ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Bowtie Hospitality LV LLC d/b/a Fontainebleau Las Vegas v. Ahmad Rana, A Rana Case No. D2023-4322 1. The Parties Complainant is Bowtie Hospitality LV LLC d/b/a Fontainebleau Las Vegas, United States of America ("United States"), represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States. Respondents are Ahmad Rana and A Rana, United States. 2. The Domain Names and Registrar The disputed domain names and are registered with GoDaddy.com, LLC (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 18, 2023. On October 18, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 21, 2023, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for multiple underlying registrants which differed from the named Respondent (Registration Private / Domains By Proxy, LLC) and contact information in the Complaint. The Center sent an email communication to Complainant on October 23, 2023, providing the registrant and contact information disclosed by the Registrar and inviting Complainant to either amend the Complaint adding the Registrar-disclosed registrants as the formal Respondents and provide relevant arguments or evidence demonstrating that all the named Respondents are, in fact, the same entity and that all domain names are under common control, or indicate which of the two domain names will no longer be included in the current Complaint. Complainant filed an amendment to the Complaint on October 24, 2023. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for page 2 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 Respondents of the Complaint, and the proceedings commenced on October 25, 2023. In accordance with the Rules, paragraph 5, the due date for Response was November 14, 2023. The email address associated with the Respondents sent an email communication to the Center on October 23, 2023. The Center appointed Georges Nahitchevansky as the sole panelist in this matter on November 17, 2023. 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. 4. Factual Background Complainant, Bowtie Hospitality LV LLC d/b/a Fontainebleau Las Vegas, owns and operates a hotel, casino, retail and entertainment complex in Las Vegas, Nevada that is scheduled to open on December 13, 2023. Complainant, under trademark license agreements that ultimately originate from JS IP LLC, uses the names and marks FONTAINEBLEAU and FB in connection with Complainant's Las Vegas property and operation. Complainant, pursuant to a November 30, 2022, license agreement, is the exclusive licensee of the FONTAINEBLEAU and FB marks. The FONTAINEBLEAU and FB marks are registered in the United States and are owned by JS IP LLC. These include numerous existing registrations for: 1. FONTAINEBLEAU as a word mark, including by way of example Registration Nos. 995,958, 3,061,814, 4,511,008, 4,758,869, and 5,291,294, the earliest of which issued to registration in 1974; and 2. FB as a word mark, including by way of example Registration Nos. 3,677,324, 3,719,296 and 4,067,443, the earliest of which issued to registration in 2009. Complainant owns and uses the domain name to provide information concerning its Las Vegas property and operation. Respondent A Rana, who is based in Honolulu, Hawaii, United States, registered the disputed domain name on October 18, 2022. Respondent Ahmad Rana, also based in Honolulu, Hawaii, United States, registered the domain name on September 12, 2023. On October 13, 2023, an email was sent to Complainant from an individual using a name that differed from both Respondents offering the disputed domain names for sale to Complainant. In that email, the seller noted that Complainant would need both of the disputed domain names for "your Rewards Programs for Fontainebleau Las Vegas." Currently, the disputed domain names each resolve to a parked GoDaddy page offering the disputed domain names for sale. In addition, the disputed domain names are shown on the GoDaddy.com website as being for sale as premium domains name for $2,000,000 each. 5. Preliminary Issue Regarding the Request for Consolidation of Respondents Complainant has submitted a request for consolidation of Respondents A Rana and Ahmad Rana in the same proceeding. In determining whether a single consolidated complaint can be brought against multiple respondents, panels typically look at whether (i) the disputed domain names or the corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. page 3 See section 4.11.2, Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"). Based on the evidence submitted, which is not contested by Respondent, the Panel accepts Complainant's contention that the disputed domain names are subject to common control. The Respondent names used for the disputed domain names are nearly identical, the Respondents are both based in Honolulu, Hawaii, United States, the disputed domain names use the same Registrar, post the identical GoDaddy for sale page and are listed for sale at USD 2 million each, and the email sent to Complainant on October 13, 2023 concerned both disputed domain names. Under the circumstances, the Panel finds that consolidation would be fair and equitable to all Parties. (Respondents in this proceeding will hereinafter be referred to collectively as "Respondent" in the singular form.) 6. Parties' Contentions A. Complainant Complainant maintains that as an exclusive licensee it has standing to initiate this proceeding. Complainant further asserts that it has rights in the FONTAINEBLEAU and FB mark on account of the many United States trademark registrations for the marks and as a result of the "70-year history of the iconic Fontainebleau brand" in the luxury hospitality industry. Complainant argues that the disputed domain names are confusingly similar to Complainant's FONTAINEBLEAU and FB marks as they each fully incorporate either the FONTAINEBLEAU or FB marks. Complainant further argues that the addition of the descriptive word "rewards" in each disputed domain name does not prevent a finding of confusing similarity as the marks FONTAINEBLEAU and FB are clearly recognizable in the disputed domain names. Complainant assert that Respondent does not have rights or legitimate interests