MGM Resorts International v. Modern Empire Internet Ltd.
Claim Number: FA1201001422265
Complainant is MGM Resorts International (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Modern Empire Internet Ltd. (“Respondent”), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <belaggio.com> and <mandalabay.com>, registered with Fabulous.com Pty Ltd.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 3, 2012; the National Arbitration Forum received payment on January 3, 2012.
On January 3, 2012, Fabulous.com Pty Ltd confirmed by e-mail to the National Arbitration Forum that the <belaggio.com> and <mandalabay.com> domain names are registered with Fabulous.com Pty Ltd and that Respondent is the current registrant of the names. Fabulous.com Pty Ltd has verified that Respondent is bound by the Fabulous.com Pty Ltd 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 January 4, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 24, 2012 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@belaggio.com, postmaster@mandalabay.com. Also on January 4, 2012, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 27, 2012,ursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <belaggio.com> domain name is confusingly similar to Complainant’s BELLAGIO mark.
Respondent’s <mandalabay.com> domain name is confusingly similar to Complainant’s MANDALAY BAY mark.
2. Respondent does not have any rights or legitimate interests in the <belaggio.com> and <mandalabay.com> domain names.
3. Respondent registered and used the <belaggio.com> and <mandalabay.com>domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, MGM Resorts International, is a global hospitality company that operates destination resort brands such as Bellagio, MGM Grand, Mandalay Bay and The Mirage. Complainant’s main business is the ownership and operation of casino resorts, including offering gaming, hotel, dining, entertainment, retail and other resort services. Complainant owns numerous trademark registrations for the BELLAGIO and MANDALAY BAY marks with the United States Patent and Trademark Office (“USPTO”).
USPTO
MANDALAY BAY
Reg. No. 2,275,016 registered August 10, 2009
Reg. No. 2,901,395 registered November 9, 2004
Reg. No. 2,275,015 registered August 31, 1999
BELLAGIO
Reg. No. 3,725,615 registered December 15, 2009
Reg. No. 2,959,168 registered June 7, 2005
Reg. No. 2,915,992 registered January 4, 2005
Reg. No. 2,232,486 registered March 16, 1999
Reg. No. 2,232,487 registered March 16, 1999
Respondent, Modern Empire Internet Ltd., registered the <belaggio.com> domain name on May 11, 2002, and the <mandalabay.com> domain name on July 19, 2003. The disputed domain names resolve to websites with generic links to third-party websites, some of which compete with Complainant’s business.
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.
Complainant owns registered trademarks for the MANDALAY BAY and BELLAGIO marks. The Panel finds that Complainant has established rights in the MANDALAY BAY and BELLAGIO marks pursuant to Policy ¶4(a)(i) through its trademark registrations with the USPTO. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Enter. Rent-A-Car Co. v. David Mizer Enters., Inc., FA 622122 (Nat. Arb. Forum Apr. 14, 2006) (finding that the complainant’s registration of the ENTERPRISE, ENTERPRISE RENT-A-CAR, and ENTERPRISE CAR SALES marks with the USPTO satisfied the requirement of demonstrating rights in the mark under consideration pursuant to Policy ¶ 4(a)(i)). Previous panels have found that to establish rights in a mark, a complainant need not register the mark in the country in which Respondent resides or operates. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Based on these previous decisions, this Panel concludes that Complainant has adequately shown that it owns rights to the MANDALAY BAY and BELLAGIO marks in accordance with ¶ 4(a)(i).
Complainant argues that Respondent’s <belaggio.com> domain name is confusingly similar to Complainant’s BELLAGIO mark. Respondent’s <belaggio.com> domain name differs by only two characters from Complainant’s marks with the added generic top-level domain (“gTLD”) “.com.” See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks); see also Valpak Direct Mktg. Sys., Inc. v. Manila Indus., Inc., D2006-0714 (WIPO Aug. 17, 2006) (finding the <vallpak.com> domain name to be confusingly similar to the VALPAK mark under Policy ¶ 4(a)(i).); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Accordingly, the Panel holds that Respondent’s <belaggio.com> domain name is confusingly similar to Complainant’s BELLAGIO mark for purposes of Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <mandalabay.com> domain name is confusingly similar to Complainant’s MANDALAY BAY mark because it differs by only a single character from Complainant’s mark with the added generic top-level domain (“gTLD”) “.com”. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark); see also Granarolo S.p.A. v. Dinoia, FA 649854 (Nat. Arb. Forum Apr. 17, 2006) (finding that the <granarolo.com> domain name was confusingly similar to the complainant’s registered G GRANAROLO mark). Further, the <mandalabay.com> domain name also removes the space that is present in Complainant’s MANDALAY BAY mark. 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)); see also U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”). Accordingly, the Panel also finds that Respondent’s <mandalabay.com> domain name is confusingly similar to Complainants MANDALAY BAY mark for purposes of Policy ¶4(a)(i).
The Panel concludes that Complainant has proven Policy ¶ 4(a)(i).
