WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Wynn Resorts Holdings, LLC v. WhoisGuard, Inc., WhoisGuard Protected / Tan Chin howe

Case No. D2020-1825

1. The Parties

The Complainant is Wynn Resorts Holdings, LLC, United States of America (“United States” or “USA”), represented by Mayer Brown LLP, Hong Kong, China.

The Respondent is WhoisGuard, Inc., WhoisGuard Protected, Panama / Tan Chin howe, Cambodia.

2. The Domain Name and Registrar

The disputed domain name <k9wynn.com> (the “Disputed Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 13, 2020. On July 13, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 14, 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 July 15, 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 July 16, 2020

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 23, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 12, 2020. The Respondent sent an email to the Center on July 16, 2020. On July 21, 2020, the Complainant sent an email to the Center regarding its communication with the Respondent on July 16, 2020. The Center notified the Parties it would proceed to Panel Appointment on August 13, 2020. On August 19, 2020, due to an apparent issue with the notification, the Center granted the Respondent a five day period (to August 23, 2020) in which to indicate whether it wished to participate in this proceeding. However, the Center did not hear anything from the Respondent within this period.

The Center appointed Nick J. Gardner as the sole panelist in this matter on August 28, 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 limited liability company established in Nevada, USA. The Complainant is a wholly-owned subsidiary of Wynn Resorts, Limited (“Wynn Resorts”). Wynn Resorts, together with the Complainant and Wynn Resorts’ other subsidiaries (the “Complainant’s Group”) are designers, developers and operators of integrated resorts. The Complainant Group’s integrated resort business model integrates luxury hotel rooms, high-end retail outlets, dining and entertainment options, meeting space and gaming. Wynn Resorts has been listed on the Nasdaq Stock Exchange since 2002 and included as part of the NASDAQ-100 Index since 2004. The Complainant’s principal places of business are Macau, China, the USA, and China.

The Complaint owns a number of registered trademarks for the word “wynn” in the United States, European Union and Asia (including but not limited to China, Hong Kong, China, Cambodia, Thailand, Viet Nam and Singapore) – see for example United States registration no 2977861 registered on July 26, 2005. These trademarks are referred to in this decision as the “WYNN trademark”.

The Complainant promotes its business and offers products for sale via various websites which are linked to domain names incorporating the word “wynn” as follows – <wynnresorts.com>, created on May 2, 2000; <wynnlasvegas.com>, created on July 23, 2000; <wynnpoker.com>, created on February 14, 2001; <wynnpalace.com>, created on April 6, 2001 and <wynnmacau.com>, created on July 11, 2002.

The Disputed Domain Name was registered on June 4, 2020. Filed evidence shows it is linked to an online interactive casino website (the “Respondent’s Website”) the content of which is predominately in English and which provides services competitive with some services that the Complainant provides.

5. Parties’ Contentions

A. Complainant

The Complainant says the Disputed Domain Name incorporates the WYNN trademark in its entirety. The only difference is the inclusion of a random letter and number “k9” as a prefix of the Disputed Domain Name, of which “wynn” is the prominent part and the addition of letters and numbers such as “k9” has no distinctiveness and does nothing to eliminate or lessen the degree of confusing similarity between the Disputed Domain Name and the WYNN trademark.

The Complainant relies on the reasoning in complaints raised by the Complainant against <wyn138.com>, <wynn138.com> and <wynn138.net>, and <wynn100.com> which found that the addition of random numbers (such as “138” and “100”) in the domain names does not prevent a finding of confusing similarity between the disputed domain names and the Complainant’s mark (see Wynn Resorts Holdings, LLC v. Chang Long Huang, WIPO Case No. D2019-1606 (<wyn138.com>), Wynn Resorts Holdings, LLC v. Registration Private, Domains By Proxy, LLC / Simon Huang, WIPO Case No. D2019-1604 (<wynn138.com> and <wynn138.net>) and Wynn Resorts Holdings, LLC v. xiaoxiao wang, WIPO Case No. D2019-1900 (<wynn100.com>).

The Complainant says the Respondent has no rights or legitimate interests in the term “wynn”.

