The Complainant is Wynn Resorts Holdings, LLC, United States of America (“United States”), represented by Mayer Brown LLP, China.
The Respondent is Registration Private, Domains By Proxy, LLC, United States / Simon Huang, Taiwan Province of China.
The disputed domain names <wynn138.com> and <wynn138.net> are registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint regarding the disputed domain name <wynn138.com> was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 9, 2019. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name <wynn138.com>. On July 10, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name <wynn138.com> which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 10, 2019 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 July 17, 2019, that amended the name and contact information of the Respondent and also added the disputed domain name <wynn138.net>. On July 17, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name <wynn138.net>. On July 17, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
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 July 22, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 11, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 12, 2019.
The Center appointed Matthew Kennedy as the sole panelist in this matter on August 16, 2019. 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.
On August 22, 2019, noting an oversight in the notification of the Complaint to one of the Respondent’s email addresses, and out of an abundance of caution, the Panel issued Procedural Order No.1 inviting the Respondent to indicate by August 27, 2019, whether the Respondent wishes to participate in the proceeding. No reply from the Respondent was received by the Center.
The Complainant is part of the Wynn corporate group, which designs, develops and operates resorts that offer gaming and other services. One of the Complainant group’s resorts is called “Wynn Macau”, which opened in 2006. Wynn is also known as “永利” in Chinese and the Wynn corporate group often uses the Wynn name in a fancy handwritten script (the “Wynn logo”). The Complainant has registered multiple trademarks in multiple jurisdictions including Chinese trademark registration number 5619197 for WYNN, registered on October 21, 2009, specifying services in class 41 including online gaming services. That trademark registration remains current. The Complainant has also registered multiple domain names that begin with the name “Wynn”, including <wynnresorts.com> (registered May 2, 2000) and <wynnmacau.com> (registered July 11, 2002). It uses these domain names in connection with official websites to provide information about its resorts.
The Respondent is an individual resident in Taiwan Province of China.
The disputed domain name <wynn138.com> was registered on December 18, 2018 and the disputed domain name <wynn138.net> was registered on May 21, 2019. At the time at which the Complaint was filed, the disputed domain names resolved to almost identical gambling websites in simplified Chinese that falsely claimed to be the official site of the Complainant’s Wynn Macau resort. The websites prominently displayed Wynn’s Chinese name, 永利, and the Wynn logo, and displayed images of the Complainant’s Wynn Macau resort. At the time of this decision, the disputed domain names no longer resolve to any active websites.
The numeral 138 is often considered auspicious in Chinese because it is phonetically similar to “一生发”, meaning to be rich all one’s life.
The disputed domain names are confusingly similar to the Complainant’s WYNN trademark. They both wholly incorporate that mark.
The Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant has not licensed, consented to or otherwise authorized the Respondent’s use of its WYNN trademark in the disputed domain names or at all. The Respondent’s name is “Simon Huang” and not the disputed domain names. The Respondent is using the disputed domain names to pass off his business as the Complainant’s and to create confusion.
The disputed domain names were registered and are being used in bad faith. The unauthorized use of the WYNN trademark and pictures of the Complainant’s Wynn Macau resort show that the Respondent is aware of the Complainant and its trademarks. The Respondent’s websites are intended to confuse the public into believing that the Respondent has some association with the Complainant’s group.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
Based on the evidence submitted, the Panel finds that the Complainant has rights in the WYNN trademark.
The disputed domain names wholly incorporate the WYNN trademark as their initial and dominant element. They contain two additional elements: the numeral “138” and a generic Top-Level Domain (“gTLD”) suffix, either “.com” or “.net”. As a mere numeral, “138” does not prevent a finding of confusing similarity between the disputed domain names and the Complainant’s mark. A gTLD suffix is generally incapable of dispelling confusing similarity between a domain name and a trademark for the purposes of the Policy.
Therefore, the Panel finds that the disputed domain names are confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.
Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
As regards the first circumstance, the disputed domain names resolved to websites that falsely claimed to be the official website of the Complainant’s Wynn Macau resort. The disputed domain names are confusingly similar to the Complainant’s WYNN trademark. The Complainant submits that it has not licensed, consented to or otherwise authorized the Respondent’s use of its WYNN trademark in the disputed domain names. This shows that the Respondent’s use of the disputed domain names is not in connection with a bona fide offering of goods or services within the terms of paragraph 4(c)(i) of the Policy.
As regards the second circumstance, the Registrar’s WhoIs database indicates that the Respondent’s name is “Simon Huang” not “wynn138” nor “wynn”. There is no evidence indicating that the Respondent has been commonly known by either of the disputed domain names within the terms of paragraph 4(c)(ii) of the Policy.
As regards the third circumstance, the disputed domain names resolved to gaming websites. That is not a legitimate noncommercial or fair use within the terms of paragraph 4(c)(iii) of the Policy.
In view of the above circumstances, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent did not rebut that prima facie case because he did not respond to the Complaint.
Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant has satisfied the second element in paragraph 4(a) of the Policy.
Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows:
“(iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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.”
As regards registration, the disputed domain names were registered after the Complainant’s trademark registrations. They resolved to websites that display the Complainant’s Chinese name “永利”, its Wynn logo and images of the Complainant’s Wynn Macau resort. This gives the Panel reason to find that the Respondent was aware of the Complainant and its mark at the time of registration of the disputed domain names, and that he registered the disputed domain names in bad faith.
As regards use, the disputed domain names resolved to almost identical gaming websites that falsely claimed to be the official site of the Complainant’s Wynn Macau resort. Therefore, the Panel finds that the Respondent uses the disputed domain names intentionally to attract Internet users to his site by creating a likelihood of confusion with the Complainant’s WYNN mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s site. This use is intentional and either for the commercial benefit of the Respondent or for the operators of gaming websites to which his sites link, or both. In any of these scenarios, the Respondent’s use is for commercial gain within the terms of paragraph 4(b)(iv) of the Policy.
Therefore, the Panel finds that the disputed domain names have been registered and are being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the Policy.
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 <wynn138.com> and <wynn138.net> be transferred to the Complainant.
Matthew Kennedy
Sole Panelist
Date: August 28, 2019