Mythical Entertainment, Inc. v. Anthony Ortiz / goodmythicalmore.com
Claim Number: FA1909001861629
Complainant is Mythical Entertainment, Inc. (“Complainant”), represented by Jordan Susman of Harder LLP, California, USA. Respondent is Anthony Ortiz / goodmythicalmore.com (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <goodmythicalmore.com>, registered with Tucows Domains Inc..
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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 11, 2019; the Forum received payment on September 11, 2019.
On September 11, 2019, Tucows Domains Inc. confirmed by e-mail to the Forum that the <goodmythicalmore.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. 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 September 16, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 7, 2019 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@goodmythicalmore.com. Also on September 16, 2019, 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 October 9, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. 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 produces and publishes a variety show that is posted to the website YouTube.com. Complainant has rights in the trademark GOOD MYTHICAL MORNING through its use in commerce since 2012 and its registration of the mark with the United States Patent and Trademark Office (“USPTO”) dating back to 2014. Complainant also has common law rights in the trademark GOOD MYTHICAL MORE through its use in commerce since 2013. Respondent’s <goodmythicalmore.com> domain name, registered on January 31, 2018, is identical or confusingly similar to Complainant’s GOOD MYTHICAL MORNING and GOOD MYTHICAL MORE marks.
Respondent lacks rights or legitimate interests in the <goodmythicalmore.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant granted a license for, consented to, or authorized Respondent’s use of Complainant’s marks. Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to intentionally deceive the public into believing that Complainant is the source of the domain name and in an attempt to collect personal information from Internet users who visit Respondent’s website.
Respondent registered and uses the <goodmythicalmore.com> domain name in bad faith. Respondent uses the dispute domain name to create the false impression that the resolving web page either belongs to Complainant or is endorsed by Complainant. Respondent had knowledge of Complainant’s mark prior to registration of the disputed domain name given the success of Complainant’s YouTube channel and the content of Respondent’s website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant asserts rights in the GOOD MYTHICAL MORNING mark based on registration with the USPTO. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”) Accordingly, the Panel finds that Complainant has established rights in the GOOD MYTHICAL MORNING mark for the purposes of Policy ¶ 4(a)(i).
Complainant also asserts common law rights in the GOOD MYTHICAL MORE mark based on continuous use in commerce since 2013. Policy ¶ 4(a)(i) does not require a complainant to own a trademark registration if it can demonstrate established common law rights in the mark that predate the registration of the disputed domain name. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding that “The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”) To establish common law rights in a mark, a complainant generally must prove that the mark has generated a secondary meaning. See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”) Complainant provides screenshots of its YouTube channel which mentions a subsidiary channel titled “Good Mythical More.” Complainant also provides various articles covering Complainant’s business generally. In view of this evidence, the Panel finds that Complainant does hold common law rights in the phrase GOOD MYTHICAL MORE for the purposes of Policy ¶ 4(a)(i).
Complainant contends that Respondent’s <goodmythicalmore.com> domain name is identical or confusingly similar to Complainant’s GOOD MYTHICAL MORNING and GOOD MYTHICAL MORE marks. The Panel observes that the <goodmythicalmore.com> domain name fully incorporates the GOOD MYTHICAL MORE mark and incorporates a substantial portion of the GOOD MYTHICAL MORNING mark, replacing the word “morning” with the word “more”. The domain name also uses the “.com” generic top-level domain (“gTLD”). The addition of a generic or descriptive term and a gTLD is insufficient to distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). Additionally, despite the omission of a portion of a mark, a domain name can still be found to be confusingly similar under Policy ¶ 4(a)(i) if it still features the dominant portion of the mark. See Huron Consulting Group Inc. v. David White, FA 1701395 (Forum Dec. 6, 2016) (finding that Respondent’s <huroninc.net> domain name is confusingly similar to the HURON CONSULTING GROUP and HURON HEALTHCARE marks under Policy ¶ 4(a)(i) because in creating the domain name, the respondent includes the dominant portion of the marks and appends the term “inc” and a gTLD). Therefore, the Panel finds that the <goodmythicalmore.com> domain name is identical or confusingly similar to the GOOD MYTHICAL MORNING mark and/or the GOOD MYTHICAL MORE mark per Policy ¶ 4(a)(i).
