MGM Resorts International v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA1901001827626
Complainant is MGM Resorts International (“Complainant”), represented by Michael J. McCue of Lewis Roca Rothgerber Christie LLP, Nevada, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mgmrewards.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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 30, 2019; the Forum received payment on January 30, 2019.
On January 30, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <mgmrewards.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 31, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 20, 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 postmaster@mgmrewards.com. Also on January 31, 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 February 25, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (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 is one of the world’s leading global hospitality companies, owning and operating more than twenty resort properties throughout the United States and abroad. Complainant has rights in the MGM mark based on its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,534,227, registered Jan. 29, 2002). Respondent’s <mgmrewards.com> domain name is confusingly similar to Complainant’s mark as Respondent adds the descriptive term “rewards” and the generic top-level domain (“gTLD”) “.com” to Complainant’s fully incorporated mark.
Respondent lacks rights or legitimate interest in the <mgmrewards.com> domain name. Respondent is not commonly known by the disputed domain name nor is Respondent authorized to use the MGM mark. Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Respondent instead displays pay-per-click links related to Complainant’s business on the resolving webpage. Further, Respondent attempts to impersonate Complainant and cause customers to mistakenly believe the domain name and Respondent’s associated online activities are affiliated with Complainant.
Respondent registered and uses the <mgmrewards.com> domain name in bad faith because Respondent attempts disrupt Complainant’s business by displaying pay-per-click links on the resolving webpage. Additionally, Respondent attempts to divert Internet users searching for Complainant’s business to Respondent’s website for commercial gain. Finally, based on the fame of Complainant’s MGM mark, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is one of the world’s leading global hospitality companies, owning and operating more than twenty resort properties throughout the United States and abroad. Complainant has rights in the MGM mark based on its registration with the USPTO (e.g. Reg. No. 2,534,227, registered Jan. 29, 2002). Respondent’s <mgmrewards.com> domain name is confusingly similar to Complainant’s mark.
Responded registered the <mgmrewards.com> domain name on December 3, 2018
Respondent lacks rights or legitimate interests in the <mgmrewards.com> domain name. Respondent displays pay-per-click links related to Complainant’s business on the resolving webpage. Further, Respondent attempts to impersonate Complainant and cause customers to mistakenly believe the domain name and Respondent’s associated online activities are affiliated with Complainant.
Respondent registered and uses the <mgmrewards.com> domain name in bad faith.
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 has rights in the MGM mark under Policy ¶ 4(a)(i). based on its registration of the mark with the USPTO. See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).”).
Respondent’s <mgmrewards.com> domain name is confusingly similar to Complainant’s MGM mark because Respondent merely adds the descriptive term “rewards” and the “.com” gTLD to Complainant’s fully incorporated mark.
Respondent lacks rights or legitimate interests in the <mgmrewards.com> domain name.
Complainant has not authorized Respondent to use Complainant’s mark. The WHOIS information for the disputed domain name lists the registrant as “Carolina Rodrigues.” Where a response is lacking, WHOIS information can be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). Therefore, Respondent is not commonly known by the disputed domain name.
Respondent fails to use the <mgmrewards.com> domain name to make a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). Respondent uses the disputed domain name to display pay-per-click links in competition with Complainant’s rewards program. Using a disputed domain name to display links in competition with a complainant is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel finds that Respondent’s use of the <cheepcaribbean.com> name to promote links in competition with Complainant’s travel agency services does not fall within Policy ¶ 4(c)(i)’s bona fide offering of goods or services, nor does it amount to a legitimate noncommercial or fair use described in Policy ¶ 4(c)(iii).”).
Respondent also attempts to impersonate Complainant and causes customers to mistakenly believe the domain name and Respondent’s associated online activities are affiliated with Complainant. Respondent’s use of the disputed domain name to divert Internet users and confuse them into believing an affiliation exists between Respondent and Complainant is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (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).”).
Respondent registered and uses the <mgmrewards.com> domain name in bad faith.
Respondent displays pay-per-clink links to competitors of Complainant on the resolving webpage. Using a disputed domain name to link to competitors of a complainant while presumably profiting from pay-per-click links or referral fees demonstrates bad faith registration and use under Policy ¶¶ 4(b)(iii) and/or (iv). See Transamerica Corporation v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1798316 (Forum Aug. 20, 2018) (“Respondent's use of the domain name to link to competitors of Complainant, presumably generating pay-per-click or referral fees for Respondent, is indicative of bad faith under paragraphs 4(b)(iii) and 4(b)(iv).”).
Respondent’s use of a confusingly similar disputed domain name to divert Internet users and confuse them into believing an affiliation exists between Respondent and Complainant is evidence of bad faith under Policy ¶ 4(b)(iv). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (the respondent’s use of a confusingly similar domain name to profit from the confusion as to the possibility of the complainant’s association with the domain name is bad faith under Policy ¶ 4(b)(iv)).
Finally, as Respondent had actual knowledge of Complainant’s rights in the MGM mark at the time of registration, Respondent registered and uses the <mgmrewards.com> domain name in bad faith under ¶ 4(a)(iii). See 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.”).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mgmrewards.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: March 11, 2019
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