The Complainant is Wynn Resorts Holdings, LLC, United States of America (“United States”), represented by Mayer Brown LLP, Hong Kong, China.
The Respondent is Registration Private, Domains By Proxy, LLC, United States / ?? ?, Philippines.
The disputed domain names <wyn000.com>, <wyn001.com>, <wyn222.com>, <wyn444.com> and <wyn6688.com> (the “Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 13, 2020. On February 13, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On February 14, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 17, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on February 18, 2020.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 20, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 11, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 13, 2020.
The Center appointed Karen Fong as the sole panelist in this matter on March 23, 2020. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Complainant and its group of companies (the “Complainant”) operate integrated luxury resorts which include gaming and entertainment services under the trade mark WYNN. Amongst its various projects, the Complainant developed and operates “Wynn Las Vegas” (opened in April 2005) and “Encore at Wynn Las Vegas” (opened in December 2008) located on the Las Vegas Strip. The two resorts feature 192,000 square feet of casino space and hotels with 4,750 guest rooms, suites and villas as well as food and beverage outlets, convention and meeting spaces, a theatre, night clubs, a beach club and high end retail space. The Complainant also developed and operates three resorts in Macau, China, “Wynn Macau” (opened in September 2006), “Encore Tower at Wynn Macau” (opened in April 2010) and “Wynn Palace” (opened in August 2016). Like the Las Vegas resorts, the resorts in Macau feature casino space, hotels, food and beverage outlets and theatrical space for entertainment.
The Complainant has a large portfolio of trade marks in many different territories. The earliest trade mark for WYNN submitted in evidence, United States trade mark registration No. 2977861 dates back to July 26, 2005 (the “Trade Mark”). The Complainant also own trade mark registrations for WYNN in logo form and the Chinese translation for the mark WYNN, 永利 and 永利澳门 (the Chinese translation for Wynn Macau) (the “Chinese Trade Marks”), all of which it uses in connection with its business.
The Complainant owns and uses many domain names which incorporate the Trade Mark including: <wynnresorts.com>, <wynnlasvegas.com>, <wynnpoker.com>, <wynnpalace.com> and <wynnmacau.com>.
The Domain Names were all registered on January 18, 2020 originally in the name of a privacy/proxy registration service. The underlying registrant is unnamed and the Registrar confirmed that the name is listed as “?? ?” with an address in Manila, Philippines. The Domain Names are all connected to the websites which are online interactive casino websites entirely in simplified Chinese (the “Websites”). The Websites feature the Trade Mark as well as the WYNN logo trade mark as well as the Chinese Trade Marks. The Websites feature images of the Complainant’s Wynn Macau Resort and the Websites also purport to be the “official direct operation” of Wynn Macau. The Websites also state the following misleading information:
- Wynn Macau Casino was registered in the Philippines;
- Wynn Macau Cason obtained E-Casino and Sports betting Licences from the First Cagayan Leisure and Resort Corporation;
- The Websites operate 24 hours a day 7 days a week.
The Complainant contends that the Domain Names are confusingly similar to the Trade Mark, the Respondent has no rights or legitimate interests with respect to the Domain Names and that the Domain Names were registered and are being used in bad faith. The Complainant requests transfer of the Domain Names.
The Respondent did not reply to the Complainant’s contentions.
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove each of the following, namely that:
(i) the Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) the Domain Names were registered and are being used in bad faith.
The Panel is satisfied that the Complainant has established that it has rights to the Trade Mark.
The threshold test for confusing similarity involves the comparison between the trade mark and the domain name itself to establish if the domain name is identical or confusingly similar to the complainant’s trade mark. The trade mark would generally have to be recognizable within the domain name. In this case the Domain Names consist of a misspelling of the Trade Mark so that the “n” at the end of WYNN is missing and each Domain Name includes a combination of numerals at the end such as “000”, “001”, “222”, “444” and “6688”.