In consequence, the Complainant alleges that the Disputed Domain Name was registered and is being used in bad faith. The Complainant says it is inconceivable that the Respondent was not aware of the Complainant’s WYNN trademark at the time of registering the Disputed Domain Name. The Respondent’s registration was solely to take advantage of the Complainant’s reputation in the WYNN Trademark and thereby make undue profits by attracting users to gamble on the Respondent’s Website.

B. Respondent

No Response has been received. However, the Respondent sent an email to the Center on July 16, 2020, enquiring about the proceeding.

6. Discussion and Findings

Preliminary Matters

The Panel notes that no formal Response has been received from the Respondent. However, given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar, and the Respondent’s email communication to the Center (from the registrant’s email address as disclosed by the Registrar), then the Panel considers that this satisfies the requirement in paragraph 2(a) of the UDRP Rules to “employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent’s failure to file any formal Response. While the Respondent’s failure to file a formal Response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s failure to file a formal Response (see, e.g., Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909).

The Panel also notes this is a case where one Respondent (“WhoisGuard, Inc., WhoisGuard Protected”) appears to be a privacy or proxy service.

The Panel in this case adopts the approach of most UDRP panels, as outlined in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 4.4.5, as follows:

“Panel discretion
In all cases involving a privacy or proxy service and irrespective of the disclosure of any underlying registrant, the appointed panel retains discretion to determine the respondent against which the case should proceed.

Depending on the facts and circumstances of a particular case, e.g., where a timely disclosure is made, and there is no indication of a relationship beyond the provision of privacy or proxy registration services, a panel may find it appropriate to apply its discretion to record only the underlying registrant as the named respondent. On the other hand, e.g., where there is no clear disclosure, or there is some indication that the privacy or proxy provider is somehow related to the underlying registrant or use of the particular domain name, a panel may find it appropriate to record both the privacy or proxy service and any nominally underlying registrant as the named respondent.”

In the present case the Panel considers the substantive Respondent to be Tan Chin howe and references to the Respondent are to that person.

Substantive Matters

To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:

(i) the Disputed Domain Name is identical with 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;

(iii) the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has rights in the WYNN trademark. The Panel finds the Disputed Domain Name is confusingly similar to this trademark. Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662). It is established that, where a mark is recognizable within a disputed domain name, the disputed domain name is considered to be confusingly similar to the registered mark.

In the present case the letter/number combination “K9” is sometimes used in English as an abbreviation for “canine” usually to refer to a dog, as the combination “K9” is phonetically identical to the word “canine”. However, there is no indication in the present case that this letter/combination is being used here for that purpose and they appear to be simply a random letter/numeral combination which has been combined with the WYNN trademark. In any event, mere addition of a term does not prevent a finding of confusing similarity under the first element (PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189).

It is also well established that the generic Top-Level Domain (“gTLD”), in this case “.com”, does not affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar. See, for example, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.

Accordingly the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.

B. Rights or Legitimate Interests

The Panel finds the WYNN trademark is, on the evidence before the Panel, a term in which the Complainant has developed a significant reputation.

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:

(i) before any notice to the respondent of the dispute, 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) the respondent has been commonly known by the 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 domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the WYNN trademark. The Complainant has prior rights in the WYNN trademark which precede the Respondent’s acquisition of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see, for example, Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

The Panel finds that the Respondent has failed to produce any evidence to establish his rights or legitimate interests in the Disputed Domain Name. Accordingly, the Panel finds the Respondent has no rights or any legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled.

C. Registered and Used in Bad Faith

In the present circumstances the evidence as to the extent of the reputation the Complainant enjoys in the WYNN trademark, and the fact that the Disputed Domain Name was linked to the Respondent’s Website which manifestly provides services which overlap with those the Complainant provides lead the Panel to conclude the registration and use were in bad faith.

Under paragraph 4(b) of the Policy a non-exhaustive list of factors evidencing registration and use in bad faith comprises:

(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.

In the present circumstances the Panel agrees with the Complainant that factor (iv) applies as the Respondent was seeking to achieve commercial gain by using the Complainant’s fame and reputation to attract customers by use of a confusing name. The Panel also notes that the Respondent has not advanced any positive case of good faith use he may have. The Panel infers none exists.

Accordingly, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith and the third condition of paragraph 4(a) of the Policy has been fulfilled.

7. 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 Name <k9wynn.com> be transferred to the Complainant.

Nick J. Gardner
Sole Panelist
Date: September 11, 2020