Wynn Resorts Holdings, LLC v. Hulmiho Ukolen
Claim Number: FA2211002020643
Complainant is Wynn Resorts Holdings, LLC (“Complainant”), represented by Erin Lewis of Brownstein Hyatt Farber Schreck, Nevada, USA Respondent is Hulmiho Ukolen (“Respondent”), Finland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wynlasvegas.com>, registered with Gransy, s.r.o..
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 Forum electronically on November 16, 2022; Forum received payment on November 16, 2022.
On Nov 21, 2022, Gransy, s.r.o. confirmed by e-mail to Forum that the <wynlasvegas.com> domain name is registered with Gransy, s.r.o. and that Respondent is the current registrant of the name. Gransy, s.r.o. has verified that Respondent is bound by the Gransy, s.r.o. 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 November 23, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 13, 2022 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@wynlasvegas.com. Also on November 23, 2022, 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, Forum transmitted to the parties a Notification of Respondent Default.
On December 19, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed James Bridgeman SC, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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 WYNN, WYNN LAS VEGAS and WYNN, LAS VEGAS marks established by its ownership of the portfolio of trademark and service mark registrations described below and continuous use of the WYNN mark by Complainant and members of its group of corporations since as early as April 28, 2005. Complainant submits that it has acquired a substantial level of consumer recognition for the WYNN mark through advertising and promotion and maintains an internet presence on its websites <www.wynnlasvegas.com> and <www.wynnmacau.com>.
Complainant submits that the disputed domain name is confusingly similar to its WYNN and WYNN LAS VEGAS marks as it incorporates the WYNN mark in its entirety, with the word misspelled as “wyn” and further incorporates the element “Las Vegas” which is a descriptive, generic term, and a geographic descriptor.
Complainant adds that the addition of the generic term “las vegas” elevates the confusing similarity because the term is incorporated in a number of Complainant’s trademarks. See Home Depot Product Authority, LLC v. Angelo Kioussis, FA 1784554 (Forum June 4, 2018) (“The domain name contains the mark in its entirety, with only the addition of the generic letters ‘sb’ and the digits ‘2018’’. . . These alterations of the mark, made in forming the domain, do not save it from the realm of confusing similarity under the standards of the Policy.”).
Complainant furthermore submits that the use of only one “n” instead of two (i.e., “nn”) to create the disputed domain name that is a deliberate typo of “WYNN” and “WYNN LAS VEGAS” and does not serve to distinguish the disputed domain name <wynlasvegas.com> from Complainant’s marks adding that the registration of the disputed domain name constitutes typosquatting, which by definition allows a finding of confusing similarity with Complainant’s marks. See Hyperion Materials & Technologies AB v. Osama, WIPO Case No. D2020-0251 (finding that the respondent engaged in bad-faith typosquatting by registering <hyperlonmt.com>, which differed by only one letter from the complainant’s domain <hyperionmt.com>).
Complainant adds that the gTLD <.com> extension is irrelevant in determining whether the disputed domain name is confusingly similar to a complainant’s trademark. See Rollerblade, Inc. v. McCrady, WIPO Case D2000-0429 (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 next alleges that Respondent has no rights or legitimate interests in the disputed domain name arguing that it has uncovered no evidence to suggest that Respondent is commonly known by the text of any component of the disputed domain name whereas all the all identifying information in the WhoIs for the disputed domain name has been redacted for privacy purposes, therefore this Panel should presume that Respondent is not commonly known by the disputed domain name. See Big Canoe Company, LLC v. Daniel J. Elliot, FA 799382 (Forum Nov. 17, 2006) (finding that the respondent’s use of Complainant’s mark in the respondent’s <bigcanoerealestate.net> domain name is not legitimate because the respondent’s Whois information did not indicate that the respondent was commonly known by such domain).
Referring to a screen capture exhibited in evidence in an annex to the Complaint, Complainant submits that since Respondent registered the disputed domain name on October 4, 2007, on information and belief, Respondent has linked the disputed domain name to a “pay-per-click” advertising website, featuring links to commercial websites offering hotel booking and hotel booking deals.
Complainant submits that such 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 Infringing Domain. 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 next alleges that the disputed domain name was registered and is being used in bad faith, arguing that Complainant had acquired prior registered trademark rights and a high level of consumer recognition of the WYNN mark when the disputed domain name was registered and Respondent had both constructive notice and actual notice of Complainant’s WYNN and WYNN LAS VEGAS marks when the disputed domain name was registered.
