Bellagio, LLC and Mirage Resorts, Incorporated v. Domain Admin / Whois Privacy Corp.
Claim Number: FA1612001707106
Complainant is Bellagio, LLC and Mirage Resorts, Incorporated (“Complainant”), represented by Michael J. McCue, Nevada. Respondent is Domain Admin / Whois Privacy Corp. (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <casino-bellagio.com>, registered with TLD Registrar Solutions Ltd..
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.
Natalia Stetsenko as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 12, 2016; the Forum received payment on December 12, 2016.
On December 15, 2016, TLD Registrar Solutions Ltd. confirmed by e-mail to the Forum that the <casino-bellagio.com> domain name is registered with TLD Registrar Solutions Ltd. and that Respondent is the current registrant of the name. TLD Registrar Solutions Ltd. has verified that Respondent is bound by the TLD Registrar Solutions 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 December 19, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 9, 2017 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@casino-bellagio.com. Also on December 19, 2016, 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.
A timely Response was received and determined to be complete on December 20, 2016.
On December 25, 2016 an Additional Submission was received from Complainant, which was filed in a timely manner according to the Forum's Supplemental Rule #7.
On December 27, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Natalia Stetsenko 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant has rights in the BELLAGIO mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,232,486, registered on March 16, 1999). Respondent’s <casino-bellagio.com> domain name is confusingly similar to the BELLAGIO mark because it contains the mark along with the descriptive term “casino” and the generic top-level domain (“gTLD”) “.com.”
Respondent is not commonly known by the <casino-bellagio.com> domain name as it has not been authorized to use the BELLAGIO mark and because the available WHOIS information identifies “Domain Admin / Whois Privacy Corp.” as Registrant. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website features a subdomain that is used to pass off as Complainant through the display of Complainant’s business related address and phone number along with the promotion of online casino services.
Respondent uses the <casino-bellagio.com> domain name in bad faith because the resolving website creates a likelihood of confusion by featuring advertisement for services related to Complainant’s services. Respondent registered the <casino-bellagio.com> domain name in bad faith because it did so with actual knowledge of Complainant’s rights in the BELLAGIO mark.
B. Respondent
Complainant has not provided documentation of ownership for the BELLAGIO mark.
Respondent’s use of the <casino-bellagio.com> domain name is based on the film “Ocean’s 11.”
Respondent does not use the <casino-bellagio.com> domain name to engage in any form of disruption.
C. Additional Submissions
In their Additional Submission Complainant notes that in response to receiving service of the Complaint, Respondent has submitted several informal filings and has sent threats to Complainant’s Director of Intellectual Property and Complainant’s Intellectual Property counsel.
All Respondent’s communications lack any arguments rebutting Complainant’s arguments related to the three elements of the Policy.
Furthermore, Respondent admitted that it had attempted to trade off the goodwill and reputation of Complainant. Particularly, in his reply email to the notice of complaint, Respondent noted “materials for the site, I took on the basis of the movie Ocean’s 11.” See Exhibit 9 to Complainant’s Additional Submission.
Respondent lacks rights or legitimate interests in the disputed domain and uses the domain in bad faith because by confirming that it offers the same services offered by Complainant, namely, casino services, through a website and domain name based on Complainant’s Bellagio resort, Respondent has admitted that it knew of Complainant’s BELLAGIO mark and that it has attempted to trade off the goodwill and reputation associated with Complainant and its BELLAGIO mark.
Preliminary Issue: Multiple Complainants
In the instant proceedings, there are two Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
The complaint in this matter was brought by two Complainants: Bellagio, LLC and Mirage Resorts, Incorporated. Complainant claims that Bellagio, LLC operates the Bellagio resort hotel and casino in Las Vegas, Nevada and that Mirage Resorts, Incorporated is the parent company of Bellagio, LLC.
Although the case records do not contain direct evidence of affiliation between the companies, as follows from Annex 2 to complaint, both companies hold rights in the marks incorporating the BELLAGIO sign constituting a part of the disputed domain name. Particularly, Mirage Resorts, Incorporated is the holder of US Federal registration no. 4,058,511 for the word mark “BELLAGIO” registered for the services in class 41, while Bellagio, LLC is the holder of the US federal registration no. 2,771,155 for the combination mark “BELLAGIO & dev.” registered in classes 41, 43 and 44. Moreover, Bellagio, LLC is the entity whose trade name incorporates the mark “BELLAGIO”.
The Panel thus finds the evidence in the Complaint establishes a sufficient nexus between the Complainants, this allowing the Panel to treat them as a single entity in this proceeding. Previous panels have generally interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. Particularly previous panels found that a sufficient nexus between two complainants existed in cases where both parties held rights in trademarks contained within the disputed domain names. See Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003).
