,
registered with Register.com.
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.
Dr. Katalin Szamosi
as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the
National Arbitration Forum electronically on April
1, 2010.
On April 1, 2010,
Register.com confirmed by e-mail to the
National Arbitration Forum that the <mohegansunarenatickets.com> domain
name is registered with Register.com and
that the Respondent is the current registrant of the name. Register.com
has verified that Respondent is bound by the Register.Com
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 April 6, 2010, the Forum served the Complaint and all
Annexes, including a Written Notice of the Complaint, setting a deadline of
April 26, 2010 by which Respondent could file a Response to the Complaint, via
e-mail to all entities and persons listed on Respondent’s registration as
technical, administrative, and billing contacts, and to
postmaster@mohegansunarenatickets.com.
Also on April 6, 2010, the Written Notice of the Complaint, notifying
Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to
all entities and persons listed on Respondent’s registration as technical,
administrative and billing contacts.
A timely Response was received and determined
to be complete on April 26, 2010.
On April 30, 2010,
pursuant to Complainant’s request to have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Dr. Katalin Szamosi as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be
transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant
alleges that it has rights in the MOHEGAN SUN mark by virtue of its federally
registered trademark with the United States Patent and Trademark Office
(“USPTO”) (Reg. No. 2,364,210 issued July 4, 2000).
Complainant argues that Complainant operates an
arena within its Mohegan Sun casino that is commonly known as the "Mohegan
Sun arena" as part of its casino operation.
Complainant alleges that Respondent's domain
name is both identical in part and confusingly similar to a trademark in which
Complainant has rights, especially in light of the fact that Complainant's
domain name for the company website is "mohegansun.com".
Complainant contends that Respondent has no
rights or legitimate interests in the domain name since
§
Respondent's domain name misleadingly diverts
consumers to various third-party commercial
websites that are also not affiliated with Complainant's company, with the strong possibility that such consumers
could believe they are at the official company
website;
§
in the event such consumers are misled into believing
they are on the official company website, the company trademark, reputation and
brand could be tarnished by the misleading information placed on Respondent's
website and links to third-party websites, which include misleading information
and links to sites that are in no way affiliated with Complainant and other
similar sites;
§
the website,
"mohegansunarenatickets.com" offers no bona fide goods or services
endorsed by or connected to Mohegan Sun and has no rights to do so.
Complainant argues that Respondent registered and uses the disputed
domain names in bad faith. In support of this Complainant contends that
§
Respondent's use of the domain name has intentionally
attempted to attract, for commercial gain, Internet users to Respondent's web
site and other third party on-line locations by creating a likelihood of
confusion with Complainant's mark and Complainant's company web site as to the
source of affiliation and endorsement of Respondent's web site;
§
a main
purpose of Respondent's site is to obtain personal information from consumers,
and possibly from misled customers of Complainant, as well as to direct such
Internet users to third-party web sites that also seek to obtain personal
information for unknown purposes, which have a high likelihood of reflecting negatively on Complainant's
trademark and reputation.
B. Respondent
Respondent submits the following arguments in the Response:
§
the Complainant does not
have any rights/trademarks for ticket broker services;
§
it has held the disputed domain name for five years
and is a broker in the secondary ticket sales business for events across the
country and alleges that it has been operating its secondary ticket sales
brokerage business for nineteen years;
§
its intentions are not to infringe on or attempt to
attract Complainant’s customers but only to resell tickets that Complainant
sells, which is a legal business;
§
Respondent states that if
Complainant wishes to by the domain name, they should make an offer for it.
FINDINGS
Complainant, Mohegan Tribal Gaming Authority d/b/a Mohegan Sun
is the owner of the MOHEGAN
SUN mark by virtue of its federally registered trademark with the United States
Patent and Trademark Office (“USPTO”) (Reg. No. 2,364,210 issued July 4, 2000).
The mark is registered and used in conjunction among others with casino
services. Complainant is the owner of the domain name <mohegansun.com>.
Respondent, Thomas Wheeler, is the owner of the domain name
<mohegansunarenatickets.com>. Respondent uses the disputed domain name
to operate a website where it advertises its services for selling tickets on
the secondary ticket market. On the website tickets are offered for events at
the Mohegan Sun Arena and also for events organized by different companies at different
venues.
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.
The
Panel finds that the invoked USPTO trademark registration (Reg. No. 2,364,210 issued July 4, 2000) is sufficient to prove
Complainant’s rights in the MOHEGAN SUN mark according to Policy ¶
4(a)(i).
