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New York-New York wins trademark suit over Internet domain name
Sam Morris / Las Vegas Sun
The view of New York-New York from one of the penthouse apartments at Veer Towers at CityCenter.
Wednesday, Aug. 4, 2010 | 4:04 p.m.
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MGM Resorts International has won a trademark infringement lawsuit involving its New York-New York hotel-casino on the Las Vegas Strip, with MGM Resorts winning rights to the potentially valuable Internet domain name newyorknewyork.com.
Attorneys for MGM Resorts’ 2,024-room New York-New New York resort prevailed July 29 when U.S. District Judge Lloyd D. George in Las Vegas issued a default judgment against a company called NewYorkNewYork.com Inc.
The default judgment ordered that the website domain name be transferred to the casino company and that NewYorkNewYork.com Inc. pay the casino company $101,000 in damages – including $100,000 for violating the Anti-cybersquatting Consumer Protection Act.
George’s ruling came in a lawsuit alleging "cybersquatting" that was filed in U.S. District Court in Las Vegas in November.
The hotel-casino company charged in the suit that the website of Tarzana, Calif., man Ronnie Katzin, using the phrase "New York New York," infringed on the Las Vegas hotel-casino's trademarks covering that name for resort and hotel services not provided in the city or state of New York; and for casino services.
The website last year included an image of the Las Vegas casino property, but New York-New York in its lawsuit complained there was no disclaimer that the website had no affiliation with the Las Vegas casino property.
The lawsuit alleged that when users clicked on a banner, they were not re-directed to the hotel's official Web site, www.nynyhotelcasino.com, but instead to a third-party Web site. That site enabled website users to book hotel reservations at the Las Vegas hotel-casino as well as competing Las Vegas hotels.
That, the hotel-casino charged, showed: "Defendants have and/or had a bad faith intent to profit from plaintiff's New York-New York marks."
Katzin, however, said last year that he obtained the website name in about 1996, before the hotel-casino opened, and that he obtained the name as part of his love for the Frank Sinatra song "New York, New York" and to develop a website promoting New York City.
Katzin last year said he was doing the Las Vegas hotel-casino a favor by including an image of the hotel on the site, as many visitors to the site mistakenly went there thinking it was the hotel-casino’s website. He said a link to an Expedia hotel room-booking engine had been authorized by MGM Resorts.
After Katzin and attorneys for New York-New York traded legal briefs and Katzin attended a hearing last month, George issued his ruling against Katzin’s company saying:
--"Defendant registered and used the infringing domain name with the bad faith intent to profit therefrom."
--"Defendant made commercial use of a trademark confusingly similar to plaintiff’s marks by utilizing the infringing domain name to obtain web traffic."
--"Plaintiff and defendant are competitors on the Internet for Internet customers."
Ten months later, Katzin said Wednesday that his problem with the lawsuit is that he has been defending himself and making mistakes because he couldn’t come up with the $100,000 attorneys were saying they would need to take the case.
The casino company, on the other hand, has been represented in the case by as many as four attorneys from the Las Vegas law firm Brownstein Hyatt Farber Schreck.
Katzin, who controls the NewYorkNewYork.com Inc. company, continued Wednesday to deny the trademark infringement and cybersquatting claims against both him personally and against his company.
Katzin reiterated that he developed the www.newyorknewyork.com website years ago with the intent of focusing it on New York City and that’s still his goal, along with raising money to benefit 9/11 victims' families. But first he needs to find an attorney to represent he and his company at a cost he can afford.
The New York-New York casino attorneys, having prevailed against Katzin’s company, are continuing to pursue their claims against Katzin personally, court records show.
Katzin said he’s adamant about not settling, because a settlement could wrongly brand him as a cybersquatter – someone who registers domain names with the bad faith intent of profiting from well-known brands.
"I am not a cybersquatter," Katzin said.
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In 1996 the MGM property did not exist and it was imposssible to book any hotel room online except by email.
I don't think he is a cybersquatter if he owned the domain name before the hotel/casino was established.
Thank God I'm not a lawyer with nothing better to do than troll the internet looking for potential lawsuits like that Righthaven weasel.
There is no way to win this case. Once the law firm has found a violation it is all they need.
The website was not protected by its registration as a trademark. Opps. Time to go to Letterman.
His mistake to be "nice" (if he even was) and put a picture of the casino with a link to a place to make online registrations. If he was doing this solely out of his love for Sinatra and/or to help victims of 9/11 then he never would have put up that link. He did so, because he knew he could profit from the association with the casino - and thus, makes him a cybersquatter.
Our company owns many Geodomains such as Nashville.com, PalmSprings.com, Acapulco.com, etc. When I first saw the headline I was stunned. NewYorkNewYork.com is obviously a Geodomain and the owner acquired it before there was the Las Vegas casino. What could go wrong?
Simply put, he nailed his coffin shut the moment he put that New York New York casino photo on his site. That's the equivalent of chumming the water for trademark attorneys. At that point the site was no longer about NYC. No excuse and he paid the price.
Best,
David J Castello
Castello Cities Internet Network, Inc.
CCIN.com
New York New York is a name that belongs to the great state of New York, and the great City of New York. MGM Resorts Intl. should be paying up to them..
If MGM Resorts Intl., ever puts a picture of the actual city of New York or ever puts a link to the great city of New York or anything related to the city of which the city uses to make a profit, then the city would have a case.
(Love the way the Sun gave City Center, an MGM Resorts property, a plug in the caption. Tad biased there.)
Chunky says:
Yet another case of "Lawyers Gone Wild" and our legal system being dominated by big corporations and greedy attorneys. Mr. Castillo's comment regarding "chumming the waters" is right on target metaphorically.
The "Halls of Justice" are now the "Jaws of Justice".
That's what Chunky thinks!
for some clarity, the hotel/casino was under construction in 1996, the opening was the first week of 1997. the theme, for the resort, was first discussed in the late '80s, but fizzled a bit when the gloom and doom crowd predicted the Mirage opening would kill the city with too many rooms, and then excalibur with its 4000 motel quality rooms. I worked for Marriott at the time, when MGM was only 1/2 partner in NYNY with Primm. I had installed a reservation center in the MGM which booked rooms on the Marriott reservation system for both the MGM Grand and NYNY... so YES, there was a hotel in 1996 and YES, there was a way to book rooms, never mind the telephone sales operation inside MGM that was taking reservations as well as Marriott in 1996.
How can a default judgment be entered when this Katzin guy was showing up and contesting the suit? Does the Sun mean a summary judgment? There is a difference.
http://en.wikipedia.org/wiki/Default_jud...
http://en.wikipedia.org/wiki/Summary_jud...
Focusing on New York City via Las Vegas and the internet. Must be a friend of the lowell's who like to rub up against persons wearing velvet, silk, and lace of the opposite sex in public. No massage parlors for them; public is their forte.