national arbitration forum

 

DECISION

 

Christopher Sarantakos a/k/a Criss Angel v. Private - EXP 2

Claim Number: FA1206001448182

PARTIES

Complainant is Christopher Sarantakos a/k/a Criss Angel (“Complainant”), represented by Thomas Carulli of Kaplan Massamillio & Andrews, New York, USA.  Respondent is Private - EXP 2 (“Respondent”), Kentucky, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <crissangelmagic.com>, registered with Bargin Register, Inc.

 

PANEL

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 Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on June 11, 2012; the National Arbitration Forum received payment on June 11, 2012.

 

After numerous requests, the Registrar, Bargin Register, Inc., has not confirmed to the National Arbitration that the <crissangelmagic.com> domain name is registered with Bargin Register, Inc. or that the Respondent is the current registrant of the name.  Registrar’s non-compliance has been reported to ICANN.  The FORUM’s standing instructions are to proceed with this dispute.

 

On June 28, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 18, 2012 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@crissangelmagic.com.  Also on June 28, 2012, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On July 26, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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" 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 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

1.    Complainant, Christopher Sarantakos, also known as Criss Angel, is a world-famous magician, performer, artist, and producer.

2.    Complainant owns a trademark registration for its CRISS ANGEL mark with the United State Patent and Trademark Office (“USPTO”) (Reg. No. 1,705,520 filed September 18, 1991; registered August 4, 1992).

3.    Complainant also owns many related marks that relate to his career as a magician.

4.    Complainant first used his trademark in commerce on May 1, 1987.

5.    Complainant uses the CRISS ANGEL mark in connection with marketing his website, branded products, performances, entertainment services, and magic tricks.

6.    Respondent’s disputed domain name, <crissangelmagic.com>, is confusingly similar to Complainant’s CRISS ANGEL mark.

7.    The disputed domain name resolves to a website that contains hyperlinks to competing business and to commercial sites selling various goods and services unrelated to Complainant’s business.

8.    Respondent, Private – EXP 2, is not commonly known by the disputed domain name.

9.    Respondent does not have rights or legitimate interests in the disputed domain name.

10. Respondent has been guilty of cyber theft of famous names before, having been the respondent in a number of UDRP proceedings.

11. Respondent registered and uses the disputed domain name in bad faith due to its use of the domain name to intentionally attract, for commercial gain, Internet users to Respondent’s website and create a likelihood of confusion with Complainant’s mark.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant is a world-famous magician, performer, artist, and producer. Complainant owns a trademark registration for its CRISS ANGEL mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,705,520 filed September 18, 1991; registered August 4, 1992). Complainant also owns many related marks that relate to his career as a magician. Complainant first used his trademark in commerce on May 1, 1987. Complainant uses the CRISS ANGEL mark in connection with marketing his website, branded products, performances, entertainment services, and magic tricks.

 

Respondent registered the disputed domain name on November 2, 2007.

The disputed domain name resolves to a website that contains hyperlinks to competing business and to commercial sites selling various goods and services unrelated to Complainant’s business.

 

DISCUSSION

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(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.”).

 

Identical and/or Confusingly Similar

 

Complainant’s USPTO trademark registration is evidence that Complainant holds rights in his CRISS ANGEL mark for the purposes of Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).

 

Complainant contends that Respondent’s domain name, <crissangelmagic.com>, is substantially identical and/or confusingly similar to Complainant’s CRISS ANGEL mark. The disputed domain name consists of Complainant’s mark in its entirety, with the only differences being the inclusion of the generic work “magic,” the removal of the space between the terms, and the inclusion of the top-level domain (“gTLD”) “.com.” The Panel finds that the <crissangelmagic.com> disputed domain name is confusingly similar to Complainant’s CRISS ANGEL mark under Policy ¶ 4(a)(i) as Respondent’s modifications to the mark do not sufficiently distinguish the disputed domain name. See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (concluding that the <redhat.org> domain name is identical to the complainant’s RED HAT mark because the mere addition of gTLD was insufficient to differentiate the disputed domain name from the mark); Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business); and U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”).

 

Rights or Legitimate Interests

 

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), and then the burden shifts to Respondent to show it does have rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).

 

Complainant alleges that Respondent is hiding its true identity through registration as PRIVATE – EXP2 and has not provided information that Respondent is commonly known by the disputed domain name. The WHOIS information identifies “Private - EXP 2” as the registrant of the disputed domain name.  The Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4 (a)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).

 

Complainant argues that Respondent’s disputed domain name resolves to a website housing hyperlinks resolving to third-party websites that are in direct competition to Complainant and to commercial websites selling various goods and services. Complainant argues that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. The Panel finds that Respondent’s use of the disputed domain name to host competing hyperlinks is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the domain name. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”); see also H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).

 

Registration and Use in Bad Faith

 

Respondent has been the respondent in other cases involving famous names where the disputed domain names were transferred to the respective complainants. These cases include Target Brands, Inc. v. Private-EXP 2, FA 1336158 (Nat. Arb. Forum Sept. 28, 2010), U.S. Smokeless Tobacco Mfg Co. LLC v. Private-EXP 2, FA 1347424 (Nat. Arb. Forum Nov. 10, 2010), and Foster & Smith, Inc. v. Private-EXP 2, FA 1345179 (Nat. Arb. Forum Oct. 22, 2010). Based on these prior UDRP proceedings, the Panel finds that Respondent has engaged in a pattern of bad faith registration pursuant to Policy ¶ 4(b)(ii). See Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007) (holding prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations).

 

Complainant argues that Respondent registered and uses the confusingly similar disputed domain name <crissangelmagic.com> to capitalize on the goodwill associated with Complainant’s CRISS ANGEL mark. Complainant contends that Respondent commercially gains by hosting competing hyperlinks for competing products relating to Complainant’s business. Complainant argues that Respondent attempts to create confusion as to Complainant’s affiliation with the disputed domain name. The Panel finds that Respondent registered and uses the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”); see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).

 

DECISION

Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <crissangelmagic.com> domain name be TRANSFERRED from Respondent to Complainant.

 

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  August 9, 2012