Marina District Development Company, LLC v. Joseph Fauci
Claim Number: FA1903001834790
Complainant is Marina District Development Company, LLC (“Complainant”), represented by Michael J McCue and Cindy A. Villanueva of Lewis Roca Rothgerber Christie LLP, Nevada, USA. Respondent is Joseph Fauci (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <borgatasports.com>, <sportsborgata.com>, and <borgatasports.info>, 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 Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 19, 2019; the Forum received payment on March 19, 2019.
On March 20, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <borgatasports.com>, <sportsborgata.com>, and <borgatasports.info> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 March 26, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 15, 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@borgatasports.com, postmaster@sportsborgata.com, postmaster@borgatasports.info. Also on March 26, 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.
A timely Response was received and determined to be complete on April 15, 2019.
On April 19, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant is a subsidiary of MGM Resorts International, one of the world’s leading global hospitality companies, owning a portfolio of world-renowned resorts and hotels including, through Complainant, the Borgata Hotel Casino & Spa in Atlantic City, New Jersey. Complainant has rights in the BORGATA mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,872,782, registered Aug. 10, 2004). See Compl. Ex. 4. Complainant also has rights in a series of other trademarks for or including BORGATA. Respondent’s <borgatasports.com>, <sportsborgata.com>, and <borgatasports.info> domain names are confusingly similar to Complainant’s BORGATA mark as the domain names are comprised of the mark, the descriptive term “sports,” and a “.com” or “.info” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <borgatasports.com>, <sportsborgata.com>, and <borgatasports.info> domain names. Respondent is not authorized to use Complainant’s BORGATA mark nor is Respondent commonly known by the disputed domain names. Additionally, Respondent fails to use the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain names to redirect users to a parked website with unrelated pay-per-click links. Further, Respondent attempted to sell the disputed domain names to Complainant for $1,500 plus an MGM players card upgrade.
Respondent registered and uses the <borgatasports.com>, <sportsborgata.com>, and <borgatasports.info> domain names in bad faith. Respondent disrupts Complainant’s business by attempting to attract, for commercial gain, users to the disputed domain names which resolve to parked websites with pay-per-click links. Further, Respondent had actual knowledge of Complainant’s rights in the BORGATA mark prior to registering the disputed domain names.
B. Respondent
Respondent made the following contentions.
Respondent is the owner of the <borgatasports.com>, <sportsborgata.com>, and <borgatasports.info> domain names. Complainant cannot claim rights in the BORGATA mark as the word is Italian for the word “township” and Complainant owns no trademark that references the term “sports.”
Respondent did not attempt to sell the <borgatasports.com>, <sportsborgata.com>, and <borgatasports.info> domain names to Complainant. Rather, Complainant attempted to acquire the disputed domain names deceitfully by emailing Respondent, under the guise of an unknown person, asking for a price quote of the domain names. Further, Respondent’s domain names resolve to websites generated by GoDaddy’s free web parking service.
2. Complainant has established its trademark rights in the BORGATA mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,872,782, registered Aug. 10, 2004).
3. Respondent registered the<borgatasports.com>, <sportsborgata.com> and <borgatasports.info> domain names on May 15, 2018.
4. The available evidence does not establish that Respondent has a right or legitimate interest in the disputed domain names.
5. The available evidence establishes that Respondent registered and used the disputed domain names 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.
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the BORGATA mark based upon registration of the mark with the USPTO (e.g., Reg. No. 2,872,782, registered Aug. 10, 2004). See Compl. Ex. 4. Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). The Panel therefore finds that Complainant’s registration of the BORGATA mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s BORGATA mark. Complainant argues that Respondent’s <borgatasports.com>, <sportsborgata.com>, and <borgatasports.info> domain names are confusingly similar to the BORGATA mark, as the name incorporates the mark along with the descriptive word “sports” and a “.com” or “.info” gTLD. It has frequently been held by panels that changes of this sort are not sufficient to distinguish a domain name from a mark when the entirety of the mark is included in the domain name and a generic word is added. Accordingly, internet users are likely to see the domain name as one referring to the trademark owner, especially if the generic word that has been added is one of the activities of the trademark owner. See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”). Complainant says that this is what has happened in the present case, because the word “sports” in the domain name refers to sports betting conducted in the Borgata Hotel Casino & Spa.
Respondent says that this argument is incorrect, as “Nowhere, in any of their trademarks listed does it even list or describe anything to do with sports.” That proposition of Respondent is not correct itself is not correct as:
(a) Complainant’s trademark 3,253, 836 for BORGATA includes in the classes of goods and services covered, “live sporting events, namely, poker tournaments” and “ sporting events”;
(b) Complainant’s service mark 2,872,782 for BORGATA includes ‘live sporting events”; and
(c) Complainant’s service mark 2,826,573 for BORGATA HOTEL CASINO & SPA includes “live sporting events and concerts”.
In any event, most members of the community seeing the word “Borgata” linked with the word “sports” would probably assume that it was referring to the Borgata Hotel Casino and Spa and would not be surprised to find that sports betting took place in a casino.