Complainant is the holder of several federal trademark registrations for the BELLAGIO mark on the Principal Register of the USPTO, particularly US registration no. 2,232,486, registered on March 16, 1999; US registration no. 2,771,155 for the combination mark “BELLAGIO & dev.”, registered on October 7, 2003 and US registration no. 4,058,511 for the word mark “BELLAGIO”, registered on November 22, 2011.
Complainant operates the Bellagio resort hotel and casino in Las Vegas, Nevada. The Bellagio has been featured in the media throughout the United States and around the world, particularly in movies, such as Ocean’s 11.
Respondent registered the disputed domain name on January 20, 2015.
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.
Complainant has established rights in the BELLAGIO mark through its registrations with the USPTO, particularly US registration no. 2,232,486, registered on March 16, 1999; US registration no. 2,771,155 for the combination mark “BELLAGIO & dev.”, registered on October 7, 2003 and US registration no. 4,058,511 for the word mark “BELLAGIO”, registered on November 22, 2011 for the services related to the business of operating a resort hotel and casino. See Exhibit 2. Previous panels have found that Complainants had rights in a mark in question based on registrations with the USPTO. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office.).
The domain name in question incorporates the Complainant’s “BELLAGIO” mark in its entirety and is simply adding a hyphen, the term “casino” and the gTLD “.com”. Previous panels have found that adding a gTLD and a hyphen does not affect the confusing similarity test under the Policy. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy).
Furthermore, the term “casino” is descriptive, since it directly refers to the type of services provided under the name. Therefore, this term is equally inconsequential in the assessment of confusing similarity. See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark).
Respectively, the Panel finds that Respondent’s <casino-bellagio.com> domain name is confusingly similar to the BELLAGIO mark, and that Complainant has satisfied the requirements under Policy ¶ 4(a)(i).
The available WHOIS information identifies “Domain Admin / Whois Privacy Corp.” as Registrant. Respectively, has not been commonly known by the “Casino Bellagio”name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
The Panel further finds that Respondent fails to use the <casino-bellagio.com> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use. The resolving website features a sub-domain, <ru.casion-bellagio.com> used to pass off as Complainant through the display of Complainant’s business related address and phone number along with the promotion of online casino services. As follows from Exhibits 3 and 4 of the complaint, the website features images of Complainant’s hotel and advertisement for the chance to win a trip to such hotel, which further proves that the <casino-bellagio.com> domain name is being used in an attempt to pass off as Complainant. Previous panels have found attempts of registrants to pass off as trademark holders to not qualify for a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Kmart of Mich., Inc. v. Cone, FA 655014 (Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself off as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website).
Respectively, the Panel finds that Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Respondent has not provided any evidence to the contrary. Particularly, Respondent’s allegations that his use of the <casino-bellagio.com> domain name is based on the film “Ocean’s 11” are not supported by any evidence. Instead, the use demonstrated on the website to which the domain name resolves is a clear example of Respondent’s passing off as Complainant.
The examples of use of the domain name <casino-bellagio.com> by Respondent, particularly those that may be seen on the screenshots from the Respondent’s website provided in Exhibits 3 and 4 to the complaint, featuring advertisements for services related to Complainant’s services, serve as evidence that Respondent is attempting to profit through the creation of confusion with Complainant. Respectively, the Panel finds that Respondent uses the <casino-bellagio.com> domain name in bad faith under Policy ¶ 4(b)(iv). See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”).
Furthermore, the Panel finds that the case records contain sufficient evidence showing that Respondent registered the disputed domain name with actual knowledge of the Complainant’s mark and for the purpose of profiting from the goodwill and reputation attached to the BELLAGIO trademark. Particularly, in his informal response to the complaint, Respondent noted that he had simply transferred the disputed domain name from the <.ru> to the <.com> domain in response to the judgment of a Russian court restraining him from the use of his domain name, since such use violated the Russian laws prohibiting gambling services. However, as may be noted from the text of the court judgment dated September 30, 2014, attached to the response, the court issued an injunction related to the <bilagio.ru> domain name. However, it is not the “casino-bilagio.com” domain name (although still confusingly similar to Complainant’s famous mark) that was chosen by Respondent for registration, but the domain name incorporating the Complainant’s mark. Moreover, in his response, Respondent further admitted the high degree of fame of the Complainant’s mark.
Previous panels have found that use which intentionally trades on the fame of another cannot constitute a bona fide offering of goods and services. See Bayerische Motoren Werke AG v. Masakazu/Living By Clue Co., Ltd., WIPO Case no. DMW2015-0001 (WIPO, September 22, 2015). See also Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
Therefore, it is found that Complainant has satisfied the requirements under Policy ¶ 4(a)(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 <casino-bellagio.com> domain name be TRANSFERRED from Respondent to Complainant.
Natalia Stetsenko, Panelist
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