Wynn Resorts Holdings, LLC v. Milen Radumilo
Claim Number: FA2106001953354
Complainant is Wynn Resorts Holdings, LLC (“Complainant”), represented by Peter H. Ajemian of Brownstein Hyatt Farber Schreck, Nevada, USA. Respondent is Milen Radumilo (“Respondent”), Virgin Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <encoreboston.org>, 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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 29, 2021; the Forum received payment on June 29, 2021.
On June 30, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <encoreboston.org> 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 July 1, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 21, 2021 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@encoreboston.org. Also on July 1, 2021, 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 July 26, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the ENCORE mark and other marks including in particular ENCORE BOSTON HARBOUR which it refers to as its “ENCORE Marks”, through its ownership of the trademark registrations described below.
Complainant furthermore claims rights in the marks through extensive and continuous use since at least as early as December 22, 2008, in connection with casino, hotel resort, restaurant, bar, spa and entertainment services, among other goods and services. Complainant asserts that during that time it has gained the right to use the ENCORE mark in connection with a wide variety of goods and services in the United States and throughout the world. It further asserts that it has spent substantial sums of money to advertise, promote and protect the ENCORE mark in print, broadcast and Internet media, including through the website <www.encorebostonharbor.com> and <www.encorebostonjobs.com>.
Complainant alleges that the disputed domain name is confusingly similar to its ENCORE Marks as it incorporates the ENCORE trademark in its entirety with the addition of the geographically descriptive term “Boston” and the generic top-level domain (“gTLD”) extension <.org>.
Because Complainant offers various entertainment, casino, gaming, and hotel resort services under the ENCORE Marks (including the mark ENCORE BOSTON HARBOR) in Boston Harbor (technically located in Everett, Massachusetts) use of the geographic term “Boston” in the disputed domain name actually elevates its confusing similarity and is not a distinguishing feature. See Wynn Resorts Holdings, LLC v. Rossi¸ FA 1349926 (Forum Nov. 22, 2010) (finding that the addition of geographic terms such as “japan” or “tokyo" to a mark in its entirety “do[es] not avoid a finding of confusing similarity as between the mark and the domain name under the standards of the Policy.”).
Moreover, Complainant argues that the addition of a gTLD extension is irrelevant in determining whether the disputed domain name is confusingly similar to Complainant’s trademark. See Rollerblade, Inc. v. McCrady, D2000- 0429 (WIPO June 25, 2000) (finding that top level domain names like “.com” do not affect the determination of whether a domain is identical or confusingly similar to a mark).
Complainant submits that Respondent has no rights or legitimate interests in the disputed domain name and is not using the disputed domain name in connection with 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).
Complainant asserts that it has not found any evidence to suggest that Respondent is commonly known by the text of any component of the disputed domain name but rather, the identifying information in the Whois information for the disputed domain name has been redacted for privacy purposes.
Additionally, Complainant asserts that Respondent is not licensed or authorized to use the ENCORE Marks.
Complainant refers to a screen capture of the web page to which the disputed domain name resolves, which has been submitted as evidence in an annex to the Complaint and submits that it shows that since the disputed domain name was registered on April 27, 2018, it has been linked by Respondent to a “pay-per-click” advertising website, featuring links to commercial websites offering hotel and casino services.
Complainant argues that use of the disputed domain name in this manner is not use in connection with a bona fide offering of services and further indicates that Respondent has no rights or legitimate interests in the disputed domain name. See LodgeWorks, L.P. v. Kirchhof, FA 1336564 (Forum Sept. 1, 2010) (finding that the respondent's use of a mark to maintain a website that displays links to competing hotel and hospitality services is not a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Complainant submits that the disputed domain name was registered and is being used in bad faith, arguing that given the high level of consumer recognition the ENCORE Marks have achieved in the United States, Respondent likely had actual notice of the ENCORE Marks at the time of registration.
Despite such knowledge, Respondent registered the disputed domain name which contains the entirety of the ENCORE trademark, along with the addition of the geographic term “Boston” and the gTLD “.org”, and in doing so, Complainant submits Respondent has demonstrated bad faith. See Wynn Resorts Holdings, LLC v. Martinez, FA 1607001683318 (Forum Aug. 19, 2016) (finding that “due to the fame of [Wynn’s marks], Respondent had actual knowledge of the mark and Complainant’s rights,” which supported a finding of bad faith).
Complainant adds that Respondent’s failure to make use of the disputed domain name is evidence of bad faith registration. See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
Complainant furthermore alleges that Respondent’s use of the disputed domain name diverts traffic from Complainant’s actual website by creating a likelihood of confusion with Complainant’s ENCORE Marks, resulting in commercial gain for Respondent and commercial harm to Complainant.
