DECISION

Mirage Resorts, Inc. v. Aguilca Consultores

Claim Number:  FA0307000167957

PARTIES

Complainant is Mirage Resorts, Inc., Las Vegas, NV, USA (“Complainant”) represented by Ronald D. Green, of Quirk & Tratos.  Respondent is Aguilca Consultores, San Jose, COSTA RICA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <goldennuggetsportsbook.com> and <goldnuggetsportsbook.com>, registered with Network Solutions, Inc.

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on July 8, 2003; the Forum received a hard copy of the Complaint on July 9, 2003.

On July 10, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain names <goldennuggetsportsbook.com> and <goldnuggetsportsbook.com> are registered with Network Solutions, Inc. and that Respondent is the current registrant of the names. Network Solutions, Inc. verified that Respondent is bound by the Network Solutions, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On July 16, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 5, 2003 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@goldennuggetsportsbook.com and postmaster@goldnuggetsportsbook.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On August 18, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson 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."  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 makes the following assertions:

1. The domain names registered by Respondent,  <goldennuggetsportsbook.com> and <goldnuggetsportsbook.com>, are confusingly similar to Complainant’s GOLDEN NUGGET mark.

2. Respondent has no rights or legitimate interests in the <goldennuggetsportsbook.com> and <goldnuggetsportsbook.com> domain names.

3. Respondent registered and used the <goldennuggetsportsbook.com> and <goldnuggetsportsbook.com> domain names in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, Mirage Resorts, Inc., owns, and through its subsidiary operates, the GOLDEN NUGGET resort and casino hotels. Since 1946 Complainant has used the GOLDEN NUGGET mark for resort and casino hotels in downtown Las Vegas and Laughlin, Nevada that operate under the mark. Complainant obtained several registrations for the GOLDEN NUGGET mark on the Principal Register of the U.S. Patent and Trademark Office (e.g. U.S. Reg. No. 1,082,044, registered on January 10, 1978) and also operates a website under the GOLDEN NUGGET mark at the <goldennugget.com> domain name. Notably, Complainant operates a “sportsbook” at its casino that permits patrons to place monetary bets on sporting events, an activity it may apparently only conduct legally in the state of Nevada.

Respondent, Aguilca Consultores, registered the <goldennuggetsportsbook.com> and <goldnuggetsportsbook.com> domain names June 28, 2002, without license or authorization to use Complainant’s GOLDEN NUGGET mark for any purpose. Respondent uses the disputed domain names to offer online sportsbook and gaming services.

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."

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(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires Complainant to 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.

Identical to and/or Confusingly Similar

Complainant established in this proceeding that it has rights in the GOLDEN NUGGET mark through registration of the mark on the Principal Register of the U.S. Patent and Trademark Office, as well as through widespread use of the mark in commerce. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption).

The domain names registered by Respondent, <goldennuggetsportsbook.com> and <goldnuggetsportsbook.com>, are confusingly similar to Complainant’s GOLDEN NUGGET mark. One of the disputed domain names contains the entirety of Complainant’s mark, while the other is a confusingly similar variation of that mark. In both domain names, the dominant feature is some form of Complainant’s GOLDEN NUGGET mark, with the addition of the descriptive term “sportsbook,” a term that only hightens the confusing similarity between the disputed domain names and Complainant’s mark. See Vivid Video, Inc. v. Tennaro, FA 126646 (Nat. Arb. Forum Nov. 14, 2002) (finding that any distinctiveness resulting from Respondent’s addition of a generic word to Complainant’s mark in a domain name is less significant because Respondent and Complainant operate in the same industry); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to Complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which Complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity).

Accordingly, the Panel finds that the <goldennuggetsportsbook.com> and <goldnuggetsportsbook.com> domain names are confusingly similar to Complainant’s GOLDEN NUGGET mark under Policy ¶ 4(a)(i).

Rights to or Legitimate Interests

Complainant established in this proceeding that it has rights to and legitimate interests in the mark contained within the domain names registered by Respondent.  Complainant also alleges that Respondent uses the disputed domain names to offer, inter alia, sportsbook services that compete directly with those that Complainant offers at its GOLDEN NUGGET casinos, and that Respondent offers these services under Complainant’s mark without license or permission. For this reason, Respondent’s use of the disputed domain names is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain names, and Policy ¶¶ 4(c)(i) and (iii) are inapplicable to Respondent. See Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that Respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with Complainant, was not a bona fide offering of goods or services); see also Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (finding that Respondent’s use of a confusingly similar domain name to operate a pay-per-click search engine, in competition with Complainant, was not a bona fide offering of goods or services).

Given the relative fame of the GOLDEN NUGGET mark in the gambling industry and the fact that Respondent chose to identify itself as “Aguilca Consultores” in its WHOIS contact information, the Panel finds that Respondent is not “commonly known by” the disputed domain names for the purposes of Policy ¶ 4(c)(ii). See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <goldennuggetsportsbook.com> and <goldnuggetsportsbook.com> domain names under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Complainant alleged that Respondent registered and used the <goldennuggetsportsbook.com> and <goldnuggetsportsbook.com> domain names in bad faith. In the field of gambling and sportsbooks, the mark is highly distinctive and recognized as being the mark of Complainant. Respondent recognized this fact when it registered the disputed domain names and used them to compete with Complainant. Respondent’s knowing registration of two domain names incorporating Complainant’s marks and subsequent commercial use of those domain names to compete with Complainant is evidence that Respondent registered the domain names and used them in bad faith pursuant to Policy ¶ 4(b)(iv). See Nat’l Ass’n of  Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (finding that although a trademark involves words that could be generic in a different context, the reputation of that mark in the field where the mark is associated, means that the intentional registration and use of a misspelling of that mark manifests the intent to capitalize on the mark, and constitutes bad faith); see also Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 WIPO Apr. 22, 2000) (finding bad faith where Respondent attempted to attract customers to its website, <efitnesswholesale.com>, and created confusion by offering similar products for sale as Complainant).

The Panel thus finds that Respondent registered and used the <goldennuggetsportsbook.com> and <goldnuggetsportsbook.com> domain names in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <goldennuggetsportsbook.com> and <goldnuggetsportsbook.com> domain names be TRANSFERRED from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

Dated: September 2, 2003.

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