Christopher Sarantakos a/k/a CRISS ANGEL v. N.A. c/o Li Gaoxin
Claim Number: FA0809001223086
Complainant is Christopher Sarantakos a/k/a CRISS
ANGEL (“Complainant”), represented by
Thomas Carulli, of Kaplan, von Ohlen & Massamillo, New York, USA. Respondent is N.A. c/o Li Gaoxin (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <mindfreak.net>, registered with Registrar Label, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 4, 2008; the National Arbitration Forum received a hard copy of the Complaint on September 5, 2008.
On September 12, 2008, Registrar Label, Inc. confirmed by e-mail to the National Arbitration Forum that the <mindfreak.net> domain name is registered with Registrar Label, Inc. and that Respondent is the current registrant of the name. Registrar Label, Inc. has verified that Respondent is bound by the Registrar Label, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On September 22, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 14, 2008 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@mindfreak.net by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 20, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <mindfreak.net> domain name is identical to Complainant’s MINDFREAK mark.
2. Respondent does not have any rights or legitimate interests in the <mindfreak.net> domain name.
3. Respondent registered and used the <mindfreak.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is an entertainer and prestidigitator who markets his productions under the mark MINDFREAK, which Complainant registered with the United States Patent and Trademark Office (“USPTO”) on October 24, 2006 (Reg. No. 3,162,063). Complainant launched his live theater production known as “Criss Angel Mindfreak” in 2001; this production has since had the highest advance ticket sales recorded during its fourteen month/600 performance off-Broadway run. Complainant has also produced more than 70 episodes of his television series “Mindfreak,” which has been broadcast internationally over the last four years.
Respondent registered the <mindfreak.net> domain name on August 13, 2008. The disputed domain name resolves to a website that contains links to third-party websites offering services that compete with Complainant’s business.
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."
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(e), 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 (Nat. Arb. 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.”).
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.
The Panel finds that Complainant has established rights in the MINDFREAK mark for purposes of Policy ¶ 4(a)(i) through its trademark registration with the USPTO. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive."); see also McCarthy on Trademarks and Unfair Competition, § 25:74.2 (4th ed. 2002) (The ICANN dispute resolution policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice” to support a domain name complaint under the Policy).
Complainant contends that Respondent’s <mindfreak.net> domain name is
identical to its MINDFREAK mark. The <mindfreak.net> domain name differs
from Complainant’s mark only in that the generic top-level domain (gTLD) “.net”
has been added to the mark. Under Policy
¶ 4(a)(i), the addition of a gTLD is irrelevant when
considering whether a domain name is identical to a mark. See Isleworth Land Co. v. Lost
in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) ( “[I]t is a well established principle that generic
top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Therefore,
the Panel finds that despite the addition of the gTLD “.net”, the disputed
domain name is nevertheless still identical to Complainant’s MINDFREAK mark,
and so Respondent’s disputed domain name is not sufficiently distinguished from
Complainant’s mark pursuant to Policy ¶ 4(a)(i). See
Kabushiki Kaisha Toshiba v. Shan Computers, D2000-0325 (WIPO June 27,
2000) (finding that the domain name <toshiba.net> is identical to the
complainant’s trademark TOSHIBA); see
also Little Six, Inc. v. Domain For
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights and legitimate interests in the <mindfreak.net> domain name. Under Policy ¶ 4(a)(ii), after the complainant makes a prima facie case against the respondent, the respondent then has the burden of showing evidence that it does have rights or legitimate interests in the disputed domain name. Complainant has made a prima facie case under Policy ¶ 4(a)(ii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
Complainant contends that Respondent is not commonly known
by the <mindfreak.net>
domain name nor has it ever been the owner or licensee of the MINDFREAK
mark. The WHOIS record for the disputed
domain name lists Respondent as “N.A. c/o Li
Gaoxin.” Because Respondent has
failed to show any evidence contrary to Complainant’s contentions and is not
known by any variant on the MINDFREAK mark, the Panel finds that Respondent is
not commonly known by the <mindfreak.net>
domain name pursuant to
Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik,
FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered
the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration
information, Respondent is not commonly known by the [<awvacations.com>]
domain name.”); see also RMO, Inc.
v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy
¶ 4(c)(ii) "to require a showing that one has
been commonly known by the domain name prior to registration of the domain name
to prevail").
Respondent uses the <mindfreak.net> domain name to host a website that features links to third-party websites offering entertainment services that compete with Complainant’s business. Along with that unlicensed commercial use of the MINDFREAK mark, Complainant contends that Respondent commercially benefits from these links through the receipt of “click-through” fees. The Panel finds that Respondent’s use of the <mindfreak.net> domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site); see also Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell the complainant’s goods without the complainant’s authority, as well as others’ goods, is not bona fide use).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent is using the disputed
domain name to divert Internet customers from Complainant’s website to
Respondent’s websites that resolve from the disputed domain name, through the
confusion caused by the identicality of the MINDFREAK mark and the <mindfreak.net> domain name. Complainant also contends that Respondent
intended to disrupt Complainant’s business by diverting confused customers to third-party
websites that offer entertainment services competing with Complainant’s business. The Panel finds that the disruption of
Complainant’s business is evidence of Respondent’s registration and use of the
disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See
Complainant also contends that Respondent gains commercially
from this diversion, through the click-through fees that Respondent receives
from the third-party websites. The Panel
finds that this is an intentional use of the disputed domain name for
commercial gain through a likelihood of confusion with Complainant’s mark, and
so, pursuant to Policy ¶ 4(b)(iv), this use is also
evidence of Respondent’s registration and use in bad faith. See
Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum
Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain
name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain
name provided links to Complainant's competitors and Respondent presumably
commercially benefited from the misleading domain name by receiving
‘click-through-fees.’”); see also Bank of Am. Corp. v.
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mindfreak.net> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Honorable Paul A. Dorf (Ret.), Panelist
Dated: October 31, 2008
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