It is well established that a domain name which consists of a common, obvious, or intentional misspelling of a trade mark is considered to be confusingly similar to the relevant mark for the purposes of the first element. This stems from the fact that the domain name contains sufficiently recognizable aspects of the relevant mark (See section 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). “Wyn” in the Domain Names is a typical typosquatting as it is clearly a misspelling of the Trade Mark. The addition of different numerals in the Domain Names does not prevent a finding of confusing similarity under the first element (see section 1.8 of the WIPO Overview 3.0).
For the purposes of assessing identity or confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the Top-Level Domain (“TLD”) irrespective of the particular TLD and the ordinary meaning ascribed to a particular TLD. It is viewed as a standard registration requirement.
The Panel finds that the Domain Names are confusingly similar to a trade mark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers, or to tarnish the trade mark or service mark at issue.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in section 2.1 of the WIPO Overview 3.0 that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with relevant allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with evidence of relevant rights or legitimate interests, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.
The Complainant contends that it has not licensed, consented or otherwise authorised the Respondent to use the Trade Mark in relation to the Domain Names. There is no evidence that the Respondent is commonly known by the Domain Names as it is in fact that the Respondent’s name confirmed by the Registrar as “?? ?”.
The Respondent cannot assert that it was using or made demonstrable preparations to use the Domain Names in connection with a bona fide offering of goods or services. The Domain Names resolve to the Websites which bear the Trade Mark. They purport to be the Complainant or authorized by it. Firstly, they offer online casino services which are part of the Complainant’s core activities. The Websites also reference the Complainant and bears the Chinese Trade Marks, the WYNN logo as well as images of the Complainant’s resort. Such use is not bona fide use as it is clearly a case where a respondent is seeking to unduly profit from the complainant’s goodwill and reputation.
As the Websites are commercial websites clearly being used for commercial gain, they do not amount to legitimate noncommercial or fair use under the Policy.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not provided any reasons why it chose to register the misspelling of a trade mark which it has no connection to. The Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Names.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names that the requirements of paragraph 4(a)(ii) of the Policy therefore are fulfilled.
To succeed under the Policy, the Complainant must show that the Domain Names have been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent must have been aware of the Trade Mark when it registered the Domain Names. It is implausible that it was unaware of the Complainant when it registered the Domain Names given that all five Domain Names include misspellings of the Trade Mark and the popularity of the Trade Mark. Section 3.2.2 of the WIPO Overview 3.0 states the following:
“Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark.”
It is inconceivable that the Domain Names were selected by the Respondent without the Complainant in mind. As outlined under the second element above, the clear absence of rights or legitimate interests coupled with no credible explanation for the Respondent’s choice of the Domain Names is also a significant factor to consider (as stated in section 3.1.1 of the WIPO Overview 3.0). The Domain Names fall into the category stated above and the Panel finds that registration is in bad faith.
Further, the use of the Domain Names is in bad faith. Firstly, there is a presumption of bad faith in the registration and use of a domain name in typosquatting cases. As stated in TPI Holdings, Inc. v. LaPorte Holdings, WIPO Case No. D2006-0235, typosquatting — intentionally adding or deleting a letter or two, or transposing letters in, a valid mark of another in one’s domain name — is presumptive evidence of bad faith in registration and use of a disputed domain name.
The Respondent’s use of the Websites also supports a finding that the Respondent has registered the Domain Names, with a clear intention on the part of the Respondent to attract for commercial gain by confusing and misleading Internet users into believing that the Websites and the services provided have been authorised or endorsed by the Complainant. The Websites provide casino services which are part of the Complainant’s core business and bears the Trade Mark and other signs and images of the Complainant so as to pass off the Websites as being that of or somehow connected to the Complainant. This is clearly bad faith under paragraph 4(b)(iv) of the Policy.
In addition, the fact that the Respondent used a privacy/proxy registration service and then failed to provide details of its identity is additional evidence of bad faith.
Thus the Panel concludes that the Respondent’s registration and use of the Domain Names are in bad faith that the requirements of paragraph 4(a)(iii) of the Policy therefore are fulfilled.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <wyn000.com>, <wyn001.com>, <wyn222.com>, <wyn444.com> and <wyn6688.com> be transferred to the Complainant.
Date: March 31, 2020
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