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). Should it succeed in this effort, the burden then shifts to Respondent to show that 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”).
Complainant argues that Respondent lacks rights or legitimate interests in the <goodmythicalmore.com> domain name because Respondent is not commonly known by the disputed domain name, nor has Complainant granted a license to, consented to, or authorized Respondent to use the mark. As noted in many prior decisions, WHOIS information may be helpful in determining whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). However, the WHOIS record is not the end of the inquiry. Where the WHOIS record appears to suggest that a respondent may be commonly known by a disputed domain name, the Panel may still find that the respondent lacks rights or legitimate interest in the disputed domain name if the respondent lacks authorization to use the complainant’s mark and the respondent fails to provide affirmative evidence in support of this identity. See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding that, although the respondent listed itself as “Jessie McKoy / Ripple Reserve Fund” in the WHOIS contact information, it did not provide any affirmative evidence to support this identity. Combined with the fact that the complainant claimed it did not authorize the respondent to use the mark, the respondent is not commonly known by the domain name). The WHOIS record for the <goodmythicalmore.com> domain name, as revealed by the concerned registrar, identifies the registrant as “Anthony Ortiz/goodmythicalmore.com,” but Respondent has not participated in this case and provides no affirmative evidence in support of this identity. Further, Complainant asserts that it has not authorized the Respondent to use the GOOD MYTHICAL MORNING mark and/or the GOOD MYTHICAL MORE mark and there is no evidence in the record to suggest otherwise. In view of the lack of a Response or other submission by the Respondent, the Panel finds that the preponderance of the evidence supports the conclusion that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant next contends that Respondent fails to use the <goodmythicalmore.com> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use and instead uses the disputed domain name to intentionally deceive the public into believing that the source of the domain name is Complainant. Instead, Respondent’s website attempts to collect personal information of Internet users. Passing oneself off as a complainant in furtherance of a phishing scheme may not be a bona fide offering of goods or services per Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business); see also DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (”Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”) Complainant provides screenshots of the resolving webpage of the disputed domain name which displays Complainant’s mark and associated photographic and video content belonging to the Complainant. The site also indicates that it deposits cookies on users’ machines and it solicits email addresses from those who leave comments on the page. The Panel therefore finds that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services per Policy ¶ 4(c)(i) or legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
Complainant contends that Respondent had knowledge of Complainant’s marks prior to registration of the <goodmythicalmore.com> domain name given the success of Complainant’s YouTube channel. Actual knowledge of a complainant’s mark prior to registering a disputed domain name is an adequate foundation upon which to build a case for bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); Coachella Music Festival, LLC v. ALEXANDER DE ALMEIDA LOPES, FA 1705267 (Forum Jan. 9, 2017) (finding the respondent had actual knowledge of the complainant’s COACHELLA mark when it registered and used the <coachellastuff.com> domain name—and thus did so in bad faith—because the complainant presented adequate evidence that its mark was well-known and famous). Complainant provides news articles covering Complainant’s longstanding YouTube channel and screenshots of Complainant’s social media pages to demonstrate that its marks are well known. However, the Panel finds most persuasive the content of Respondent’s website which displays the Complainant’s marks as well as numerous image of, and links to Complainant’s videos. As such, the Panel finds that Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the marks, thus creating a foundation upon which to support a claim of bad faith registration per Policy ¶ 4(a)(iii).
Complainant goes on to argue that Respondent registered and uses the <goodmythicalmore.com> domain name in bad faith as Respondent uses the dispute domain name to create the false impression that the page either belongs to Complainant or is endorsed by Complainant. Passing oneself off as a Complainant in an attempt to collect personal information can evince bad faith registration and use per Policy ¶ 4(b)(iv). See Amazon Technologies, Inc. v. jaskima smith, FA 1750160 (Forum Oct. 26, 2017) (finding the respondent registered and used the disputed domain name in bad faith to pass itself off as the complainant in an attempt to gain personal information from users who mistakenly access the website); see also Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). Complainant provides screenshots of the resolving webpage of the disputed domain name which displays Complainant’s mark and associated content as well as solicits email addresses from users. Based upon this impersonation of Complainant, and in the absence of any explanation by Respondent, the Panel finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <goodmythicalmore.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: October 10, 2019
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