Mohegan Tribal Gaming Authority d/b/a Mohegan Sun v. Thomas Wheeler
Claim Number: FA1004001316801
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.
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.
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 email@example.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.
Complainant requests that the domain name be transferred from Respondent to 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.
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.
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.
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).
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,
Dated: May 14, 2010
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