Complainant alleges that such a blatant attempt to benefit from the goodwill associated with Complainant’s ENCORE Marks evidences the Respondent’s utmost bad faith in registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant operates casino resorts and is the owner of the following trade mark registrations:
· United States Federal service mark ENCORE BEACH CLUB registration number 4084564 registered on the Principal Register on January 10, 2012 for services in international class 041
· United States Federal service mark ENCORE registration number 3745507 registered on the Principal Register on February 2, 2010 for services in international class 041
· United States Federal service mark ENCORE registration number 3612437 registered on the Principal Register on April 28, 2009 for services in international class 041
· United States Federal service mark ENCORE registration number 3,703,684, registered on the Principal Register on October 27, 2009 for services in international class 43
· United States Federal service mark ENCORE registration number 4,136,015, registered on the Principal Register on May 1, 2012 for services in international class41
· United States Federal service mark ENCORE registration number 3,610,506, registered on the Principal Register on April 21, 2009 for services in international class43
· United States Federal service mark ENCORE (and Design, registration number 3,828,920, registered on the Principal Register on August 3, 2010 for services in international class 35
· United States Federal trademark ENCORE registration number 3,828,678, registered on the Principal Register on August 3, 2010 for goods in international class 25;
· United States Federal service mark registration ENCORE BOSTON HARBOR registration number 5,997,672, registered on the Principal Register on Feb. 25, 2020 for services in international class 43;
· United States Federal service mark ENCORE BOSTON HARBOR registration number 5,978,868, registered on the Principal Register on February 4, 2020 for services in international class 44;
· United States Federal service mark ENCORE registration number 3,609,448, registered on the Principal Register on April 21, 2009 for services in international class 44;
· United States Federal service mark ENCORE WYNN LAS VEGAS registration number 3623306 registered on the Principal Register on Sep. 18, 2007 for services in international class 43;
· United States Federal service mark ENCORE WYNN LAS VEGAS registration number 3623305 registered on the Principal Register on May 19, 2009 for services in international class 43;
· United States Federal service mark ENCORE HOTEL registration number 2406350 registered on the Principal Register on November 21, 2000 for services in international class 42.
Complainant has an established Internet presence including through its websites <www.encorebostonharbor.com> and <www.encorebostonjobs.com>.
The disputed domain name was registered on April 27 2018 resolves to a parking page with links to third party websites that on the balance of probabilities are pay-per-click links.
There is no information available about Respondent except for that provided in the Complaint, the Registrar’s WhoIs and information provided by the Registrar in response to the enquiry from the Forum seeking confirmation details of the registration of the disputed domain name for the purposes of this Complaint. Respondent has availed of a privacy service to conceal his or her name on the published WhoIs and the Registrar has confirmed that he or she is the registrant.
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 has adduced clear and convincing uncontested evidence of its rights in the ENCORE mark and other marks including in particular ENCORE BOSTON HARBOUR which it refers to as its “ENCORE Marks”, through its ownership of the trademark registrations described below and at common law through extensive use since as early as December 2008, including on the Internet. Complainant maintains websites including on its websites at <www.encorebostonharbor.com> and <www.encorebostonjobs.com>.
The disputed domain name consists of Complainant’s ENCORE trademark in its entirety with the addition of the geographically descriptive term “Boston” and the generic top-level domain (“gTLD”) extension <.org>.
Complainant’s ENCORE mark is the dominant and only distinctive element of the disputed domain name. The geographic element “Boston” adds no distinguishing character as such but in context is likely to create confusing with Complainant’s ENCORE BOSTON HARBOR registered trademark.
In the context of this Complaint the addition of a gTLD is irrelevant in determining whether a disputed domain name is confusingly similar to Complainant’s trademark as it is likely to be regarded by Internet users as a technical necessity for a domain name.
This Panel finds therefore that the disputed domain name is confusingly similar to the trademark in which Complainant has rights and Complainant has succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name arguing that
· Respondent is not using the disputed domain name in connection with 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);
· All available evidence suggests that Respondent is not commonly known by any specific name;
· The identifying information in the Registrar’s WhoIs information for the disputed domain name has been redacted for privacy purposes and Complainant asserts that it has not found any evidence to suggest that Respondent is commonly known by the text of any component of the disputed domain name;
· Respondent is not licensed or authorized by Complainant to use the ENCORE marks;
· the screen capture of the web page to which the disputed domain name resolves, which has been submitted as evidence in an annex to the Complaint, shows that since the disputed domain name was registered on April 27, 2018, it has been linked by Respondent to a “pay-per-click” advertising website, featuring links to commercial websites offering hotel and casino services;
· Respondent’s use of the disputed domain name in this manner is not use in connection with a bona fide offering of services and further indicates that Respondent has no rights or legitimate interests in the disputed domain name.
It is well established that if Complainant makes out a prima facie case, the burden of production shifts to Respondent to prove his rights or legitimate interests in the disputed domain name. Respondent has failed to file any Response to the Complaint or provide any defense to Complainant’s allegations and so has not discharged the burden.
In these circumstances this Panel must find that on the balance of probabilities Respondent has no rights or legitimate interests in the disputed domain name. Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
On the balance of probabilities, the disputed domain name was registered with Complainant’s mark in mind.
In reaching this conclusion this Panel has considered that while Complainant has not shown its mark to be famous, it has an established Internet presence including through its websites at <www.encorebostonharbor.com> and <www.encorebostonjobs.com> and the disputed domain name contains two of the elements of Complainant’s ENCORE BOSTON HARBOR registered trademark. Furthermore, Complainant has a place of business in Boston Harbor.
This Panel finds therefore that the disputed domain name was registered in bad faith with the intention of taking predatory advantage of Complainant’s marks and reputation to misdirect Internet traffic intended for Complainant. The use to which the disputed domain name has been put supports this finding.
The screen capture which has been adduced in evidence in an annex to the Complaint shows that the disputed domain name resolves to website with no content except links to third party websites. On the balance of probabilities Respondent is generating pay-per-click revenue from these links.
This Panel finds therefore that Respondent is using the disputed domain name in bad faith by intentionally attempting to attract, for commercial gain, Internet users to his web site by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of his web site.
As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has therefore succeeded in the third element of the test in Policy ¶ 4(a)(iii) and is entitled to the remedy requested in the Complaint.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <encoreboston.org> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: July 28, 2021
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