Wynn Resorts Holdings, LLC v. Sung Yao-Hwa / Wyncor Inc.
Claim Number: FA2009001913634
Complainant is Wynn Resorts Holdings, LLC (“Complainant”), represented by Erin Lewis of Brownstein Hyatt Farber Schreck, Nevada, US. Respondent is Sung Yao-Hwa / Wyncor Inc. (“Respondent”), Tawain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wynncare.com>, registered with Network Solutions, 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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 25, 2020; the Forum received payment on September 25, 2020.
On September 25, 2020, Network Solutions, LLC confirmed by e-mail to the Forum that the <wynncare.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 September 30, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 20, 2020 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@wynncare.com. Also on September 30, 2020, 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 October 22, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. 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, Wynn Resorts Holdings, LLC and its associated companies provide casino, hotel resort, restaurant, bar, spa and entertainment services. Complainant has rights in the trademark WYNN based on its use in commerce since 2005 and its intent-to-use registration thereof with the United States Patent and Trademark Office (“USPTO”) dating back to 2003. Respondent’s <wynncare.com> domain name, registered on May 4, 2018, is confusingly similar to Complainant’s mark because it merely adds the generic term “care” and the “.com” generic top level domain (“gTLD”) to Complainant’s WYNN mark.
Respondent does not have rights or legitimate interests in the <wynncare.com> domain name. Respondent is not commonly known by the disputed domain name and Complainant has not licensed or authorized Respondent to use the WYNN mark. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent has failed to resolve it to a website or otherwise make any active use thereof.
Respondent registered and uses the <wynncare.com> domain name in bad faith. Respondent fails to make active use of the disputed domain name. Additionally, Respondent had constructive and actual knowledge of Complainant’s rights in the WYNN mark based on the registration and fame of the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to multiple trademarks in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant asserts rights in the WYNN mark based on its many registrations with the USPTO. Registration of a mark with the USPTO is a valid showing of rights in a mark. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”) Since Complainant provides evidence of registration of the WYNN mark in the form of screenshots of the USPTO website, the Panel finds that Complainant has rights in the mark sufficient to satisfy the threshold standard of Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <wynncare.com> domain name is confusingly similar to Complainant’s mark because it merely adds the generic term “care” and the “.com” gTLD to Complainant’s WYNN mark. The addition of a generic term and gTLD to a mark is typically insufficient to differentiate a disputed domain name from a mark under Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)); see also Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). Complainant notes that the disputed domain name is particularly confusing because the term “cares” relates to the hospitality services offered by Complainant. As this descriptive word does not sufficiently differentiate the disputed domain name from Complainant’s WYNN mark, the Panel finds that the disputed domain name is confusingly similar thereto under Policy ¶ 4(a)(i).
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). Should it succeed in this effort, the burden then shifts to Respondent to show that it does have rights or legitimate interests. 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)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).
Complainant argues that Respondent does not have rights or legitimate interests in the <wynncare.com> domain name because Respondent is not commonly known by the disputed domain name and Complainant has not licensed or authorized Respondent to use the WYNN mark. In considering this issue, WHOIS information can be used to show that a respondent is or is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Guardair Corporation v. Pablo Palermo, FA 1571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). Additionally, lack of authorization to use a mark constitutes further showing that a respondent lacks rights in a mark. See Bittrex, Inc. v. Operi Manaha, FA 1815225 (Forum Dec. 10, 2018) (concluding that the respondent was not commonly known by the <appbittrex.com> domain name where the WHOIS information listed Respondent as “Operi Manaha,” and nothing else in the record suggested Respondent was authorized to use the BITTREX mark.) Here, the WHOIS information, as revealed by the concerned Registrar, identifies Respondent as “SUNG YAO-HWA / Wyncor Inc.” and no information suggests that it is known otherwise or that Complainant has authorized Respondent to use the WYNN mark. Thus, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Additionally, Complainant argues that Respondent does not use the disputed domain name for any bona fide offering of goods or services or a legitimate noncommercial or fair use as Respondent fails to make active use of the disputed domain name. Inactive holding of a domain name or failure to resolve a domain name to an active website does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See CrossFirst Bankshares, Inc. v Yu-Hsien Huang, FA 1785415 (Forum June 6, 2018) (“Complainant demonstrates that Respondent fails to actively use the disputed domain name as it resolves to an inactive website. Therefore, the Panel finds that Respondent fails to actively use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).”) Complainant provides a screenshot of the resolving webpage for the disputed domain name that shows a message stating “Looks Like This Domain Isn’t Connected To A Website Yet!” Further, Respondent has not filed a Response or made any other submission in this case to explain its actions. Thus, the Panel finds that Respondent is not using the domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant contends that Respondent had constructive and actual knowledge of Complainant’s rights in the WYNN mark based on the registration and fame of the mark. While constructive knowledge is typically insufficient for a finding of bad faith where the Respondent is not subject to the laws of a jurisdiction that applies such principle of law, Panels have found actual knowledge where a mark is well known. See The Am. Auto. Assoc., Inc. v. Zag Media Corp., FA 1226952 (Forum Nov. 13, 2008) ("Mere constructive knowledge is insufficient to support a finding of bad faith."); see also Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum March 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”) Complainant asserts that since the WYNN mark has achieved a high level of recognition Respondent likely had actual knowledge of Complainant’s rights in the mark at the time of registration. In support thereof, it submits copies of its many USPTO trademark registrations and two screenshots from its own websites. However, while these support the existence of trademark rights, they do not, alone, evidence fame or what reputation such trademarks have with the relevant public. However, Complainant also submits a signed Declaration from one of its officers stating, in part, that “Wynn has made extensive use of the WYNN Marks” and “[a]s a result of the Wynn’s efforts, the WYNN Marks have acquired a substantial level of consumer recognition.” Further, Respondent has not participated in this case to explain its use of the mark in the disputed domain name and so the Panel finds it more likely than not, that Respondent had actual knowledge of Complainant’s mark at the time it registered the disputed domain name.
Next, while Complainant does not make any contentions that fall within the articulated provisions of Policy ¶ 4(b), the Panel notes that these provisions are meant to be merely illustrative of bad faith, and that Respondent’s bad faith may be demonstrated by ancillary allegations considered under the totality of the circumstances. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith).
Complainant does argue that Respondent registered and uses the <wynncare.com> domain name in bad faith because Respondent fails to make an active use of the disputed domain. Under Policy ¶ 4(a)(iii), failure to resolve a disputed domain name to an active website may indicate bad faith when considering all of the circumstances of a given case. See CommScope, Inc. of North Carolina v. Zhuang Yan / WANGYONG, FA 1764026 (Forum Feb. 14, 2018) (“Respondent’s domain names do not have resolving websites. Using a domain name to resolve to an inactive website (or no website at all) indicates bad faith registration and use.”); see also Caravan Club v. Mrgsale, FA 95314 (Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that [failure to make an active use] of a domain name permits an inference of registration and use in bad faith). Complainant provides a screenshot of the resolving webpage for the disputed domain showing a notice that it has not yet been set up, and this is despite registration of the disputed domain name in over two years ago. This combined with no further information from the Respondent to meet Complainant’s claim leads the Panel to find bad faith registration and use 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 <wynncare.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: October 23, 2020
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