WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
MGM Mirage & the Primadonna Company, LLC v. Young Joon Choi
Case No. DBIZ2001-00036
1. The Parties
The Complainants are MGM Mirage, a Delaware corporation with its principal place of business in Las Vegas, NV, U.S.A. and The Primadonna Company LLC, a Nevada limited liability company with its principal place of business in Las Vegas, NV, U.S.A. The Complainants are represented by Mr. John L. Krieger of Quirk & Tratos, Attorneys, of Las Vegas, NV, U.S.A.
The Respondent is Young Joon Choi of Seoul, Republic of Korea. The Respondent has filed a Response and represents himself.
2. The Domain Name and Registrar
The domain name at issue is <primadonna.biz>. The domain name is registered with YesNIC Co. Ltd. of Seoul, Republic of Korea ("the Registrar"). The domain name was registered on November 19, 2001.
3. Procedural History
The Complaint was received on December 14, 2001, by the World Intellectual Property Arbitration and Mediation Center ("WIPO Center"). The Complaint was made pursuant to the Start-up Trademark Opposition Policy for .BIZ adopted by NeuLevel Inc. and approved by ICANN on May 11, 2001, ("the STOP Policy") and the Rules under that Policy ("the STOP Rules").
The STOP Policy is incorporated into the Respondent’s registration agreement with the Registrar. Respondent is obliged to submit to and participate in a mandatory administrative proceeding in the event of a Complaint concerning the domain name registered.
Having verified that the Complaint satisfied the formal requirements of the STOP Policy and the STOP Rules, the WIPO Center on December 21, 2001, transmitted by post-courier and by email a Notification of STOP Complaint and Commencement of Administrative Proceedings to the Respondent. A copy of the Complaint was also emailed to the Registrar and ICANN.
The Respondent was advised that a Response to the Complaint was required within 20 calendar days. The Respondent was advised that any Response should be communicated, in accordance with the Rules, by hard copy and by email. An unofficial Response not in the form provided in the STOP Rules was filed by the Respondent on January 8, 2002.
The WIPO Center invited the Honorable Sir Ian Barker QC of Auckland, New Zealand to serve as Sole Panelist in the case. It transmitted to him a statement of acceptance and requested a declaration of impartiality and independence. The STOP Policy requires that the Complaint be determined by a sole Panelist.
The Honorable Sir Ian Barker QC advised his acceptance and forwarded to the Center his statement of impartiality and independence. The Panelist finds that the Administrative Panel was properly constituted in accordance with the STOP Rules and the WIPO Supplemental STOP Rules.
On January 25, 2002, WIPO Center forwarded to the Panel by courier the relevant submissions and the record.
The Panel has independently determined and agrees with the assessment of WIPO Center that the Complaint meets the formal requirements of the STOP Policy, the STOP Rules and the WIPO Supplemental STOP Rules.
The Complainant has paid the necessary fees to the WIPO Center.
4. Factual Background
(A) Complainant, The Primadonna Company, LLC ("Primadonna") is a wholly owned subsidiary of Complainant MGM MIRAGE ("MGMM"). Primadonna owns and operates several resort hotel casinos near the border of California and Nevada.
(B) Since 1990, Primadonna and its predecessors-in-interest have continuously used the PRIMADONNA marks in connection with advertising and promoting the Primadonna Resort Casino in the United States and around the world. Primadonna and its predecessors-in-interest have spent millions of dollars each year in advertising and promoting the PRIMADONNA trademarks, services, and image. Primadonna and its predecessors-in-interest have made extensive use of the PRIMADONNA trademarks on signage, wearing apparel, souvenirs and promotional materials.
(C) PRIMADONNA is a service mark owned by Primadonna and registered on the Principal Register of the United States Patent and Trademark Office:
Registration No: 1,793,908
Registration Date: September 21, 1993
Services: Casino services, in class 41; hotel services, in class 42
Date of first use: May 21, 1990
(D) Primadonna owns other U.S. registered marks that incorporate the term PRIMADONNA in conjunction with additional terms, such as, for example, PRIMADONNA RESORT & CASINO (and design).
5. Parties’ Contentions
The domain name <primadonna.biz> is composed of a letter string that is identical to Complainants’ PRIMADONNA mark. Given the strength of Complainants’ PRIMADONNA mark alone, consumers encountering Respondent’s domain name will be confused and mistakenly assume that the <primadonna.biz> domain name originates from, or is sponsored by, or is associated with the products and services offered by Complainants under the PRIMADONNA marks.
Respondent has no rights or legitimate interests in the domain name <primadonna.biz>. Registration of the <primadonna.biz> domain name occurred on November 19, 2001, well after Complainants and their predecessors-in-interest began using the PRIMADONNA mark in 1990. Complainants are unaware of any legitimate use of the marks by Respondent, prior to his registering the <primadonna.biz> domain name. The <primadonna.biz> domain name is identical to Complainants’ PRIMADONNA mark, which mark is distinctive and famous.
For the foregoing reasons, Respondent has registered the <primadonna.biz> domain name in bad faith.
It is difficult to discern the Respondent’s position from the two emails which he sent to WIPO Center by way of unofficial Response. Clearly, he has difficulties in communicating in and understanding English. He states that he used a web-based translation tool to formulate his email in English. In his first email, he seems to apologize for using the Complainants’ mark in the domain name and hints that he did not know that he might have been infringing. He states that he was setting up a site called primadonna "in the process of planning the site against the woman". He also stated: "When I register a domain, it knew the multi-branch regulations regarding a .biz name well (Start-up Trademark Opposition Policy for .BIZ, adopted by NeuLevel, Inc.), but recently it is knowing." In the second email, he complains about the documents being in English and hints at demanding compensation. He stated also: "and the possibility you taking back the primadonna.biz in order to be, it will co-ordinate. I want solving a problem with harmonious relationship I am delivered with in the person where this letter has the primadonnna.biz right of ownership."
