Blue Man IP, LLC v. Richard Johnson / Domain Name Hosting Services
Claim Number: FA1610001698875
Complainant is Blue Man IP, LLC (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, United States. Respondent is Richard Johnson / Domain Name Hosting Services (“Respondent”), Illinois, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bluemangroup.com>, registered with GoDaddy.com, LLC.
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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 19, 2016; the Forum received payment on October 19, 2016.
On October 20, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <bluemangroup.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 October 21, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 10, 2016 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@bluemangroup.com. Also on October 21, 2016, 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 November 15, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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 is a global entertainment company best known for the world renowned and award-winning Blue Man Group theatrical show, which has been performed in fifteen countries and seen by more than thirty-five million people worldwide since 1991. Complainant owns common law rights in the BLUE MAN GROUP mark, dating back to 1991, based on its extensive advertising and promotion of the mark since that time. See Compl., at Attached Ex. 2. Complainant also has several trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the mark. See Compl., at Attached Ex. 3. The <bluemangroup.com> domain name is identical to Complainant’s mark, save for the elimination of the spaces between the words of Complainant’s mark and the affixation of the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the domain name. Respondent is not commonly known by the domain name, and Respondent is not a licensee of Complainant, nor has Respondent ever been authorized by Complainant to register or use the BLUE MAN GROUP mark or the domain name. Further, Respondent is not using the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent initially failed to make any active use of the domain name. See Compl., at Attached Ex. 10. Earlier this year, the domain name began forwarding to the website for the Trump/Pence presidential campaign (www.donaldjtrump.com). Shortly thereafter, Respondent redirected the domain name to forward to an old 2003 article on the website of the Global Policy Forum, entitled “Blue Man Group,” concerning terrorist bombings in Baghdad. See Compl., at Attached Ex. 9.
Respondent registered and is using the domain name in bad faith. First, Respondent failed to make any active use of the domain name for over fifteen years. See Compl., at Attached Ex. 10. Second, Respondent used a privacy service. See Compl., at Attached Ex. 7 (“Registration Private” listed as “Registrant Name”). Third, because Complainant’s mark is so famous and registered in many countries throughout the world, it is clear that Respondent registered the domain name with at least constructive knowledge of Complainant’s mark and rights therein.
B. Respondent
Respondent failed to submit a Response in this proceeding. Respondent registered the domain name on January 11, 1999.
The Panel finds that the disputed domain name is confusingly similar to Complainant’s valid and subsisting trademark, BLUE MAN GROUP; that Respondent has no rights or legitimate interests in or to the disputed domain name; and that Respondent has engaged in bad faith use and registration of the disputed domain 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 Panel finds that the disputed domain name is confusingly similar to Complainant’s valid and subsisting trademark, BLUE MAN GROUP. Complainant has adequately plead its rights and interests in and to this common law trademark. Respondent arrives at the disputed domain name by taking the mark in its entirety, omitting two spaces and adding the g TLD “.com”. This is insufficient to distinguish the disputed domain name from Complainant’s trademark.
As such, the Panel finds that the disputed domain name is confusingly similar to Complainant’s common law trademark.
The Panel further finds that Respondent has no rights or legitimate interests in or to the disputed domain name. Respondent is not commonly known by the domain name. Respondent is also not a licensee of Complainant, nor has Respondent ever been authorized by Complainant to register or use the BLUE MAN GROUP mark or domain name. The WHOIS information merely lists “Richard Johnson” as registrant. Respondent has failed to provide any evidence for the Panel’s consideration. See Compl., at Attached Exhibit 7. As such, the Panel finds no basis in the available record to find Respondent commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Complainant claims that Respondent is not using the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent initially failed to make any active use of the domain name. See Compl., at Attached Ex. 10. Respondent’s failure to make any active use of a domain name does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). As Respondent initially failed to make any active use of the domain name, the Panel finds that Respondent was not using the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) and (iii).
Complainant alleges that earlier this year, the domain name began forwarding to the website for the Trump/Pence presidential campaign (www.donaldjtrump.com). Panels have held that a respondent lacks rights and legitimate interests in a domain name where its use of the domain name is unrelated to the complainant’s business. See Vanderbilt Univ. v. U Inc., FA 893000 (Forum Feb. 19, 2007) (holding that the respondent did not have rights or legitimate interests in a domain name where it was redirecting Internet users to its own website promoting the respondent’s books unrelated to the complainant). As such, the Panel finds that Respondent lacks rights and legitimate interests in to the disputed domain name.
Complainant argues that shortly thereafter, Respondent redirected the domain name to forward to an old 2003 article on the website of the Global Policy Forum, entitled “Blue Man Group,” concerning terrorist bombings in Baghdad. See Compl., at Attached Ex. 9. Again, panels have concluded that a respondent’s use of a domain name to redirect Internet users to a website unrelated to the complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Therefore, the Panel finds that Respondent lacks rights and legitimate interests in and to the disputed domain name.
While Complainant does not make contentions that fall within the articulated provisions of Policy ¶ 4(b), the Panel notes that these provisions are meant to be merely illustrative of bad faith, and that Respondent’s bad faith may be demonstrated under the totality of the circumstances. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Forum May 18, 2000) (“The requirement in the ICANN Policy that a complainant prove that domain names are being used in bad faith does not require that it prove in every instance that a respondent is taking positive action. Use in bad faith can be inferred from the totality of the circumstances even when the registrant has done nothing more than register the names.”).
Complainant contends that Respondent failed to make any active use of the domain name for over fifteen years. See Compl., at Attached Ex. 10. Panels have agreed that a respondent’s failure to make any active use of a domain name is evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy). Accordingly, as Respondent initially failed to make any active use of the domain name, the Panel finds that Respondent engaged in bad faith registration and use under Policy ¶ 4(a)(iii).
Complainant further alleges that Respondent used a privacy service. See Compl., at Attached Ex. 7 (“Registration Private” listed as “Registrant Name”). The consensus view among panels is that use of a privacy service, without more, cannot reach the threshold of bad faith registration and use. See WWF-World Wide Fund for Nature aka WWF International v. Moniker Online Services LLC and Gregory Ricks, D2006-0975 (WIPO November 1, 2006) (finding use of proxy registration service does not of itself indicate bad faith; there are many legitimate reasons for proxy registration services); see also Divex Limited v. ZJ, Sam Chang and Tim NG, D2007-0861 (WIPO September 21, 2007) (finding privacy services may be justified by the need to avoid spam and identity theft). However, the totality of the circumstances which surround a respondent’s engagement of a privacy service may give rise to a finding of bad faith registration and use. See, e.g., HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, D2007-0062 (WIPO June 4, 2007) (finding a change of privacy service after notice of complaint indicative of bad faith); see also Sermo, Inc. v. CatalystMD, LLC, D2008-0647 (WIPO July 2, 2008) (stating that use of privacy shield can be “treated as evidence of bad faith . . . when serial registrants use privacy shields to mask each registrant’s actual date of registration”). Here, where the Respondent used the privacy shield in a manner which materially adversely affected or obscured the facts of this proceeding, the Panel finds that Respondent has registered and used the domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant argues that because its mark is so famous and registered in many countries throughout the world, it is clear that Respondent registered the domain name with at least constructive knowledge of Complainant’s mark and rights therein. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds, under a totality of the circumstances, that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be granted.
Accordingly, it is Ordered that the <bluemangroup.com> domain name be transferred from Respondent to Complainant.
Kenneth L. Port, Panelist
Dated: November 16, 2016
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