Complainant adds that despite such knowledge, Respondent registered the disputed domain name which contains the entirety of the WYNN trademark, in a typo format, along with the addition of the descriptive/generic term “lasvegas,” as well as the gTLD extension <.com>, and in so doing, Respondent demonstrated bad faith. See Wynn Resorts Holdings, LLC v. Martinez, FA 1607001683318 (Forum Aug. 19, 2016) (finding that “due to the fame of the [WYNN marks], Respondent had actual knowledge of the mark and Complainant’s rights,” which supported a finding of bad faith).
Furthermore, Complainant alleges that Respondent has engaged in “typosquatting”—a practice by which a registrant deliberately introduces slight deviations or misspellings into a famous mark for commercial gain and argues that it is well-settled that the practice of typosquatting, of itself, is evidence of the bad faith registration of a domain name. See Longs Drug Stores Cal., Inc. v. Shep Dog, WIPO Case No. D2004-1069 (finding typosquatting to be evidence of bad faith domain name registration).
Additionally, Complainant submits that after registering the disputed domain name with knowledge of Complainant’s trademark rights, Respondent has failed to link the domain to an active website, and argues that such failure to make use of the disputed domain name is evidence that Respondent registered the disputed domain name in bad faith. See DCI S.A. v. Link Commercial Corp., WIPO Case D2000-1232 (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 adds that rather than using the website to which the disputed domain name resolves for the bona fide offering of its own goods or services, Respondent instead seeks to profit from the goodwill and reputation that Complainant has spent over a decade developing.
Arguing that Respondent’s use of the disputed domain name diverts traffic from Complainant’s actual websites by creating a likelihood of confusion with Complainant’s WYNN, WYNN LAS VEGAS and WYNN, LAS VEGAS marks, resulting in commercial gain for Respondent and commercial harm to Complainant, Complainant submits that such use of the disputed domain name is a blatant attempt to benefit from the goodwill associated with the WYNN, WYNN LAS VEGAS and WYNN, LAS VEGAS marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns and with its associated corporations uses the WYNN trademark and service mark in connection with casino, hotel resort, restaurant, bar, spa and entertainment and other services, and has provided evidence that it is the registered owner of a large portfolio of United States of America registered trademarks and service marks, for, and incorporating the WYNN mark including:
· United States registered service mark registration WYNN, registration number 2,998,762 registered on the Principal Register on September 20, 2005 for services in International Class 41
· United States registered service mark registration WYNN, registration number 2,998,763 registered on the Principal Register on September 20, 2005 for services in International Class 43 ;
· United States registered service mark registration WYNN. LAS VEGAS , registration number 3,032,689 registered on the Principal Register on December 20, 2005 for services in International Class 43;
· United States registered service mark registration WYNN. LAS VEGAS, registration number 2,983,712, registered on the Principal Register on August 09, 2005 for services in International Class 41;
· United States registered service mark registration WYNN LAS VEGAS registration number 3,016,143 registered on the Principal Register on November 15, 2005, for services in International Class 41;
· United States registered service mark registration WYNN LAS VEGAS registration number 3,024,391 registered on the Principal Register on December 6, 2005, for services in International Class 43;
· United States registered service mark registration WYNN LAS VEGAS registration number 3,083,439 registered on the Principal Register on April 18, 2006, for services in International Class 41;
· United States registered service mark registration WYNN LAS VEGAS registration number 3,007,816 registered on the Principal Register on October 18, 2005, for services in International Class 41;
· United States registered service mark registration WYNN LAS VEGAS registration number 3,016,144 registered on the Principal Register on November 15, 2005, for services in International Class 43;
· United States registered service mark registration WYNN LAS VEGAS registration number 3,029,824, registered on the Principal Register on December 13, 2005, for services in International Class 43.
Complainant has an established Internet presence and hosts websites at a number of addresses including <www.wynnlasvegas.com>.
The disputed domain name <wynlasvegas.com> was registered on October 4, 2007, and resolves to a webpage with what appears to be links to third party websites and statement that “Buy this domain This domain may be for sale”.
There is no information available about Respondent, except for that provided in the Complaint, the Registrar’s WhoIs and the information provided by the Registrar in response to the request by Forum in the course of this proceeding for details of the registration of the disputed 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 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 provided convincing, uncontested evidence that it has rights in WYNN, WYNN LAS VEGAS and WYNN, LAS VEGAS marks established by the ownership of the portfolio of trademark registrations described above and its long established use of the mark by itself and members of its group of corporations to distinguish its products and services including on its websites at <www.wynnlasvegas.com> and <www.wynnmacau.com>.
The disputed domain name <wynlasvegas.com> consists of in Complainant’s WYNN, WYNN LAS VEGAS and WYNN, LAS VEGAS marks in their entirety in combination with the generic Top Level Domain extension <.com>.
