MPOA LLC v. MR Bob Guzzo / Bob Guzzo
Claim Number: FA1807001796627
Complainant is MPOA LLC (“Complainant”), represented by Thomas Carulli of Kaplan Massamillo & Andrews, New York, USA. Respondent is MR Bob Guzzo / Bob Guzzo (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <crissangelmindfreak.com>, registered with Moniker Online Services LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 13, 2018; the Forum received payment on July 13, 2018.
On July 16, 2018, Moniker Online Services LLC confirmed by e-mail to the Forum that the <crissangelmindfreak.com> domain name is registered with Moniker Online Services LLC and that Respondent is the current registrant of the name. Moniker Online Services LLC has verified that Respondent is bound by the Moniker Online Services LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 17, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 6, 2018 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@crissangelmindfreak.com. Also on July 17, 2018, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On August 8, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant, MPOA LLC, is owned by the world-famous magic performer, Christopher Sarantakos, aka CRISS ANGEL. Complainant uses the CRISS ANGEL MINDFREAK and several other related marks for numerous entertainment offerings, including a nationally well-known television series on A&E. Complainant has rights in the marks based upon its registration of the marks with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,162,062, registered Oct. 24, 2006.) See Compl. Ex. 2. Respondent’s <crissangelmindfreak.com> domain name is identical to Complainant’s CRISS ANGEL MINDFREAK mark.
Respondent does not have rights or legitimate interests in the <crissangelmindfreak.com> domain name. Respondent is not commonly known by the domain name and hides its identity through a privacy service. Further, Respondent knowingly and intentionally seeks to trade upon the fame of Complainant’s marks and name.
Respondent registered the <crissangelmindfreak.com> domain name in bad faith. It intentionally attempts to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is owned by the world-famous magic performer, Christopher Sarantakos, aka CRISS ANGEL.
2. Complainant has established its rights to the CRISS ANGEL MINDFREAK mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,162,062, registered Oct. 24, 2006.) together with several other related marks for CRISS ANGEL, CRISS ANGEL MINDFREAK, and MINDFREAK.
3. Respondent registered the <crissangelmindfreak.com> domain name on September 14, 2006.
4. Respondent has used the domain name knowingly and intentionally to trade upon the fame of Complainant’s CRISS ANGEL MINDFREAK and related marks and name.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the CRISS ANGEL MINDFREAK mark based upon its registration of the mark with the USPTO. Registration of a mark with the USPTO is sufficient to establish complainant’s rights in a mark under Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Here, Complainant provides a list of federally registered trademarks with the USPTO (e.g., CRISS ANGEL MINDFREAK—Reg. No. 3,162,062, registered Oct. 24, 2006). See Compl. Ex. 2. Therefore, the Panel finds that Complainant has rights in the CRISS ANGEL MINDFREAK mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s CRISS ANGEL MINDFREAK mark.
Complainant argues that Respondent’s <crissangelmindfreak.com> domain name is substantially identical to, and confusingly similar to, Complainant’s CRISS ANGEL MINDFREAK mark. The Panel notes that Respondent incorporates the mark in the domain name in its entirety, omitting spaces between words and adding a generic Top-Level Domain (“gTLD”). Neither the omission of spaces nor the addition of a TLD are sufficient to distinguish a domain name from a mark. See Health Republic Insurance Company v. Gustavo Winchester, FA 1622089 (Forum July 7, 2015) (“Domain name syntax requires TLDs. Domain name syntax prohibits spaces. Therefore, omitted spacing and adding a TLD must be ignored when performing a Policy ¶4 (a)(i) analysis.”); see also Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017) (“When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), “.com”, then the Panel may find that the disputed domain name is identical to Complainant’s mark.”). Here, Respondent includes Complainant’s CRISS ANGEL MINDFREAK mark in its entirety, omits spaces and adds a “.com” gTLD to create the disputed domain name. Consequently, the Panel finds that Respondent’s <crissangelmindfreak.com> domain name is identical or confusingly similar to Complainant’s marks under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s CRISS ANGEL MINDFREAK trademark and to use it in its domain name without any change in substance;
(b) Respondent registered the <crissangelmindfreak.com> domain name on September 14, 2006;
(c) Respondent has used the domain name knowingly and intentionally to trade upon Complainant’s CRISS ANGEL MINDFREAK and related marks and name;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent lacks rights and legitimate interests in the <crissangelmindfreak.com> domain name because Respondent is not authorized or permitted to use Complainant’s CRISS ANGEL MINDFREAK mark and is not commonly known by the disputed domain name. Where a response is lacking, relevant WHOIS information may be used to identify the respondent per Policy ¶ 4(c) (ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Additionally, lack of authorization from complainant to use its marks may be further evidence that a respondent is not commonly known by a disputed domain name. See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug, 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”). The Panel may note the WHOIS of record identifies the Respondent as “MR Bob Guzzo / Bob Guzzo,” and no information in the record shows that Respondent was authorized to use Complainant’s CRISS ANGEL MINDFREAK mark in any way. Accordingly, the Panel concludes that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii);
(f) Complainant also argues that Respondent knowingly and intentionally sought to use the domain name to trade upon the fame of Complainant’s marks and names. Use of a mark in a domain name to attract users to a site containing related hyperlinks can be indicative of a respondent’s lack of rights and legitimate interests in a domain name per Policy ¶¶ 4(c)(i) or (iii). See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). Here, Complainant argues that Respondent seeks to trade upon the fame of the CRISS ANGEL MINDFREAK mark to promote links to magic-related searches. See Compl. Ex. 1. Therefore, the Panel concludes that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant submits that Respondent registered and uses the <crissangelmindfreak.com> domain name in bad faith to confuse and attract Internet users for commercial gain by creating a likelihood of confusion as to the source, sponsorship or affiliation of the disputed domain name’s resolving webpage with the Complainant’s CRISS ANGEL MINDFREAK mark. Use of a domain name incorporating a complainant’s mark to attract users for commercial gain can be evidence of bad faith registration and use under Policy ¶¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)). Here, Complainant argues that Respondent established a domain name and website focused solely on magic which uses Complainant’s name and marks in bad faith. See Compl. Ex. 1. Therefore, the Panel concludes that Respondent registered and uses the domain name in bad faith under Policy ¶ 4(b)(iv).
Secondly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the CRISS ANGEL MINDFREAK mark and in view of the conduct that Respondent has engaged in when using the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
In this regard the Panel adds that the domain name was registered on September 14, 2006 and the principal trademark relied on was not registered until October 24, 2006. However, the Panel has examined the history of Complainant’s business and the career of its owner Criss Angel and has no doubt that the domain name was registered in full knowledge of Mr. Angel and the activities of Complainant and with the intention that it should reflect the name of their famous show CRISS ANGEL MINDFREAK. In any event, the trademark was filed and had been in use prior to the registration of the domain name.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <crissangelmindfreak.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: August 8, 2018
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