Wynn Resorts Holdings, LLC v. Michael Paganelli
Claim Number: FA1212001476488
Complainant is Wynn Resorts Holdings, LLC (“Complainant”), represented by Eric D. Gelwicks of Owen, Wickersham & Erickson, P.C., California, USA. Respondent is Michael Paganelli (“Respondent”), Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <wynnboston.com>, <mawynn.com>, <masswynn.com>, and <wynnfox.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Carol Stoner, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 18, 2012; the National Arbitration Forum received payment on December 18, 2012.
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On December 18, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <wynnboston.com>, <mawynn.com>, <masswynn.com>, and <wynnfox.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 21, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 10, 2013 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@wynnboston.com, postmaster@mawynn.com, postmaster@masswynn.com, and postmaster@wynnfox.com. Also on December 21, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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.
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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
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A timely Response was received and determined to be complete on January 4, 2013.
On January 10, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Carol Stoner, Esq., as Panelist.
Complainant requests that the domain names of <wynnboston.com>, <mawynn.com>, <masswynn.com>, and <wynnfox.com>, registered with GoDaddy.com, LLC, be transferred from Respondent to Complainant.
A. Complainant
Complainant has established rights in the WYNN mark. Complainant is a Nevada corporation that owns and operates resort hotel casinos. Complainant is the owner of many United States Patent and Trademark Office (“USPTO”) registrations for the WYNN mark (e.g., Reg. No. 2,977,861 registered July 26, 2005). See Complainant’s Annex B.
The <wynnboston.com>, <mawynn.com>, <masswynn.com>, and <wynnfox.com> domain names are confusingly similar to the WYNN mark. Respondent uses the WYNN mark in its entirety along with the Massachusetts-related geographic identifiers “boston,” “ma,” “mass,” and “fox” and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the disputed domain names.
Respondent is not connected to or affiliated with Complainant in any way, and Complainant has not licensed or otherwise authorized Respondent to use the WYNN mark.
The disputed domain names resolve to parked webpages. The websites contain links to domain name registration and hosting services from which Respondent presumably derives revenue.
Respondent is waiting and willing to dispose of the disputed domain names if the right buyer inquires. There is a message displayed on the disputed domain names websites that states “Want to buy this domain? Let us help.”
The disputed domain names were registered and are used in bad faith.
Respondent is attempting to sell the disputed domain name. There is a message displayed on the disputed domain websites that states “Want to buy this domain? Let us help.”
Respondent is using the <wynnboston.com>, <mawynn.com>, <masswynn.com>, and <wynnfox.com> domain names to take advantage of the significant goodwill surrounding the WYNN mark so that it may commercially gain.
Respondent registered the <wynnboston.com>, <mawynn.com>, <masswynn.com>, and <wynnfox.com> domain names with an opportunistic attempt to capitalize on the international notoriety of the WYNN marks. Respondent registered the <wynnboston.com>, <mawynn.com>, <masswynn.com>, and <wynnfox.com> domain names on December 5, 2011. Respondent registered the domain names within a day or so of major public announcements about Complainant’s gaming business in Massachusetts.
B. Respondent
Respondent’s registration of the <mawynn.com>, <masswynn.com>, and <wynnfox.com> domain names expired on December 5, 2012. Respondent allowed the domains to expire, having no interest in retaining them, and for some reason the Registrar continued to associate Respondent with the domains.
The <wynnboston.com> domain name is set to expire on January 12, 2013, and Respondent similarly has no interest in renewing this domain name.
Respondent consents to the transfer of each of the <wynnboston.com>, <mawynn.com>, <masswynn.com>, and <wynnfox.com> domain names.
Preliminary Issue: Consent to Transfer
Respondent stated in his Response that he allowed his registrations of the <mawynn.com>, <masswynn.com>, and <wynnfox.com> domain names to expire on December 5, 2012, and that he did not seek to renew these registrations. His statements are supported by Panel’s review of a series of e-mails from GoDaddy.com, which Respondent attached as Annex A to his Response. Respondent has no duty to explain why GoDaddy continued to associate these domains with Respondent, at the time of the filing of the Complaint on December 18th, 2012.
Respondent similarly stated in his Response that the <wynnboston.com> domain name is set to expire on January 12, 2013, and that he has no intended interest in renewing this domain name. The near expiration date of <wynnboston.com> is also noted by Panel’s review of Respondent’s Annex A.
Respondent ratified this course of domain name expirations in his Response by offering his consent to transfer to the Complainant, each of the following domain names: that is, <wynnboston.com>; <mawynn.com>; <masswynn.com>; and <wynnfox.com>.
However, after the initiation of this proceeding, GoDaddy.com, LLC placed a hold on Respondent’s account; and therefore, Respondent could not transfer the disputed domain names during the pendency of this proceeding.
In the present instance, where the record does not show Respondent to be a serial domain name transgressor and, where also, Respondent has voluntarily disposed of his domain names through the expiration process, Panel believes it to be expedient, and in
the best interests of justice, to forego the traditional UDRP analysis and to order forthwith, the transfer of the disputed domain names of <wynnboston.com>, <mawynn.com>, <masswynn.com>, and <wynnfox.com> to Complainant.
See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the
parties have both asked for the domain name to be transferred to the Complainant . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).
Panel recognizes the common requests of both Complainant and Respondent to transfer the disputed domain names to Complainant. As Panel is not required in such a dual consent instance to make the traditional UDRP analysis, Panel summarily finds that Respondent shall be required to transfer the domain names of <wynnboston.com>, <mawynn.com>, <masswynn.com>, and <wynnfox.com> to Complainant.
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."
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.
Congruent with the above cited Findings, Panel is not mandated to analyze Paragraph 4(a) of the Policy and the requisite elements of Identical and/or Confusingly Similar; Rights or Legitimate Interests; and Registration and Use in Bad Faith.
As Respondent’s consent is of record, Panel declines to analyze the elements, and proceeds to conclude that relief shall be GRANTED.
Accordingly, it is Ordered that the <wynnboston.com>, <mawynn.com>, <masswynn.com>, and <wynnfox.com> domain names be TRANSFERRED from Respondent to Complainant.
Carol Stoner, Esq., Panelist
Dated: January 11, 2013
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