in the disputed domain names as (i) Complainant has never authorized or licensed Respondent to use the FONTAINEBLEAU or FB marks, (ii) Respondent is not commonly known by the disputed domain names and has never obtained trademark rights in the FONTAINEBLEAU or FB marks, and (iii) Respondent has simply sought to profit from the disputed domains names by offering them for sale to Complainant for USD 2 million each. Lastly, Complainant contends that Respondent has registered and used the disputed domain names in bad faith for Respondent's profit. In that regard, Complainant argues that because the FONTAINEBLEAU and FB marks are famous and widely known, Respondent knowingly registered the disputed domain names to take advantage of Complainant's rights in those marks, particularly as Respondent offered them for sale for USD 2 million each to Complainant. B. Respondent Respondent did not reply to Complainant's contentions. In the email communication of October 23, 2023, the Respondent stated, "what is your question regarding this". 7. Discussion and Findings Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that: (i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and (iii) the disputed domain names were registered and are being used in bad faith page 4 A. Identical or Confusingly Similar Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See section 1.2.1 of the WIPO Overview 3.0. Here, while Complainant does not own the FONTAINEBLEAU and FB trademarks or the associated registrations, Complainant has provided sufficient evidence that it is the exclusive trademark licensee of the FONTAINEBLEAU and FB marks by virtue of license agreements originating from the trademark owner JS IP LLC. As such, Complainant has sufficient rights in the FONTAINEBLEAU and FB marks under the Policy for purposes of establishing standing to file this Complaint. WIPO Overview 3.0 at section 1.4.1 and relevant cases cited therein. Given that Complainant has established its rights in the FONTAINEBLEAU and FB marks, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the gTLD such as ".com") is identical or confusingly similar with Complainant's mark. See B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010-0842. The threshold for satisfying this first element is low and generally panels have found that fully incorporating the identical mark in a disputed domain name is sufficient to meet the standard of the first element. In the instant proceeding, the disputed domain names are confusingly similar to Complainant's FONTAINEBLEAU and FB marks as they each either fully incorporate the FONTAINEBLEAU or FB mark. The addition of the word "rewards" at the tail of the disputed domain names does not prevent a finding of confusing similarity between the disputed domain name and Complainant's FONTAINEBLEAU or FB marks as those marks are clearly recognizable in the disputed domain names. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in Complainant's FONTAINEBLEAU and FB marks and in showing that the disputed domain names are confusingly similar to those trademarks. B. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP. The evidence submitted in this proceeding shows that since registering the disputed domain names, Respondent has only offered them for sale for Respondent's profit. Not only has Respondent posted pages at the disputed domain names promoting their sale, but Respondent has also promoted their sale for USD 2 million each through GoDaddy.com. Additionally, Respondent, either using an alias or through another party, contacted Complainant in an attempt to sell the disputed domain names to Complainant. The October 13, 2023 email sent to Complainant makes clear that Respondent was well aware of Complainant and its rights in the FONTAINEBLEAU and FB marks and registered the disputed domain names with the aim of selling them to Complainant for an excessive price. That email not only referred to Complainant's FONTAINEBLEAU property in Las Vegas and its many years of construction, but specifically focused on the use of the disputed domain names for rewards programs offered by Complainant and the need of the disputed domain names by Complainant. Simply put, it is evident that Respondent targeted Complainant in the hopes of making a quick profit. Given that Complainant has established with sufficient evidence that it owns rights in the FONTAINEBLEAU and FB marks, and given that Respondent has failed to appear in this proceeding to explain or defend his actions, the Panel concludes that Respondent does not have a right or legitimate interest in the disputed domain names and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case. page 5 C. Registered and Used in Bad Faith In view of Respondent's actions, as noted above, it is more likely than not that Respondent opportunistically and in bad faith registered and used the disputed domain names for Respondent's profit. The fact that Respondent registered two disputed domain names that specifically relate to Complainant, and which Respondent himself (either using an alias or through another party) knowingly admitted were connected to Complainant, further underscores that Respondent targeted Complainant in an effort to profit from a quick sale of the disputed domain names to Complainant. Indeed, the text of Respondent's October 13, 2023 email to Complainant (whether written by or on behalf of Respondent) highlights Respondent's effort to profit. In that email, Respondent notes as follows: "Given that your casino will be making millions of revenue EACH DAY, I think the price set for these two domains is fair and reasonable. It is simply a drop in the bucket, given that $3.7 Billion dollars have been poured into this casino project over the last 23 years." Needless to say, such actions simply constitute a classic form of cybersquatting. WIPO Overview 3.0 at section 3.1.1 Accordingly, the Panel finds that Complainant succeeds under this element of the Policy. 8. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names and be transferred to Complainant. /Georges Nahitchevansky/ Georges Nahitchevansky Sole Panelist Date: December 1, 2023
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