6. Discussion and Findings
Under the STOP Policy, a Complaint can only be filed by an "IP Claimant" who had filed an IP Claim for a particular alphanumeric string. If that string becomes registered as a .BIZ domain name, NeuLevel, the Registry operator of the .BIZ gTLD notifies the IP Claimant and invites it to initiate a STOP proceeding within 20 days. NeuLevel determines priority if there are multiple claimants on a randomized basis (the STOP Policy Paragraph 4(2)(i)). Only the priority claimant will be invited to initiate a STOP complaint, which is allocated a "ticket number" which allows dispute resolution providers to verify whether a STOP Complaint is filed by the priority claimant. The service provider (in this case WIPO Center) is required to advise the Panelist if a given domain name in dispute is subject to more than one claim. In the present case, no such advice has been given to the Panel.
Under STOP, the Complainant must show:
(a) That the domain name is identical to the Complainant’s trademark or service mark (Paragraph 4(a)(i)).
(b) That the Respondent has no rights or legitimate interests in the domain name (Paragraph 4(a)(ii))
(c) That the domain name was either registered or used in bad faith (Paragraph 4(a)(iii)).
A Respondent may demonstrate a right or legitimate interest in a domain name. Circumstances similar to those under the Uniform Domain Name Dispute Resolution Policy of ICANN (the UDRP) can be invoked by a Respondent to demonstrate rights or legitimate interests.
Likewise, the instances of bad faith exemplified in the UDRP can be invoked by a Complainant. However, because the STOP Policy and STOP Rules come into play shortly after registration of a domain name, the focus of attention will be on bad faith at the time of registration.
In the present case, the disputed domain name <primadonna.biz> is identical with the Complainants’ Primadonna mark. The Complainants gave no right to the Respondent to use their mark nor has the Respondent asserted any right or legitimate interests in the mark. The Complainant has proved the first two criteria.
As to the bad faith criterion, Complainants have to prove that the domain name was registered in bad faith. In the rather garbled unofficial Response, there is a hint of a claim that Respondent in Korea did not know of the fame of the Complainants’ marks and reputation. There is no evidence of registration of the marks in Korea, although the Complainant alleges broadly that the fame of the marks extends "around the world".
An inference of bad faith on the part of the Respondent would have been enhanced had the Complainants registered the mark in Korea or else produced evidence that the Complainants and the mark had enjoyed some exposure to the Korean market.
The .BIZ initiative is new. Registrants of .BIZ domain names should be aware of the process into which they were buying. Respondent seems to indicate that he knew of the .biz "multi-branch regulations". He included a reference to the STOP Policy in his Response. Central to the STOP Policy is the right of an IP Claimant or Claimants to complain about a domain name registration within a limited time after registration. An applicant for registration of a domain name has to warrant to the Registrar, inter alia, that registration of the chosen domain name will not infringe upon or otherwise violate the rights of a third party. The STOP Policy also places responsibility to determine whether the domain registration infringes another’s rights squarely on the registrant.
If the warranty to the Registrar is to be regarded as anything other than reckless (i.e. made without caring whether it be true or false) then a registrant should take some reasonable steps to satisfy him/herself that the warranty is true. For example, an on-line search of the U.S. Patent Register might not be an unreasonable precaution for a US registrant to take before attempting a .BIZ registration. There have been some cases under the UDRP where bad faith registration has been inferred from constructive notice of a mark registered in the jurisdiction where a Respondent resided.
In the present case, there is no evidence of any steps taken by the Respondent to discharge his responsibility under the STOP Policy to determine whether the domain name registration impinged another’s rights. Whilst acknowledging that the Respondent’s declaration may well have been made without a proper check as to its accuracy, it is stretching the constructive notice theory too far to say that a registrant must conduct a worldwide trademark search in order to make an accurate declaration to a Registrar. In the present case, had the Respondent made a search of the Korean trademark register, he would have found no reference to the Complainant’s marks, for the simple reason that they had not been registered in that country. Nor is there any evidence to show that Complainant and its marks had any exposure to or reputation in Korea.
Accordingly, in the particular circumstance of the present case, the Panel is not prepared to extend the notion of constructive notice of a mark. The case falls to be determined like so many previous ones under the UDRP where Complainant with a mark in one country has not discharged the onus of proving that Respondent in another country knew of its mark at the time of registration. For that reason, bad faith registration cannot be inferred. The fact too that the words are to some extent generic (i.e. Italian for ‘first lady’ or English for ‘a celebrity performer’) cannot assist the Complainant.
Cases such as KCTS Television Inc v Get-on-the-Web Ltd (WIPO D2001-0154) and VZ Vermögens Zentrum AG v Anything.com (D2000-0527) are but two examples of this principle which is fairly well entrenched in WIPO jurisprudence.
The Panel is cognizant of the fact that .BIZ being a new initiative may have contributed to the limited case record. The Panel, nevertheless, finds that, based on the record provided, the Complainant has failed to establish bad faith registration on the part of the Respondent.
For the foregoing reasons, the Panel decides that the Complaint be denied.
Hon. Sir Ian Barker, Q.C.
Dated: February 14, 2002