WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mandalay Resort Group v. Universal Internet Technologies, Inc.
Case No. D2002-0589
1. The Parties
The Complainant:
Mandalay Resort Group, of 3950 Las Vegas Boulevard South, Las Vegas, Nevada, 89119, United States of America.
The Respondent:
Universal Internet Technologies, Inc., Bloomsbury, London, WC1E 7QF, United Kingdom.
2. The Domain Name and Registrar
The domain name in issue is (hereafter "the domain name").
The domain name was registered with A, Inc., 1800 Sutter Street, Suite 100, Concord, California 94520, United States of America.
3.Procedural History
(1) The Complaint in this case was filed in email form on June 25, 2002, and in hardcopy on July 2, 2002.
(2) On July 20, 2002, the Complainant made a Supplemental Filing in email form (also filed in hardcopy on July 30, 2002). The Supplemental Filing attested to the Complainant�s unsuccessful attempts to effectuate service of the Complaint on the Respondent at the address provided by the Respondent in the whois record.
(3) The WIPO Arbitration and Mediation Center has found that:
-The Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules for the Uniform Domain Name Dispute Resolution Policy;
-Payment for filing was properly made;
-The Complaint complies with the formal requirements;
-The Complaint was properly notified in accordance with the Rules, paragraph 2(a);
-A Response to the Complaint was not filed;
-The Respondent was appropriately served with a Notice of Default; and that
-The Administrative Panel was properly constituted.
As Panelist, I accept these findings.
(4) As Panelist, I submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
(5) No extensions have been granted or orders issued in advance of this decision.
(6) The language of the proceedings is English.
4. Factual Background
A. The Complainant and its marks
The Complainant Mandalay Resort Group owns, and through its subsidiary operates, the "Circus Circus" resort hotel casino located on the "Strip" in Las Vegas, Nevada, USA. Since at least 1968, the Complainant and its predecessors-in-interest have used the brand "CIRCUS CIRCUS" in connection with its resort hotel casino. Since the property�s opening in 1968, the Complainant and its predecessors-in-interest have continuously used the "CIRCUS CIRCUS" brand in connection with advertising and promoting the property in the United States and around the world. The Complainant and its predecessors-in-interest have spent substantial sums of money each year in advertising and promotions, including print and broadcast media, and on the Internet at . The Complainant and its predecessors-in-interest have used the "CIRCUS CIRCUS" brand extensively on the interior and exterior of the property and on such things as signage, gaming chips and tokens, wearing apparel, various consumer products, souvenirs, and novelty and promotional items, among many others.
The Complainant has two valid and subsisting US trademark registrations for the mark "CIRCUS CIRCUS" in Class 41 for casino services (Regn No 891,114; date of first use October 18, 1968) and in Class 41 for entertainment services in the nature of casinos, and amusement arcades and midways, health club services and Class 42 for hotel, restaurant, lounge, and nightclub services. (Regn No 1,231,412; date of first use in Class 41, October 18, 1968, and in Class 42, May 3, 1974). (Hereafter referred to as the Complainant�s marks).
B. The Respondent
No Response was filed. Nothing further is known about the Respondent.
C. The Use of the Domain Name
As at the time of filing the Complaint the domain name correctly resolved to a website which allowed online gambling, specifically the betting on the outcome of sporting events. The site noted that "sports wagering rules and regulations are based upon the rules and regulations that govern sports betting in Nevada (Las Vegas)."
5. Parties� Contentions
A. The Complainants� assertions
The Complainant asserts that the Respondent�s domain name is identical or confusingly similar to the Complainant�s mark. Specifically, the Complainant asserts:
(1) The domain name contains the entirety of the Complainant�s registered CIRCUS CIRCUS trademark, coupled with the word "sportsbook." � a word which describes some of the very services the Complainant offers under its registered trademark. The Complainant, like most Las Vegas casinos, has a sportsbook located in its casino gaming area which permits patrons to place money bets on sporting events;
(2) The Respondent attempts to further confuse web users by tying itself to Las Vegas by specifically mentioning that its "sports wagering rules and regulations are based upon the rules and regulations that govern sports betting in Nevada (Las Vegas)."
