MGM Resorts International v. Max Harlin
Claim Number: FA1902001828647
Complainant is MGM Resorts International (“Complainant”), represented by Michael J. McCue of Lewis Roca Rothgerber Christie LLP, Nevada, USA. Respondent is Max Harlin (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <parktheaterlasvegas.com>, registered with NameCheap, Inc..
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 5, 2019; the Forum received payment on February 5, 2019.
On February 6, 2019, NameCheap, Inc. confirmed by e-mail to the Forum that the <parktheaterlasvegas.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 February 8, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 28, 2019 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 February 8, 2019, 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 received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On March 1, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 name be transferred from Respondent to Complainant.
Complainant contends as follows:
Complainant, MGM Resorts International, is a global hospitality company operating resorts, restaurants, and entertainment venues.
Complainant has common law rights in the PARK THEATER mark as the mark has acquired secondary meaning.
Respondent’s <parktheaterlasvegas.com> domain name is confusingly similar because it incorporates the mark in its entirety, adding only a geographic term “Las Vegas” and a “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <parktheaterlasvegas.com> domain name because Respondent is not commonly known by the disputed domain name and is not authorized or permitted to use Complainant’s mark in any fashion. Additionally, Respondent fails to use the disputed domain names in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent also attempts to confuse and attract, for commercial gain, users to its website. Respondent uses the disputed domain name resolves to a webpage that implies a connection with Complaints and sells tickets affiliated with Complainant’s business. Finally, Respondent attempted to sell the disputed domain name to Complainant in response to Complainant’s cease and desist letter.
Respondent registered and uses the <parktheaterlasvegas.com> domain name in bad faith because Respondent uses the mark to confuse consumers and imply a connection with Complainant. Further, Respondent attempts to disrupt Complainant’s business by confusing users. Respondent also used a privacy service to register the domain name. Finally, Respondent had actual knowledge of Complainant’s mark and attempted to trade off Complainant’s goodwill.
Respondent failed to submit a Response in this proceeding.
Complainant has common law rights in the PARK THEATER mark.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in the PARK THEATER trademark.
Respondent uses the at-issue domain name to address a website that offers tickets for events at Complainant’s trademarked venue.
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.
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(f), 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 (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.”).
There is no requirement under the UDRP that a complainant must show registration of a trademark to demonstrate its rights therein. Rights may be shown by persuasive evidence of common law trademark rights in a mark. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark); see also Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA 1625750 (Forum July 17, 2015) (“Complainant does not claim to own a trademark registered with a governmental authority. However, Policy ¶ 4(a)(i) does not require such registration if a complainant can demonstrate having common law rights.”).
In the instant case Complainant proffers evidence of the PARK THEATER mark’s having acquired secondary meaning through Complainant’s public continuous use of such mark which includes a website advertising the Park Theater venue and its performance schedule. Significantly, Respondent failed to respond to both written demands by Complainant and the Complaint and made no objection to Complainant’s claims of trademark rights in PARK THEATER. Therefore, the Panel finds that PARK THEATER has acquired secondary meaning. Further, Complainant acquired such rights prior to Respondent’s registration of the at-issue domain name. Complainant thus has common law trademark rights in the PARK THEATER mark under the Policy and additionally such rights were acquired prior to Respondent’s August 2017 registration of the <parktheaterlasvegas.com> domain name. See Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA 1625750 (Forum July 17, 2015) (holding, “Complainant has provided evidence of secondary meaning by providing evidence of length of use in the mark; evidence of holding an identical domain name; media recognition; and promotional material/advertising (including letterhead and business cards); see also Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”).