The
Panel reviewed the Complainant's website at the <www.mohegansun.com>
domain name (which was referred to by the Complainant) and based on the
contents of the website the Panel accepts the Complainant's
allegation that Complainant operates an arena within the Mohegan Sun casino
that is commonly known as the "Mohegan Sun arena" as part of its
casino operation. With respect to this, the Panel finds that the word
"arena" is practically descriptive in relation to the concerned
services. The Panel also finds that since Respondent sells ticket on the
secondary ticket market, the same applies to the word "tickets".
Therefore, the Panel finds that the disputed
domain name’s addition of descriptive terms ("arena" and
"tickets") to Complainant’s mark fails to distinguish Complainant’s
mark from Respondent’s disputed domain name.
See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28,
2005) (finding that the additions of the term “batteries,” which described the
complainant’s products, and the generic top-level domain “.com” were
insufficient to distinguish the respondent’s <duracellbatteries.com> from
the complainant’s DURACELL mark).
Therefore, the Panel finds that Respondent’s
disputed domain name <mohegansunarenatickets.com>
is confusingly similar to Complainant’s MOHEGAN SUN mark pursuant to Policy ¶
4(a)(i).
The Panel finds that
Complainant made a prima facie case that Respondent lacks rights and
legitimate interest 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.
The Panel highlights
that the WHOIS information for the disputed domain name does not reflect that
Respondent is commonly known by the disputed domain name. Accordingly, the Panel finds that Respondent
is not commonly known by the disputed domain name and considers this fact as
evidence that Respondent lacks rights and legitimate interests in the disputed
domain name under Policy ¶ 4(c)(ii).
The Panel also finds that Respondent’s disputed domain name is able to
redirect Internet users likely seeking Complainant to third-party websites that
are unaffiliated with Complainant, since under the disputed domain the
Respondent offers and sells tickets not only for events at Mohegan Sun Arena
but for others events which are organized by third parties (probably by the
competitors of the Complainant). The Panel finds that
this can be considered as competitive use of the domain name.
Because of the
competitive nature of Respondent’s use of the disputed domain name, the Panel
finds that Respondent has not made a bona fide offering of goods or services
under Policy ¶ 4(c)(i) or a legitimate non-commercial
or fair use under Policy ¶ 4(c)(iii). See Bond
& Co. Jewelers, Inc. v.
The
Panel highlights that Respondent failed to prove its allegation that it has
used the disputed domain name for a long time and that it invested significant
costs in the development of a website under the disputed domain name, and did
not prove either that its customers know to find Respondent through the website
under the disputed domain name. Therefore, the Panel could not consider these
allegations when it assessed the Respondent's rights and/or legitimate
interests.
The Panel finds that, based on the disputed domain name (which is
confusingly similar to Complainant's mark), Internet users may be misled to
think that the Respondent's site is an official website for Complainant's
services. However, it is a fact that on its website the Respondent offers and
sells tickets not only for events at Mohegan Sun Arena but for other events
which are organized by third parties, thereby it may redirect Internet users
likely seeking Complainant to third-party websites that are unaffiliated with
Complainant. The Panels finds that Internet users subsequently arriving at
these third-party websites may be confused as to the affiliation between
Complainant and the third-party websites.
Furthermore, from the
facts and evidences submitted by the parties, the Panel finds that Respondent's
main business is selling tickets for various (cultural and sport) events, and
not only for events taken place at the Mohegan Sun Arena. With respect to this,
the use of the MOHEGAN SUN mark by Respondent in the disputed domain name can
misleadingly suggest to the relevant consumers that there is an exclusive
license or business relationship between Complainant and Respondent. The Panel
finds that such use of the MOHEGAN SUN mark by Respondent should have been made
under the license of Complainant. The Panel finds that this conduct of
Respondent can be evidence of bad faith.
Therefore, the Panel finds that Respondent’s use of Complainant’s mark
in the disputed domain name may divert Internet traffic and may cause confusion
among Internet users, and thereby can disrupt Complainant’s business and shows
bad faith registration and use pursuant to Policy ¶ 4(b)(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 <mohegansunarenatickets.com>
domain name be TRANSFERRED from Respondent to Complainant.
Dr. Katalin Szamosi,
Panelist
Dated: May 14, 2010
Click Here to return
to the main Domain Decisions Page
Click Here to return to our Home Page
National Arbitration Forum