(3) Given the strength of the Complainant�s CIRCUS CIRCUS trademark (almost forty (40) years of continuous use) and the Complainant�s own sportsbook services, the use of the domain name in conjunction with the Respondent�s online sportsbook creates a false impression that the activity connected to the domain name originates from, or is sponsored by, or is associated with the products and services offered by the Complainant under its CIRCUS CIRCUS trademark.
(4) The domain name contains the legal trademarks of Complainant, all of which have been in use for almost forty (40) years. The Complainant is unaware of any use of the CIRCUS CIRCUS mark, including bona fide non-commercial or fair use of the CIRCUS CIRCUS mark, by Respondent prior to the Respondent�s registration of the domain name. The Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the Complainant�s CIRCUS CIRCUS mark in a domain name or in any other manner. Respondent does not have trademark registrations for or and could not obtain registrations because the Complainant�s marks are registered to the Complainant.
The Complainant asserts that the Respondent has no legitimate interest or rights in the domain name. Specifically, the Complainant asserts:
(1) In light of the fact that the Respondent registered the domain name on October 23, 2001, well after Complainant and its predecessors-in-interest first began using the CIRCUS CIRCUS trademarks in 1968, the Complainant�s marks have acquired fame throughout the world. In fact, the "Circus Circus" resort hotel casino is one of the oldest defining properties on the world famous "Las Vegas Strip." The Respondent has not demonstrated any legitimate interest in or right to . In fact, quite the contrary is true � the Respondent is using the fame of the Complainant�s CIRCUS CIRCUS marks to generate traffic to its competing website that offers similar services. The Respondent�s pattern of conduct is evidence of its bad faith registration of the disputed domain name. Further, the fame and reputation of a trademark owner�s rights can demonstrate a respondent�s bad faith intent in registering a domain name that contains a famous mark. See Playboy Enterprises International, Inc. v. Universal Internet Technologies, Inc., WIPO Case No. D2001-0811 at � 5. Here, the Respondent clearly had a bad faith intent when it registered the domain name. Given the fame of the Complainant�s mark, it is not possible to conceive of a plausible circumstance in which the Respondent could legitimately use the disputed domain name. See id. It is also not possible to conceive of a plausible situation in which the Respondent would have been unaware of this fact at the time of registration.
(2) The Respondent has repeatedly engaged in a pattern of such conduct by registering famous trademarks along with the word "sportsbook," only to have them transferred to the rightful trademark owner by Arbitration Decision or Court Order (See e.g., MGM MIRAGE v. Kimmel, et al., Case No. CV-S-01-0760-PMP (PAL) (D. Nev. 2001); New Castle Corp. v. Universal Internet Technologies, Inc., Case No. CV-S-02-0245-JCM (PAL) (D. Nev. 2002). See also, Donald J. Trump and Trump Hotels & Casinos Resorts, Inc. v. Universal Internet Technologies, Inc., NAF Case No. 101578 (December 12, 2001) (transferring the domain names , , , and to plaintiff); Playboy Enterprises International, Inc. v. Universal Internet Technologies, Inc., WIPO Case No. D2001-0811 (September 1, 2001) (transferring the domain names , , , and to plaintiff); Hilton Group and Others v. Universal Internet Technologies, Inc., WIPO Case No. D2001-0812 (July 31, 2001) (transferring the domain names and to plaintiff); National Collegiate Athletic Association v. Universal Internet Technologies, Inc., NAF Case No. 97295 (June 25, 2001) (transferring, among others, the domain names , , , , and to plaintiff));
(3) The Respondent is not commonly known by the domain name and uses a corporate name different that that of the disputed domain name, thus suggesting that the Respondent registered the domain name at issue with the intent of trading on the reputation of and goodwill associated with Complainant;
(4) The Respondent is clearly attempting to identify the domain name with Complainant�s casino, specifically because Nevada is the only state in the United States where sportsbook betting is legal. Thus, the Respondent attempts to tie itself with Las Vegas by hosting a sportsbook on its web site located at the domain name. The Respondent further attempts to identify with the Complainant�s Las Vegas casino by specifically mentioning that Respondent�s rules are based upon those used by sports betting in Las Vegas, Nevada.