The difference between the “wyn” element in the disputed domain name and the WYNN mark is a minor misspelling.
The “lasvegas” element in the disputed domain name is descriptive and a geographical place name, but also identical to a significant element in Complainant’s WYNN LAS VEGAS and WYNN, LAS VEGAS registered service marks. The absence of the spaces and the comma from Complainant’s WYNN LAS VEGAS and WYNN, LAS VEGAS marks are insignificant in the context of a domain name, and do not prevent a finding of confusing similarity. Neither spaces nor commas appear, or are expected in a domain name.
Similarly, the gTLD <.com> extension would be considered a necessary technical requirement for a domain name registration, and need not be considered for the purposes of comparison in the context of this Complaint.
This Panel finds therefore that the disputed domain name is confusingly similar to the WYNN, WYNN LAS VEGAS and WYNN, LAS VEGAS marks in which Complainant has rights and Complainant has therefore 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 legitimate interests in the disputed domain name arguing that
· there is no evidence that Respondent is, or has even been, commonly known by the disputed domain name;
· that Complainant has uncovered no evidence to suggest that Respondent is commonly known by the text of any component of the disputed domain name whereas all the all identifying information in the Whois account has been redacted for privacy purposes, therefore this Panel should presume that Respondent is not commonly known by the disputed domain name;
· the screen capture exhibited in evidence in an annex to the Complaint, shows that Respondent has linked the disputed domain name to a “pay-per-click” advertising website, featuring links to commercial websites offering hotel booking and hotel booking deals; and
· such 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 once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests.
Respondent has failed to discharge that burden and therefore this Panel must find that 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).
Complainant has adduced clear and convincing, uncontested evidence that it holds registered service mark rights in the WYNN, WYNN LAS VEGAS and WYNN, LAS VEGAS marks dating back to 2005, which predate the registration and first use of the disputed domain name on October 4, 2007.
Additionally, Complainant maintains active websites at <www.wynnlasvegas.com> and <www.wynnmacau.com>.
There is nothing on the record to suggest that Respondent has any association with LAS VEGAS, whereas Respondent has used references to LAS VEGAS in its registered service marks, and in its <www.wynnlasvegas.com> website.
In these circumstances, this Panel finds that it is improbable that the disputed domain name <wynlasvegas.com> was chosen and registered in 2007, without knowledge of Complainant’s WYNN and WYNN LAS VEGAS mark.
An unusual aspect of this proceeding is that Complaint waited fifteen years to bring this Complaint. Complainant has not explained why it has delayed so long. Nonetheless it is well established that delay does not in itself defeat a Complainant, and the doctrine of laches has no place in the Policy.
Based on the evidence adduced, this Panel finds that in the balance of probabilities the disputed domain name was chosen and registered as an intentional misspelling of Complainant’s WYNN, and WYNN LAS VEGAS marks, in an act of typosquatting by the registrant.
This Panel finds therefore that on the balance of probabilities the disputed domain name was chosen and registered in bad faith with Complainant and its WYNN, WYNN LAS VEGAS marks in mind for the purposes of taking predatory advantage of Complainant and its goodwill and reputation.
The uncontested evidence adduced by Complainant shows Respondent has not put the disputed domain name to any active use but instead causes, permits or allows it to resolve to a web page that Complainant has averred, without contradiction, contains pay-per-click links.
On the balance of probabilities this Panel finds therefore that Respondent is causing or permitting the disputed domain name to attract Internet traffic, by confusing Internet users who are then presented with links to third party websites. Such misuse of Complainant’s goodwill and reputation in itself constitutes use in bad faith.
Additionally, the uncontested evidence allows this Panel to infer that Respondent is engaged in typosquatting, is passively holding the disputed domain name and is offering it for sale to the public.
The exhibited screen capture of web page to which the disputed domain name resolves, shows that it contains the following statements: “Buy this domain This domain may be for sale”.
Not only does the web page to which the disputed domain name resolve purport to offer the disputed domain name for sale but the WhoIs record adduced in evidence also has a banner at the top stating “ wynlasvegas.com is for sale! This domain is listed for sale at one of our partner sites for $2,952.”
The Policy states that such circumstances indicating that Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to Complainant who is the owner of the confusingly similar service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain name, is evidence of bad faith registration and use.
This Panel finds that on the balance of probabilities the evidence adduced must lead to a determination that such passive holding of the disputed domain name and offering it for sale, constitutes use in bad faith for the purposes of the Policy.
As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has succeeded in the third element of the test in Policy paragraph 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 <wynlasvegas.com> domain name be TRANSFERRED from Respondent to Complainant.
____________________________________
James Bridgeman SC
Panelist
Dated: December 20, 2022
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page