Moreover, the Panel has looked at the establishment’s website an finds among other activities taking place there, the following:
“Borgata is pleased to offer betting for sports and horse racing at the Race & Sports Book.”
“Bet on events from the four major sports football, basketball, hockey and baseball along with NASCAR, boxing, MMA, soccer, championship golf, championship tennis and more!”
The establishment also offers basketball bets, mobile sports bets, sports betting and Off Track Wagering in NJ.
It is therefore plain that the establishment offers sports and sports betting, activities that are specifically encompassed by the terms of the three domain names. That fact can only strengthen the argument that an objective bystander would conclude that the domain names were being held out as official domain names of Complainant’s business and that they would lead to official websites covering those activities.
The Panel therefore determines that the <borgatasports.com>, <sportsborgata.com>, and <borgatasports.info> domain names are confusingly similar to the BORGATA mark per Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that because it is difficult to prove a negative, i.e. that the registrant of a domain name does not have a right or legitimate interest in the domain name, the initial obligation of the Complainant/trademark owner is to make out a prima facie case to that effect. If it cannot do that, the claim will fail. If it can make out a prima facie case, the onus of proof then shifts to Respondent to show that it does in fact have a right or legitimate interest in the domain name. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s BORGATA trademark and to use it in his domain names, adding only the generic or descriptive word “sports” to create three domain name that are confusingly similar to Complainant’s trademark, an addition that does not negate the confusing similarity that there is with Complainant’s trademark;
(b) Respondent registered the<borgatasports.com>, <sportsborgata.com> and <borgatasports.info> domain names on May 15, 2018;
(c) Prima facie, the Respondent has been using the domain names to create links to parked webpages that contain pay-per-click links related to Complainant’s business, such as “concert tickets’’, ”Booking hotels”’ , “Cheap concert tickets” and suchlike;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) It appears that Respondent is not commonly known as “borgatasports” or any combination of those words and that he has not been authorized by Complainant to use the BORGATA mark in any way. In reaching that conclusion, WHOIS information may be used. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“ Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name.”). The WHOIS information in the present case identifies the registrant of the domain names as “Joseph Fauci,” and there is no information on the record indicates Respondent was authorized to register a domain name incorporating Complainant’s mark. The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the <borgatasports.com>, <sportsborgata.com> or <borgatasports.info> domain names;
(f) Complainant has argued Respondent has not used the domain names to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainant contends that, instead, the domain names resolve to a website which is being used to obtain click-through revenue by linking to third-party websites. Use of a domain name to link to third-party websites is generally not a use that indicates rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015). In the present case, the domain names resolve to a website displaying only pay-per-click links and Complainant provides screenshots to further this submission. See Compl. Ex. 7. Thus, prima facie, Respondent is not using the domain names to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of them;
(g) Again, prima facie, Respondent may be seen to have offered the <borgatasports.com>, <sportsborgata.com> and <borgatasports.info> domain names for sale to Complainant, as Complainant submits.
All of these matters go to make out the prima facie case against Respondent. However, they are only prima facie and, as the onus of proof has now shifted to Respondent, it is up to him to rebut that prima facie case. The role of the Panel is therefore to see if Respondent has succeeded in doing so and then to put all of the evidence from both sides together and decide if Respondent has a right or legitimate interest in the disputed domain names.
The approach of Respondent has been to proceed to rebut the allegations made against him and then to raise some positive matters which, in his submission, show that he had a right to register the domain names and that he has a legitimate interest in them.
First of all, Respondent challenges the suggestion that there was anything wrong in registering the domain names, on the ground that no-one would be confused between the BORGATA trademark and the domain names because they have the word “sports” added to the trademark. The Panel has already given its reasons why it does not accept that argument. As a matter of common sense, the Panel is of the view that internet users seeing the domain names would conclude that they probably were official domain names of the Borgata casino and that they would probably lead to official websites of the same body. Therefore, the Panel does not accept this rebuttal.
Secondly, Respondent says that he did not link the domain names to any site being used to obtain click-through revenue by linking to third-party websites, that it was not his intention to do this, he has not made any money from that process and that any such links were made by the registrar through whom he bought the domain names. Putting it in his own words, he says:
“ I never paid for webhosting. I never created a website. I never parked webpages that contain pay-per-clicks that are related to the complainant’s business or any other business for that matter. It is a general parked page for anyone who purchases a domain but has not yet created a website.”
What Respondent says is probably correct, to the extent that many members of the domain name community have the experience of registering domain names and then finding that, without their knowledge or consent, the registrar has used them to support links or advertisements, not as an act of charity but for payment by one means or another. That is clearly what has happened here, for it seems to the Panel, more likely than not, that Respondent was not a knowing party to the use of the domain names for links to third party sites. On the other hand, the registrant of a domain name is generally held to be responsible for the use of its own domain names and in particular, the content of any site to which they resolve. A registrant should keep abreast of how its domain names are being used and should require the registrar to remove links and advertisements if that is what it wants. On balance, and taking those competing issues into account, the Panel takes the view that the issue is not strong enough to show, by itself, that Respondent does not have a right or legitimate interest in the domain names. However , as will be seen, there are other issues which carry greater weight.