The Complainant asserts that the Respondent registered the domain name and is using it in bad faith. Specifically, the Complainant asserts:
(1) It is bad faith to redirect the domain name to an active web site offering online sportsbook and gaming services not provided by the Complainant. Such unauthorized use creates a likelihood of confusion with the Complainant and the Complainant�s trademark;
(2) It is bad faith to register and use a domain name containing a trademark owner�s mark to offer competitive goods or services. See id.;
(3) The Respondent knows or should know that any use of the disputed domain name will cause the Complainant harm. The disputed domain name contains a mark that is so "obviously indicative" of the trademark owner that Respondent�s use of the domain name would "inevitably lead to confusion of some sort." See id; see also eBay Inc. v. Sunho Houg, WIPO Case No. D2000-1633 at � 6 (January 18, 2001) (use of complainant�s entire mark in disputed domain name makes it difficult to infer a legitimate use. The fact that the Respondent provided the registrar with incomplete information in its registration application confirms that the Respondent must have expected that its registration and use of the disputed domain name would harm the Complainant;
(4) Providing incomplete or false information to the registrar is compelling evidence of bad faith registration and use. See id; see also Ticketmaster Corp. v. Dmitri Penn, WIPO Case No. D2000-1550 at � 6 (January 16, 2001) (absence of complete or correct information in the application for registration suggests a desire to create a cover position and make communication difficult and constitutes bad faith); Quixtar Investments, Inc. v. Scott A. Smithberger, et al., WIPO Case No. D2000-0138 at � 6 (August 1, 2000) (use of false registration information to hide true identity is evidence of bad faith registration and use). Respondent�s alleged address is incomplete and its company name does not correspond to a registered legal entity in the United Kingdom, as has been noted by prior complainants and arbitrators in other WIPO actions. See, e.g. Playboy Enterprises International, Inc. v. Universal Internet Technologies, Inc., WIPO Case No. D2001-0811 at � 5. Respondent�s contact information is inaccurate and is not a valid means of contacting Respondent or, in the alternative, is Respondent�s modus operandi obtaining domain names incorporating another�s marks and trading on the same until stopped in an arbitration proceeding.
Accordingly, the Complainant submits that the Panel should order that the domain name be transferred to the Complainant.
B. The Respondent�s assertions
The Respondent has not filed a Response.
6. Discussion and Findings
The Uniform Domain Name Dispute Resolution Policy ("UDRP") adopted by the Internet Corporation for Assigned Names and Numbers on August 26, 1999, applies to domain name registrations made in the namespace. Paragraph 4.a. of the UDRP requires the Complainant to make out three elements to succeed in an administrative proceeding initiated under the UDRP:
1. The Complainant has rights in a trade or service mark, with which Respondent�s domain name is identical or confusingly similar (Paragraph 4.a.(i)); and
2. The Respondent has no rights or legitimate interests in respect of the domain name (Paragraph 4.a.(ii)); and
3. The Respondent registered and is using the domain name in bad faith (Paragraph 4.a.(iii)).
A. The Complainant has rights in a trade or service mark, with which Respondent�s domain name is identical or confusingly similar
There are two requirements that a Complainant must establish under this paragraph; that it has rights in a trade or service mark, and that the domain name is identical or confusingly similar to the marks.
The Complainant provided registration documents for the "CIRCUS CIRCUS" mark in the US in two classes. The Complainant, as registered proprietor of those marks, has established rights in a trademark, sufficient for the purposes of paragraph 4.a.(i).
The second requirement is that the domain name be identical or confusingly similar to the mark. The domain name adopts the Complainant�s mark, with the absence of any spaces, the addition of the word "sportsbook" and the inclusion of the namespace identifier . Previous decisions in the UDRP have, sensibly, concluded that mandatory or technical requirements of the domain name system (DNS) are not relevant to the consideration of identicality or confusing similarity. Thus, the absence of spaces has been ignored in assessing this question since it is not possible to render spaces in the DNS. And the inclusion of the gTLD or ccTLD has, equally, been ignored since this is, obviously, necessary to distinguish one namespace from the other (see e.g. World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D99-0001). I have previously endorsed this position (see British Airways Plc v. Cadmos LLC and Francis R Grenier, WIPO Case No 2002-0612) and continue to agree with this approach. The absence of spaces and the addition of the gTLD in this case does not change the assessment of similarity or identicality within the UDRP.
