Due to a default judgment, New York-New York Hotel & Casino is now the proud owner of the lucrative geographic domain name, newyorknewyork.com. On November 6, 2009, the MGM Grand, Inc. hotel chain filed a cybersquatting and trademark infringement lawsuit against California resident Ronnie Katzin and his wholly-owned corporation, NewYorkNewYork.com, Inc., regarding the domain name. The hotel chain based its cybersquatting claim on the fact that MGM Grand, Inc. announced the hotel-casino in 1994, filed two trademark applications for NEW YORK NEW YORK on September 13, 1995, and Katzin registered the domain name three months after the trademark filings. What the hotel chain didn’t say is that these registrations were initially denied, and they only obtained them after gaining acquired distinctiveness. The trademarks were finally registered in September 1998, a full year after Katzin had developed the domain name into a comprehensive travel website. Therefore, there was no way the mark “NEW YORK NEW YORK” could have been distinctive at the time of the Domain Name was originally registered, which alludes to a complete absence of cybersquatting.

The real lynchpin in the case occurred when Katzin was alleged to have put up a banner ad that displayed “New York-New York Hotel & Casino,” which visitors could click on and make reservations to that hotel or other hotels in the Las Vegas. According to Katzin, this image linked to a room-booking website operated by Expedia’s Interactive Affiliate Network, which has a deal to sell MGM Mirage rooms. It appears that once the banner ad went up, the hotel chain dove in immediately to file the lawsuit, even though there was dubious infringement, at best. Sadly, because Katzin could not afford legal counsel, the hotel chain was able to use legal process to gain transfer of a domain name worth an estimated $100,000 and a judgment for $100,000 in damages.