Thirdly, Respondent says that he did not initiate the negotiations on the possible sale of the domain names, but that they were initiated at the behest of Complainant. The Panel finds that this is probably correct. As such, the Panel will not use the fact of those negotiations against Respondent.
The result of those matters is, therefore, that Respondent has rebutted two issues, namely the redirection to third party websites and the sale negotiations, but has failed to rebut another issue, namely the issue of registering domain names confusingly similar to the trademark.
The Panel now turns to the positive matters raised by Respondent and it is here, in the opinion of the Panel, that it can be resolved whether or not Respondent has a right or legitimate interest in the disputed domain names. That is so because far and away the most important issue in this case is why Respondent registered the domain names incorporating Complainant’s BORGATA trademark and what he was intending to do with them.
Respondent says that he should succeed in this case and keep the domain names because he registered the domain names:
(a) “to use the domains to showcase my sports memorabilia and for one day my sons to do so as well.” In support of this point, he adds that he is a sports enthusiast and has family roots that trace back to Italy, giving rise to plenty of hometown teams and heroes.
(b) He adds that he never intended to make money from acquiring the domain names.
(c) This aim is supported by the fact that his friends and family would love to see his memorabilia displayed in “one easy online gallery”.
(d) Perhaps anticipating a query as to what he was actually doing about this plan, he adds to these points that he was hoping to get the website created over the summer of 2019.
The Panel understands the points being made, but unfortunately, they leave so many unanswered questions that they do not make out a persuasive case.
First, the explanation leaves unanswered the major question why he chose domain names around the name BORGATA at all. There must be an explanation for this. If the objective were to collate sports memorabilia for his family and friends, surely he would have chosen a family name and stated what it was and why it was chosen. How otherwise would any family or friends know where the memorabilia was to be found? Then the question arises why it was necessary to have three domain names when one, with a website, would have accommodated all the memorabilia unless there were a good reason why that could not be done. In particular, Respondent himself points out that the ultimate objective was to have the memorabilia in “one easy online gallery”. If so, why were three domain names registered and why could the one necessary gallery not be accommodated with one domain name rather than with three?
Secondly, in this matter the domain names were registered on May 15, 2018; the Complaint was filed on March 19, 2019. The 10 months between these dates really calls for an explanation for why Respondent has apparently done nothing to establish his website collection during this time. Usually in such cases a registrant has taken at least preliminary steps to set up a website, but the fact that in this case there are none in this case is concerning.
Thirdly, the problem for Respondent is that against these unanswered questions, there is the obvious fact that all three domain names draw on the name of Complainant’s trademark which is the name of its prominent hotel and casino which could be confused with the domain names and which in fact does provide sports activities as the domain names suggest. As at present advised, the Panel is inclined to accept that this was the real reason for the registration of the domain names and not for setting up a sports memorabilia site for which no preparations have been made, in other words that Respondent was seeking to take advantage of the name of Complainant’s famous casino for its own financial advantage.
Assessing all of the evidence and the inferences that can be drawn from it, the Panel therefore finds that Respondent has not rebutted the prima face case against it and has not shown that it has a right or legitimate interest in the three domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That follows in effect from the findings of fact made by the Panel and elaborated on in the preceding section of this decision and it is not necessary to repeat them here.
First, the Panel finds on the evidence already noted that Respondent’s intention was probably to attempt to sell the domain names to Complainant, bringing the matter within Policy ¶ 4(b)(i), as Respondent appears to have been setting himself up to attract sports betting business that otherwise would flow directly to the Complainant.
Secondly, the conduct was also probably contrary to Policy ¶ 4(b)(iii), as the domain names were registered primarily to disrupt the business of Complainant.
Thirdly, the Panel also finds that it is more likely than not that Respondent knew of Complainant’s casino and hotel by its name. That constitutes actual notice of Complainant’s trademark. Actual notice is recognized as evidence of bad faith registration of a domain name. 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.”). In the present case, the Panel finds that Respondent had actual notice of Complainant’s trademark which is BORGATA, the name of the Casino and Hotel and hence that it registered the domain names in bad faith. That notice came from the fame of the establishment and from Respondent’s own knowledge which the Panel infers. As noted previously, Respondent has given no explanation for using the word Borgata at all. It is presumably true that it is the Italian word for “village”, as Respondent submits, but to suggest that Respondent registered the three domain names for that reason is implausible and contrary to the main argument of Respondent which is that he wanted the domain names to use in websites as a repository for his sports memorabilia.
In addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the BORGATA mark and the inferences that can be drawn from that registration, Respondent registered and used them in bad faith within the generally accepted meaning of that expression. In particular, the Panel finds that it is more likely than not that Respondent registered the domain names because they invoked the name of the Borgata Hotel Casino and Spa and that he wished to generate the notion that these were domain names associated with sports betting at that establishment. Moreover, it is probable, in the absence of any other plausible explanation that Respondent’s intention was to use the domain name to his own financial advantage.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <borgatasports.com>, <sportsborgata.com>, and <borgatasports.info> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: April 22, 2019
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