For the casual observer, anything with the words “New York” inspires images of the “big apple” and possibly a Frank Sinatra song, but Las Vegas usually is nowhere in the vicinity.

Recently, however, a “New York” sized lawsuit was brought against NewYorkNewYork.com Inc. by MGM, the owner of the New York, New York, attraction casino.

This lawsuit is around the contention that for violating the Anti-cybersquatting Consumer Protection Act, the company known as NewYorkNewYork.com Inc. will pay $100,000 for violating the law, and then pay MGM Resorts International  $101,000 in damages.

In addition, the possible rights to the domain name newyorknewyork.com may now reside with MGM, pending further litigation.

To date, the lawsuit is in MGM’s favor but pending the securing of counsel, the defendant promises to return to court.

The Judge in this round of litigation, based his decision around the idea that the case was well proven that both plaintiff and defendant are competitors on the Internet.

It was further established that the defendant registered and used NewYorkNewYork.com with the bad faith intent to profit from it, by using a known trademark in a manner confusingly similar to plaintiff’s marks; essentially demonstrating bad faith usage of NewYorkNewYork.com to obtain web traffic.

The ACPA, and most other legal entities, use certain criteria to determine whether “bad faith” applies; first and foremost is to determine if the intention to profit from the use of the domain exists.

Then it needs to be established whether the domain name registrant has trademark rights or other intellectual property rights in the dispute; if this can be determined then many times the dispute can end here, if not then there are other factors that can be used.

For example; by looking at the domain, you can usually see if the registrant has a non-commercial or fair use right to use the domain, or whether the registrant’s intent is to divert consumer’s from the trademark owner’s site to the registrant’s site either for commercial gain, to possibly dilute or disparage the trademark owner’s mark through consumer confusion.

This can also be a situation where the registrant’s site is either sponsored by the trademark owner, and / or whether the registrant offers the domain for sale to the actual trademark owner.

In addition, if they intend to profit from the sale, display a pattern of conduct, provide false contact information, own multiple domain names which are similar to famous or distinctive marks, and how the trademark is used ( or misused) in the domain.

With these factors in mind, MGM felt confident that bad faith applied here.

The lawsuit alleged that “cybersquatting” was engaged in by using the name itself and to compound the offense, there is sufficient evidence to demonstrate customer confusion on the California based website.

Allegedly, The website included an image of MGM’s New York, New York, with no disclaimer of “no affiliation” with MGM.

It was further contended that when users clicked on a banner, they were mis-directed to a third-party Web site which enabled website users to book hotel reservations at competing Las Vegas hotels.

The bad faith use argument starts to become painfully obvious when you consider that resort and hotel services sold on the site were not for the city or state of New York but for Las Vegas and casino services.

The defense argued that the domain name was acquired about 1996, before the hotel-casino opened.

They also declared the intent was to pay tribute to the Frank Sinatra song “New York, New York” and create a website promoting and focused on New York City, along with raising money to benefit 9/11 victims’ families.

It was further argued that the site actually promoted the MGM property with customer confusion instead working in MGM’s favor due to a link to an Expedia hotel room-booking engine.

This booking application was supposedly authorized by MGM Resorts as well.

While this sounds like a decent defense and an admirable venture, bad faith use is very clear.

Its up to you New York.