Mgmresorts.com

The timeline behind mgmresorts.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION MGM Grand Hotel LLC v. Maria Varela Claim Number: FA0910001289396 PARTIES Complainant is MGM Grand Hotel LLC (“Complainant”), represented by Jeffrey S. Rugg, of Brownstein Hyatt Farber Schreck, Nevada, USA. Respondent is Maria Varela (“Respondent”), Spain. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <mgmresorts.com>, registered with Backslap Domains, Inc. PANEL The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding. John J. Upchurch as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on October 14, 2009; the National Arbitration Forum received a hard copy of the Complaint on October 14, 2009. On October 15, 2009, Backslap Domains, Inc confirmed by e-mail to the National Arbitration Forum that the <mgmresorts.com> domain name is registered with Backslap Domains, Inc and that Respondent is the current registrant of the name. Backslap Domains, Inc has verified that Respondent is bound by the Backslap Domains, Inc registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy"). On October 28, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 17, 2009 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@mgmresorts.com by e-mail. Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default. On November 20, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch as Panelist. Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES' CONTENTIONS A. Complainant makes the following assertions: 1. Respondent’s <mgmresorts.com> domain name is confusingly similar to Complainant’s MGM mark. 2. Respondent does not have any rights or legitimate interests in the <mgmresorts.com> domain name. 3. Respondent registered and used the <mgmresorts.com> domain name in bad faith. B. Respondent failed to submit a Response in this proceeding. FINDINGS Complainant, MGM Grand Hotel LLC, provides gaming, hotel, and entertainment services. Since 1973, Complainant has operated under some form of its MGM mark. Complainant advertises and promotes its various resorts, casinos, and other properties under its MGM mark. Complainant holds numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its MGM mark (e.g., Reg. No. 2,534,227 issued January 29, 2002). Respondent, Maria Varela, registered the <mgmresorts.com> domain name on June 13, 2003. The disputed domain name resolves to a directory website with hyperlinks to Complainant and Complainant’s competitors in the gaming, hotel, and entertainment services industry. DISCUSSION 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." 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(e), 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 (Nat. Arb. 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.”). 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. Identical and/or Confusingly Similar Complainant registered its MGM mark with the USPTO (e.g., Reg. No. 2,534,227 issued January 29, 2002). While Respondent resides in Spain, previous panels have found that a complainant is not required to register a trademark in the country a respondent resides in. See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the complainant has rights to the name when the mark is registered in a country even if the complainant has never traded in that country). Therefore, the Panel finds Complainant’s registration of its MGM mark with the USPTO is sufficient to establish rights in a mark under Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark office (‘USPTO’)”); see also Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)). Complainant contends Respondent’s <mgmresorts.com> domain name is confusingly similar to Complainant’s MGM mark. The disputed domain name combines Complainant’s MGM mark with the descriptive term “resorts,” which describes Complainant’s resort business, and the generic top-level domain (“gTLD”) “.com.” The Panel finds the addition of a descriptive term fails to adequately distinguish the disputed domain name from Complainant’s mark. See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described the complainant’s financial services business, as well as a gTLD, did not sufficiently distinguish the respondent’s disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i)); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (finding that by adding the term “security” to the complainant’s VANCE mark, which described the complainant’s business, the respondent “very significantly increased” the likelihood of confusion with the complainant’s mark). The Panel further finds the addition of a gTLD is irrelevant in a Policy ¶ 4(a)(i) analysis. See Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”). Therefore, the Panel finds Respondent’s <mgmresorts.com> domain name is confusingly similar to Complainant’s MGM mark pursuant to Policy ¶ 4(a)(i). The Panel finds Complainant has satisfied Policy ¶ 4(a)(i). Rights or Legitimate Interests Complainant has alleged that Respondent does not have any rights or legitimate interests in the <mgmresorts.com> domain name. The burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii) after Complainant makes a prima facie case in support of its allegations. The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume Respondent does not have rights or legitimate interests in the disputed domain name. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); see also Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”). Complainant asserts that Respondent has never been authorized to use the MGM mark. Respondent has failed to provide evidence that it is commonly known by the <mgmresorts.com> domain name. The WHOIS information lists Respondent as “Maria Varela.” Furthermore, the Panel fails to find evidence in the record suggesting that Respondent is commonly known by the <mgmresorts.com> domain name. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name and has not established rights or legitimate interests in the <mgmresorts.com> domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name). Respondent’s <mgmresorts.com> domain name resolves to a directory website containing hyperlinks to Complainant and Complainant’s competitors in the gaming, hotel, and entertainment services business. Respondent likely profits from click-through fees from the aforementioned hyperlinks. Therefore, the Panel finds Respondent’s use of the confusingly similar disputed domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii). See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees); see also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). The Panel finds Policy ¶ 4(a)(ii) has been satisfied. Registration and Use in Bad Faith Complainant claims the website resolving from Respondent’s <mgmresorts.com> domain name contains hyperlinks to Complainant and Complainant’s competitors in the gaming, hotel, and entertainment services industry. Complainant’s competitors may receive business that, except for Respondent’s confusingly similar disputed domain name, Complainant would have received from Internet users interested in Complainant’s gaming, hotel, and entertainment services. The Panel finds Respondent’s use of the confusingly similar disputed domain name disrupts Complainant’s gaming, hotel, and entertainment services business, which constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)). Complainant alleges Respondent’s use of the <mgmresorts.com> domain name is for the purpose of attracting, for commercial gain, Internet users to the resolving website. The Panel infers Respondent receives click-through fees from the aforementioned hyperlinks. Respondent’s use of Complainant’s MGM mark may confuse Internet users, interested in Complainant and Complainant’s gaming, hotel, and entertainment services, as to Complainant’s sponsorship and affiliation with the resolving website. Respondent attempts to profit from this confusion. The Panel finds Respondent’s use of the confusingly similar disputed domain name constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (holding that the use of a confusingly similar domain name to display links to various third-party websites demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). Therefore, the Panel finds Complainant has satisfied Policy ¶ 4(a)(iii). DECISION Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED. Accordingly, it is Ordered that the <mgmresorts.com> domain name be TRANSFERRED from Respondent to Complainant. John J. Upchurch, Panelist Dated: December 7, 2009 NATIONAL ARBITRATION FORUM

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.