The only issue therefore is the addition of the word "sportsbook" to the expression "circuscircus". As the Complainant argues, the term "sportsbook" amounts to a description of the type of services offered by the Complainant. Therefore the domain name amounts to the Complainant�s mark, concatenated with one of the types of services offered by the Complainant. It is clear therefore that users may be confused as to the proprietor of the domain name. Many will conclude that the Complainant is running a sportsbook (one of their betting services) at the domain name. As such, I conclude that the domain name is, for the purposes of the UDRP, confusingly similar to the Complainant�s trademark.
The Complainant has shown that it has rights in a trademark, and that the domain name is confusingly similar to this mark. I conclude therefore that the Complainant has satisfied the requirements of paragraph 4.a.(i) of the UDRP.
B. The Respondent has no rights or legitimate interest in respect of the domain name
The Complainant asserts that the Respondent has no rights or legitimate interest in the domain name, as required under paragraph 4.a.(ii) of the UDRP. It makes a number of specific arguments on this point, as provided above in section 5.
Many of the Complainant�s assertions go to the requirements under Paragraph 4.c of the UDRP. This is appropriate, since, in the absence of a Response, I consider it necessary to analyse whether any of the defences provided in Paragraph 4.c. might apply. Paragraph 4.c. of the UDRP provides the following examples to the Respondent:
"(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii)you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
There is no evidence that any of the scenarios of Paragraph 4.c apply here, and the evidence of the resolution of the domain name specifically negatives any assumption of legitimate use by the Respondent. At the time of the filing of the Complaint the domain name resolved to a site which offered gambling and betting services. Clearly the Respondent is seeking to gain commercial advantage of the confusion in the minds of consumers, assuming that the domain name would resolve to a site run by the Complainant. Without any evidence provided by the Respondent of any legitimate interest in the domain name, I am confident that it has none here.
As a result I conclude that, even having considered the possible application of Paragraph 4.c., the Respondent has no rights or legitimate interest in the domain name. I conclude that the Complainant has satisfied the requirements of paragraph 4.a.(ii) of the UDRP.
C. The Respondent registered and is using the domain name in bad faith
The final issue is that of bad faith registration and use by the Respondent. For paragraph 4.a.(iii) to apply, the Complainant must demonstrate the conjunctive requirements that the Respondent registered the domain name in bad faith and continues to use it in bad faith. The Complainants make numerous submissions in relation to this point (see section 5, above).
Paragraph 4.b. of the UDRP provides exemplar scenarios which will be sufficient to establish the requirements of Paragraph 4.a.(iii). Paragraph 4.b. states:
"For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
The most relevant of these is paragraph 4.b.(iv). The Respondent�s website offered the same sort of services as that offered by the Complainant in their physical casino. The Respondent intentionally attempted to attract, for commercial gain, internet users to their web site, by creating a likelihood of confusion with the Complainant�s mark as to the source, sponsorship, affiliation or endorsement of the web site. Users who are aware of the CIRCUS CIRCUS casino might realistically assume that the casino would offer a sportsbook at the domain name . Registration and use of the domain name in this way falls clearly into the exemplar of Paragraph 4.b.(iv).
It may also be the case that paragraph paragraph 4.b.(ii) is also relevant here, since it seems that the Respondent has engaged in a pattern of abusive registrations. And the Complainant argues that the fictitious whois address is also evidence of bad faith. I make no rulings on this bases, since it is simpler to resolve the issue by application of paragraph 4.b.(iv). I therefore base my conclusion on that paragraph.
There has therefore been bad faith registration and use in this case. I conclude that the Complainant has satisfied paragraph 4.a.(iii) of the UDRP.
7. Decision
The Complainant has made out all of the elements of paragraph 4.a. of the Uniform Domain Name Dispute Resolution Policy.
Pursuant to Paragraph 4.i. of the Uniform Domain Name Dispute Resolution Policy and Rule 15 of the Rules for the Uniform Domain Name Dispute Resolution Policy, the requested remedy is granted.
I hereby order that the domain name be transferred forthwith to the Complainant.
Dan Hunter
Sole Panelist
Dated: August 22, 2002
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