MGM Resorts International v. paul persey / bookiebarn
Claim Number: FA1701001712190
Complainant is MGM Resorts International (“Complainant”), represented by Michael J. McCue, Nevada, USA. Respondent is paul persey / bookiebarn (“Respondent”), Costa Rica.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mgmwager.com>, registered with GoDaddy.com, LLC.
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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 12, 2017; the Forum received payment on January 12, 2017.
On January 13, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <mgmwager.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 January 16, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 6, 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@mgmwager.com. Also on January 16, 2017, 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 February 16, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl. V. Fink (Ret.) 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.
A. Complainant
Complainant, MGM Resorts International, operates as one of the world’s leading hospitality companies. In furtherance of its business, Complainant registered the MGM mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,060,489, registered Mar. 1, 1977). Respondent’s <mgmwager.com> domain name is confusingly similar, as Respondent incorporated all of Complainant’s MGM mark and added the generic term “wager” and the generic top-level domain (“gTLD”) “.com”.
Respondent has no rights or legitimate interests in <mgmwager.com>. The WHOIS identifies “Paul Persey” as registrant, which does not resemble the disputed domain name. Respondent is not commonly known as MGM, and has not been authorized to use Complainant’s MGM mark. Further, Respondent does not use the disputed domain names in connection with any bona fide offering of goods or services because the domain name takes users to a site with the words “Live Casino” and other images that would lead a user to believe it is a gambling site. Respondent tries to pass off as Complainant, because a Google Search Result for the mark “MGM” and “wager,” a common service provided by Complainant, directs users to the <mgmwager.com> domain name, potentially confusing people into believing Respondent is MGM.
Respondent registered and used <mgmwager.com> in bad faith. Respondent attempts to use Complainant’s mark for its own commercial gain by directing users to a site featuring advertisements for services highly similar to those performed by MGM. Because of the recognition, reputation, and goodwill of MGM’s widely-publicized MGM mark, Respondent must have had actual knowledge of Complainant’s rights in the marks at the time of registration.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <mgmwager.com> domain name.
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.”).
Complainant registered the MGM, mark with the USPTO (e.g., Reg. No. 1,060,489, registered March 1, 1977). Panels have consistently held that registration of a mark with the USPTO is sufficient to establish a registrant’s rights in a mark. 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.). Therefore, the Panel finds that Complainant has established rights in the MGM mark for the purposes of Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <mgmwager.com> is confusingly similar as it incorporates the MGM mark entirely while adding the generic or descriptive word “wager”. In similar circumstances no such changes have been found distinguishing. See Abbott Laboratories v. Miles White, FA 1646590 (Forum Dec. 10, 2015) (holding that the addition of descriptive terms, particularly terms that pertain to complainant’s business, do not adequately distinguish a disputed domain name from complainant’s mark under Policy ¶ 4(a)(i).). Panels have also held that adding the gTLD “.com” is irrelevant to an analysis of confusing similarity. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (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.”). Therefore, the Panel agrees that Respondent has not included elements in the domain name that would provide distinction from Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has proved this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests 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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant first argues that Respondent is not commonly known by the disputed domain name; it is not authorized to use Complainant’s MGM mark; and the WHOIS information listed the unrelated name “Paul Persey” as registrant. Prior Panels have used this as evidence of lacking rights and legitimate interests. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Accordingly, the Panel agrees that Respondent is not commonly known by <mgmwager.com> under Policy ¶ 4(c)(ii).
Complainant next argues that Respondent has not used the disputed domain name in connection with any bona fide offering of goods or services or a legitimate noncommercial or fair use. Use of a mark in connection with related services may be considered as evidence against a bona fide offering of goods or services or a legitimate noncommercial or fair use. See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute 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).”). Here, Complainant argues that the disputed domain name takes users to a log-in page with the MGM mark shown prominently on the site, and features images of a casino game with the words “Live Casino”, a service offered by Complainant. Therefore, the Panel agrees that this competitive use demonstrates a lack of any bona fide offering of goods or services or any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Similarly, Complainant argues that Respondent attempts to pass off as Complainant to benefit from the goodwill and reputation of the MGM mark. Passing off has been used by prior Panels to evince the lack of rights or legitimate interests. Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name). The Panel agrees that Respondent’s use is not a bona fide offering of goods or services or legitimate noncommercial or fair use.
Complainant has proved this element.
Complainant argues that Respondent has attempted to commercially benefit by using the MGM mark and redirecting users to a website that advertises services highly similar to MGM’s services. A Respondent’s efforts to commercially benefit by use of a domain name to redirect users to a website offering similar services can be evidence of bad faith. See Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum October 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”). The Panel agrees that Respondent attempted to commercially benefit from the confusing similarity of the disputed domain name, and therefore registered and used the domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant also contends that in light of the longstanding fame and notoriety of Complainant's MGM mark since 1973, Respondent must have registered the domain name with actual knowledge of Complainant's rights in the mark. The Panel agrees that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to an in competition with Complainant.”); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant’s mark and the content advertised on the respondent’s website was obvious, the respondent “must have known about the Complainant’s mark when it registered the subject domain name”). Thus, the Panel agrees that Respondent registered and used the <mgmwager.com> in bad faith.
Complainant has proved this element.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mgmwager.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.) Panelist
Dated: February 20, 2017
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