Respondent’s domain name contains Complainant’s entire trademark less its space followed by the geographic term “Las Vegas” and all followed by the top level domain name “.com.” The differences between Respondent’s <parktheaterlasvegas.com> domain name and Complainant’s PARK THEATER trademark are insufficient to distinguish one from the other for the purposes of the Policy ¶ 4(a)(i). See Franklin Covey Co. v. franklincoveykorea, FA 1774660 (Forum Apr. 11, 2018) (finding that the <franklincoveykorea.com> domain name is confusingly similar to the FRANKLIN COVEY mark, as “[t]he addition of a geographic term and a gTLD do not negate confusing similarity between a domain name and a mark per Policy ¶ 4(a)(i).”).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Max Harlin” and the record before the Panel contains no evidence that otherwise tends to prove that Respondent is commonly known by the <parktheaterlasvegas.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the <parktheaterlasvegas.com> domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (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).
Respondent’s <parktheaterlasvegas.com> domain name addresses a webpage purporting to sell tickets to events at the Park Theater under the PARK THEATER mark. Thereby, Respondent attempts to trick website visitors into believing that Complainant is somehow connected to, affiliated with, or a sponsor of, the website and its referring domain name. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶ 4(a)(ii).
The at-issue domain name was registered and is being used in bad faith. As discussed below without limitation Policy ¶ 4(b) bad faith circumstances are present and there is additional non-Policy ¶ 4(b) evidence from which the Panel may independently conclude that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).
As mentioned above regarding rights and legitimate interests, Respondent uses the at-issue domain name to falsely represent a connection between the website that is ultimately addressed by the <parktheaterlasvegas.com> domain name, and Complainant. Respondent attempts to mislead internet users into believing the <parktheaterlasvegas.com> domain name is associated with Complainant, apparently for commercial gain. Through the <parktheaterlasvegas.com> website, Respondent hawks tickets for Complainant’s Park Theater performance venue. Using the confusingly similar domain name in this manner to capitalize on the goodwill in Complainant’s mark is disruptive to Complainant’s business and shows Respondent’s bad faith under Policy ¶ 4(b)(iii) and (iv). See Guess? IP Holder L.P. and Guess?, Inc. v. LI FANGLIN, FA 1610067 (Forum Apr. 25, 2015) (finding respondent registered and used the domain name in bad faith per Policy ¶ 4(b)(iii) because the respondent used the resolving website to sell the complainant’s products, using images copied directly from the complainant’s website); see also, Fanuc Ltd v. Mach. Control Servs., FA 93667 (Forum Mar. 13, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by creating a likelihood of confusion with the complainant's mark by using a domain name identical to the complainant’s mark to sell the complainant’s products).
Additionally, Respondent had actual knowledge of Complainant’s rights in the PARK THEATER mark when it registered <parktheaterlasvegas.com> as a domain name. Respondent’s actual knowledge is evident from the notoriety of Complainant’s trademark and from Respondent’s desire to sell tickets to Park Theater events via its <parktheaterlasvegas.com> website. Registering and using a confusingly similar domain name with knowledge of Complainant’s rights in such domain name shows Respondent’s bad faith registration and use pursuant to Policy ¶4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Finally, in response to a cease and desist letter to from Complainant Respondent offers to sell the confusingly similar domain name to Complainant for an amount in excess of Respondent’s out-of-pocket costs. Respondent’s offer is further evidence of Respondent’s bad faith registration and use of the <parktheaterlasvegas.com> domain name pursuant to Policy ¶ 4(b)(i). See CBS Broad. Inc. v. Worldwide Webs, Inc., D2000-0834 (WIPO Sept. 4, 2000) (“There is nothing inherently wrongful in the offer or sale of domain names, without more, such as to justify a finding of bad faith under the Policy. However, the fact that domain name registrants may legitimately and in good faith sell domain names does not imply a right in such registrants to sell domain names that are identical or confusingly similar to trademarks or service marks of others without their consent”); see also State Farm Mutual Automobile Insurance Company v. Yu Ke Rong, FA 1750476 (Forum Oct. 25, 2017) (finding bad faith where the respondent attempted to sell the domain name to the complainant for $800.00: “offers targeted specifically at a complainant may serve as evidence of bad faith under Policy ¶ 4(b)(i).”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <parktheaterlasvegas.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: March 7, 2019
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