WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Wynn Resorts Holdings, LLC v. kim kim, wynn
Case No. D2020-0005
1. The Parties
The Complainant is Wynn Resorts Holdings, LLC, United States of America (“United States”), represented by Mayer Brown LLP, Hong Kong, China.
The Respondent is kim kim, wynn, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <wynnpalacecasino.com> is registered with Dotname Korea Corp. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 2, 2020. On January 2, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 21, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 24, 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 January 27, 2020.
On January 24, 2020, the Center notified the Parties in both English and Korean that the language of the registration agreement for the disputed domain name is Korean. On January 27, 2020, the Complainant requested for English to be the language of the proceeding. The Respondent did not submit any request regarding the language of the proceeding.
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 in English and Korean of the Complaint, and the proceedings commenced on February 3, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 23, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 24, 2020.
The Center appointed Young Kim as the sole panelist in this matter on March 13, 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.
4. Factual Background
The Complainant is a subsidiary of the United States group of companies in the field of integrated resorts, which design, develop and operate integrated services providing luxury hotel rooms, high-end retail, an array of dining and entertainment options, meeting space and gaming, etc. The Complainant owns trademark registrations for WYNN, WYNN PALACE and other WYNN-inclusive marks (collectively, the “WYNN Marks”) in many jurisdictions, of which the following are representative for the present proceeding:
Korean Trademark Registration No. 41-0329283 for WYNN PALACE, registered August 12, 2015 in Classes 35, 41, 43, and 44;
Korean Trademark Registration No. 45-0028756 for WYNN, registered August 27, 2009 in Classes 16, 41, and 43; and
Hong Kong Trademark Registration No. 302247660 for WYNN PALACE, registered May 10, 2012 in Classes 35, 41, 43, and 44.
The Complainant also owns several domain names incorporating WYNN Marks, e.g., <wynnpalace.com>, <wynnpoker.com>, etc., and operates websites linked to the domain names.
The disputed domain name <wynnpalacecasino.com> was registered by the Respondent on December 2, 2019.
5. Parties’ Contentions
The Complainant contends that it has rights in the WYNN marks including WYNN PALACE based on its worldwide trademark registrations for WYNN PALACE and other WYNN Marks, including those registered in the Republic of Korea. In addition, the Complainant claims that it has common law rights in the WYNN Marks, claiming that it has developed and is operating renowned integrated resorts under the WYNN marks in the United States, China and Macau since the establishment of the “Wynn Las Vegas” in April 2005. The name of the Complainant’s newest integrated resort, located in Macau, is “Wynn Palace”, which opened in August 2016. The Complainant also argues that its services have always been provided and advertised under and/or by reference to the WYNN Marks. Lastly, the Complainant contends that it owns various WYNN-inclusive domain names including <wynnpalace.com>, the registration dates of which predate the registration dates of the disputed domain name by at least 17 years. The above-mentioned domain names are being used for bona fide business purposes in connection to the Complainant’s business.
Further, the Complainant contends that the disputed domain name is confusingly similar to its well-known trademark WYNN PALACE in which the Complainant has rights.
Moreover, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Specifically, the Complainant asserts that it has not given any license or other right to use the WYNN Marks to the Respondent. The Complainant also contends that the Respondent’s name recorded with the registrar, “wynn”, was only chosen to mask the Respondent’s illegitimate use of the Complainant’s famous trade mark in the disputed domain name.
Lastly, the Complainant contends the disputed domain name has been registered and is being used in bad faith, due to the Respondent’s lack of rights or legitimate interests in the disputed domain name, the fame of the Complainant’s WYNN Marks especially in Asia, the incorporation of “Wynn Palace” in its entirety in the disputed domain name, and the nature of the Respondent’s website which overlaps with the Complainant’s gambling business.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Preliminary Issue: Language of the Proceeding
The registration agreement for the disputed domain name is in Korean. Pursuant to paragraph 11 of the Rules, unless otherwise agreed by the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, i.e., Korean. Here, the Center has preliminarily accepted the Complaint as filed in English, and indicated that it would accept a Response in either English or Korean, subject to a determination by the Panel pursuant to paragraph 11 of the Rules.
Having considered the circumstances of the case, the Panel decides that English shall be adopted as the language of the proceeding under paragraph 11 of the Rules. In coming to this decision, the Panel has taken the following into account:
1) The disputed domain name resolves to a website which is in English; and
2) The Complaint has been submitted in English and it would cause undue delay and expense if the Complainant were required to translate the Complaint and other documents into Korean.
In light of these circumstances, the Panel concludes that it will (1) accept the Complaint in English; and (2) issue a decision in English.