Complainant argues that Respondent lacks rights and legitimate interests in the <belaggio.com> and <mandalabay.com> domain names. Policy ¶ 4(a)(ii) states that Complainant has the burden of presenting a prima facie case against Respondent before Complainant can shift the burden of proving rights and legitimate interests in the disputed domain name to Respondent. Based on the evidence provided the Panel finds that Complainant has made a prima facie case. Respondent has offered nothing in response, however, and offers no counter evidence. As a result the Panel will assume that Respondent does not have rights or legitimate interest in the disputed domain name. However, the Panel will examine the record to determine if Respondent has rights or legitimate interest in the <belaggio.com> and <mandalabay.com> domain names. 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 Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”).
Complainant argues that Respondent is not commonly known by the <belaggio.com> or <mandalabay.com> domain names. According to Respondent’s WHOIS information, there is no connection between Respondent and either the <belaggio.com> or the <mandalabay.com> domain names or Complainant’s MANDALAY BAY and BELLAGIO marks. Complainant has also not authorized Respondent to use the MANDALAY BAY and BELLAGIO marks. Thus the Panel finds no evidence that Respondent is commonly known by the <belaggio.com> or <mandalabay.com> domain names pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); 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 names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Complainant argues that Respondent is using the domain names to redirect Internet users to websites featuring pay-per-click links to third-party websites, some of which directly compete with Complainant’s business. These sites compete with Complainant’s business by offering similar products and services as Complainant. Complainant submits screen shots of the resolving websites which shows links with titles such as “The Bellagio Las Vegas,” “Hotel Reservations,” “Bellagio Fountains,” “Vegas Nightlife,” “Mandalay Bay Las Vegas,” “Mandalay Bay Conventions,” “Mandalay Bay Deals,” etc. The Panel presumes the displayed links are pay-per-click links. The Panel finds that the use of the disputed domain name to feature pay-per-click links for competing products 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 Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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 Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds 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).”).
Complainant argues that Respondent is capitalizing on a confusingly similar misspelling of Complainant’s MANDALAY BAY and BELLAGIO marks to misdirect Internet users seeking Complainant’s online business. The Panel finds this constitutes the practice of typosquatting, which is evidence that Respondent lacks rights and legitimate interest in the disputed domain name under Policy ¶4(a)(ii). See Guinness UDV N. Am., Inc. v. Dallas Internet Servs., D2001-1055 (WIPO Dec. 12, 2001) (finding the <smirnof.com> domain name confusingly similar to the complainant’s SMIRNOFF mark because merely removing the letter “f” from the mark was insignificant); see also Neiman Marcus Group, Inc. v. Party Night, Inc., FA 114546 (Nat. Arb. Forum July 23, 2002) (finding that the <neimanmacus.com> domain name was a simple misspelling of the complainant’s NEIMAN MARCUS mark and was a classic example of typosquatting, which was evidence that the domain name was confusingly similar to the mark).
The Panel concludes that Complainant has proven Policy ¶4(a)(ii).
Respondent’s disputed domain names resolve to a website containing links to third-party websites, some of which compete with Complainant. It is clear that this activity disrupts Complainant’s business, as Internet users desiring Complainant’s products will be directed to sites featuring competing products as well as Complainant’s services. The Panel finds that this disruption of Complainant’s business and diversion of Internet users to Complainant’s competitors shows bad faith registration and use under Policy ¶4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)).
Complainant also argues that Respondent has shown bad faith registration and use according to Policy ¶ 4(b)(iv). Respondent has done this by creating a likelihood of confusion with Complainant’s mark through typosquatting behavior. Respondent’s resolving websites feature links connecting users to other sites competing with Complainant. The sites also display Complainant’s mark spelled correctly (even though the domain name is a misspelled version of the same mark). The Panel agrees with Complainant and finds that Respondent acts in bad faith under Policy ¶ 4(b)(iv) when attracting consumers and financially profiting by creating a likelihood of confusion with Complainant’s mark. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); 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).”).
The Panel has previously concluded that Respondent is engaged in the practice of typosquatting through the use of the confusingly similar disputed domain name. The Panel finds this practice of typosquatting is evidence by itself of bad faith registration and use under Policy ¶4(a)(iii). See Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (“Respondent's registration of the domain names in dispute constitutes bad faith because the domain names are merely typosquatted versions of the [complainant’s] IMDB mark.); see also Bank of Am. Corp. v. Tak Ume domains for sale, FA 154528 (Nat. Arb. Forum May 19, 2003) (“Respondent’s registration and use of the disputed domain name demonstrates a practice commonly referred to as ‘typosquatting.’ This practice diverts Internet users who misspell Complainant’s mark to a website apparently owned by Respondent for Respondent’s commercial gain. ‘Typosquatting’ has been recognized as evidencing bad faith registration and use under Policy ¶ 4(b)(iv).”).
The Panel finds the elements of Policy ¶4(a)(iii) have been met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <belaggio.com> and <mandalabay.com> domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: January 28, 2012
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