Mgmnorthfield.com, Mgmnorthfieldpark.com

The timeline behind mgmnorthfield.com

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

How each disputed name was decided in this proceeding.

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

DECISION MGM Resorts International v. Jill Middleton Claim Number: FA1901001826464 PARTIES Complainant is MGM Resorts International (“Complainant”), represented by Michael J. McCue of Lewis Roca Rothgerber Christie LLP, Nevada, USA. Respondent is Jill Middleton (“Respondent”), Nevada, USA. REGISTRAR AND DISPUTED DOMAIN NAMES The domain names at issue are <mgmnorthfield.com> and <mgmnorthfieldpark.com>, registered with GoDaddy.com, LLC. PANEL The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding. Sandra J. Franklin as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the Forum electronically on January 22, 2019; the Forum received payment on January 22, 2019. On January 23, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <mgmnorthfield.com> and <mgmnorthfieldpark.com> 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 January 28, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 19, 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@mgmnorthfield.com, postmaster@mgmnorthfieldpark.com. Also on January 28, 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. Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default. On February 20, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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. RELIEF SOUGHT Complainant requests that the domain names be transferred from Respondent to Complainant. PARTIES' CONTENTIONS A. Complainant 1. Respondent’s <mgmnorthfield.com> and <mgmnorthfieldpark.com> domain names are confusingly similar to Complainant’s MGM mark. 2. Respondent does not have any rights or legitimate interests in the <mgmnorthfield.com> and <mgmnorthfieldpark.com> domain names. 3. Respondent registered and uses the <mgmnorthfield.com> and <mgmnorthfieldpark.com> domain names in bad faith. B. Respondent failed to submit a Response in this proceeding. FINDINGS Complainant, MGM Resorts International, operates resorts worldwide. Complainant holds a registration for the MGM mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,060,489, registered Mar. 1, 1977). Respondent registered the <mgmnorthfield.com> and <mgmnorthfieldpark.com> domain names on May 25, 2018, and uses them to host pay-per-click advertisements. 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." 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 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 (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.”). Identical and/or Confusingly Similar The Panel finds that Complainant’s registration of the MGM mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Respondent’s <mgmnorthfield.com> and <mgmnorthfieldpark.com> domain names are comprised of the MGM mark together with the geographically descriptive terms “Northfield” or “Northfield Park” and the gTLD “.com.” The addition of geographically descriptive terms and a gTLD do not distinguish a domain name from a mark. See Doosan Corporation v. philippe champain, FA 1636675 (Forum Oct. 13, 2015) (finding that geographic designations or terms descriptive of a complainant’s business operations do not remove a domain name from the realm of confusing similarity.); see also Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). The Panel therefore finds that Respondent’s <mgmnorthfield.com> and <mgmnorthfieldpark.com> are confusingly similar to Complainant’s MGM mark. The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i). Rights or Legitimate Interests Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show 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 has no rights or legitimate interests in the <mgmnorthfield.com> or <mgmnorthfieldpark.com> domain names and is not commonly known by the disputed domain names. Complainant has not authorized Respondent to use the MGM mark in any way. The WHOIS information of record identifies the owner of the disputed domain names as “Jill Middleton.” The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent is not commonly known by the <mgmnorthfield.com> or <mgmnorthfieldpark.com> domain names. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name); see also Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). Complainant argues that Respondent’s lack of rights and legitimate interests in the <mgmnorthfield.com> and <mgmnorthfieldpark.com> domain names is demonstrated by its failure to use the domain names to make a bona fide offering of goods and services or for a legitimate or noncommercial or fair use. Complainant demonstrates that the disputed domain names previously resolved to a parked web page that offered the domain names for sale. Offering a disputed domain name for sale does not constitute a bona fide offering of goods or services or a legitimate or noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Twentieth Century Fox Film Corporation v. Diego Ossa, FA1501001602016 (Forum Feb. 26, 2015) (“The Resolving parked page advertises the sale of the domain name with the message ‘Would you like to buy this domain?’ The Panel accepts this offer as demonstrative of Respondent’s willingness to sell the disputed domain name, and finds that such behavior provides additional evidence that Respondent lacks rights or legitimate interests in the disputed domain name.”). The Panel thus finds that Respondent does not have rights or legitimate interests in the <mgmnorthfield.com> or <mgmnorthfieldpark.com> domain names under Policy ¶¶ 4(c)(i) or (iii). Complainant shows that Respondent currently uses the disputed domain names to host pay-per-click advertisements, and argues that this use is also not a use indicative of rights or legitimate interests under Policy ¶¶ 4(c)(i) or (iii). The Panel agrees and finds that Respondent has no rights or legitimate interests in the <mgmnorthfield.com> and <mgmnorthfieldpark.com> domain names under Policy ¶¶ 4(c)(i) or (iii). See Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (”Respondent’s use of <edcorlando.xyz> also does not qualify as a bona fide offering… the <edcorlando.xyz> domain name resolves to a site containing pay-per-click hyperlinks and advertisements… Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering.”). The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii). Registration and Use in Bad Faith Complainant argues that Respondent’s offer to sell the he <mgmnorthfield.com> and <mgmnorthfieldpark.com> domain names for $40,000 each demonstrates bad faith. A respondent’s offer to sell a disputed domain name may demonstrate bad faith per Policy ¶ 4(b)(i). See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA1506001625332 (Forum July 17, 2015) (“A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i).”). Complainant provides screenshots of the disputed domain names’ resolving website showing the offer for sale. The Panel finds that Respondent’s offer to sell the disputed domain names indicates bad faith under Policy ¶ 4(b)(i). Complainant further argues that Respondent’s bad faith is indicated by its use of the <mgmnorthfield.com> and <mgmnorthfieldpark.com> domain names to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites. Specifically, Complainant contends that Respondent’s use of the disputed domain name to profit from pay-per-click hyperlinks demonstrates bad faith. The Panel agrees and finds that Respondent registered the disputed domain names in bad faith under Policy ¶ 4(b)(iv). See Tumblr, Inc. v. Ailing Liu, FA1402001543807 (Forum Mar. 24, 2014) (“Bad faith use and registration exists under Policy ¶ 4(b)(iv) where a respondent uses a confusingly similar domain name to resolve to a website featuring links and advertisements unrelated to complainant’s business and respondent is likely collecting fees.”); see also Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent registered and used the domain name in bad faith under Policy ¶ 4(b)(iv) where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). The Panel finds that 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 <mgmnorthfield.com> and <mgmnorthfieldpark.com> domain name be TRANSFERRED from Respondent to Complainant. Sandra J. Franklin, Panelist Dated: February 21, 2019 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page

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