6.2. Substantive Matters
Paragraph 4(a) of the Policy sets forth three requirements which have to be met for the Panel to order the transfer of the disputed domain name to the Complainant. Those requirements are: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith.
The Panel has to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable, pursuant to paragraph 15(a) of the Rules.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the WYNN Marks including WYNN PALACE, in light of their trademark registrations for the marks as well as the Complainant’s extensive use of the WYNN Marks for almost 15 years. Specifically, the Complainant owns a trademark registration for the mark WYNN PALACE in the Republic of Korea, among others, covering casino or gambling services, which was registered four years prior to the registration date of the disputed domain name. Further, the Complainant shows that it started using the WYNN Marks from 2005 continuously and the WYNN Marks, including the WYNN PALACE mark, are well known especially to Asian consumers. On the other hand, the Respondent did not submit any rebuttal arguments.
Further, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s WYNN PALACE trademarks. Specifically, the disputed domain name incorporates the Complainant’s trademark in its entirety, with the only difference being that the disputed domain name includes the generic word “casino” as a suffix. Where the Complainant’s trademark is recognizable within the disputed domain name, the additional other descriptive terms would not prevent a finding of confusing similarity. The nature of such additional terms may however bear on assessment of the second and third elements. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8. Moreover, the addition of a generic Top-Level Domain (“gTLD”) such as “.com” in a domain name may be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark (Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182).
For these reasons, pursuant to the Policy, paragraph 4(a)(i), the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the Respondent carries the burden of demonstrating its rights or legitimate interests in the disputed domain name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1.
The Panel hereby finds that the Complainant has made out a prima facie case.
The Complainant has asserted that the Respondent has no relationship with or authorization from the Complainant to use its trademarks. There is nothing in the record to suggest that the Respondent has made a legitimate noncommercial or fair use of the disputed domain name or has been commonly known by the disputed domain name.
In addition, although the Respondent refers itself as “Wynn Palace Casino” on its website of the disputed domain name, the Panel finds that the company name may not be deemed correspondent to the domain name in connection with a bona fide offering of goods or services by the Respondent. Rather, considering the fame of the WYNN Marks including the WYNN PALACE mark and the fact that the Respondent directly competes with the Complainant in the field of casinos, the disputed domain name and the Respondent’s reference to the WYNN PALACE mark on the website corresponding to the disputed domain name demonstrate the Respondent’s illegitimate attempt to pass off its business as the Complainant’s business and to create confusion as to the source of the services. In this regard, previous UDRP panels have found that the use of a domain name for illegal activity including passing off can never confer rights or legitimate interests on a respondent. See WIPO Overview 3.0, section 2.13. Further, the name “wynn” registered with the registrar is more likely to be a ruse to mask the Respondent’s illegitimate use of the Complainant’s well-known marks in the disputed domain name (BGC Partners, Inc., BGC Partners, L.P. v. Wang Qingsong, WIPO Case No. D2009-0372).
On the other hand, the Respondent has not submitted any rebuttal arguments. Since the Respondent did not effectively rebut the Complainants’ prima facie case that the Respondent had no rights or legitimate interests in the disputed domain name, the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following is sufficient to support a finding of bad faith:
(i) circumstances indicating that the respondent has registered or 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 the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.
In this regard, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith for several reasons. Specifically, the Respondent registered the disputed domain name seven years after the Complainant first registered the WYNN PALACE trade mark (four years after Korean registration date), and three years after the Complainant opened its well-known integrated resort under the mark. Further, the WYNN PALACE mark is incorporated in its entirety in the disputed domain name, and the nature of the business offered on the Respondent’s website of the disputed domain name overlaps with the Complainant’s gambling business. It is inconceivable that the Respondent registered and used the disputed domain name unaware of the direct competitor’s well-known WYNN PALACE or other WYNN Marks.
Moreover, the notification of the Complaint to the Respondent by courier failed due to the wrong address, and the attempt to fax the Complaint failed as well. The email communications sent by the Center to the Respondent at the address registered with the Registrar as well as the postmaster address of the Respondent’s website of the disputed domain name were also undeliverable. The Panel finds that the Respondent provided an incorrect mailing and email addresses when it registered the disputed domain name, which can be evidence of bad faith registration and use in the sense of the Policy. See Association Robert Mazars v. INTEG Kumaran, WIPO Case No. D2009-1679.
As the conduct described above falls squarely within paragraphs 4(b)(iii) and (iv) of the Policy, the Panel concludes that the Respondent registered and used the disputed domain name in bad faith pursuant to the Policy, paragraph 4(a)(iii).
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 name <wynnpalacecasino.com> be transferred to the Complainant.
Date: April 3, 2020