Madrivo Media LLC v. Rexford Asibuo
Claim Number: FA2306002047236
Complainant is Madrivo Media LLC (“Complainant”), represented by Sarah R. Frankfort of Madrivo Media LLC, Nevada, USA. Respondent is Rexford Asibuo (“Respondent”), Michigan, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <madrivomedia.net>, registered with NameCheap, 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to Forum electronically on June 2, 2023; Forum received payment on June 2, 2023.
On June 2, 2023, NameCheap, Inc. confirmed by e-mail to Forum that the <madrivomedia.net> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 June 5, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 26, 2023 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@madrivomedia.net. Also on June 5, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On July 6, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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 contends as follows:
Complainant is an online media firm focused on affiliate marketing and lead generation.
Complainant has rights in the MADRIVO mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <madrivomedia.net> domain name is identical or confusingly similar to Complainant’s MADRIVO mark as it merely adds the generic word “media” and the “.net” generic top-level-domain name ("gTLD").
Respondent lacks rights or legitimate interests in the <madrivomedia.net> domain name. Respondent is not commonly known by the at-issue domain name, nor has Respondent been authorized by Complainant to use the MADRIVO mark. Respondent has not used the at-issue domain name in connection with a bona fide offering of goods or services as Respondent is using the domain name to offer competing services and cause confusion with Complainant’s business.
Respondent registered and uses the <madrivomedia.net> domain name in bad faith. Respondent’s website disrupts Complainant’s business as Respondent registered the disputed domain name to compete with Complainant and cause user confusion. Furthermore, Respondent registered the domain name using a privacy service in order to conceal its identity.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has trademark rights in MADRIVO.
Respondent is not affiliated with Complainant and is not authorized to use the MADRIVO mark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired trademark rights in MADRIVO.
Respondent uses the at-issue domain name to address a website where Respondent poses as Complainant and offers services that compete with Complainant’s offering.
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”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of the MADRIVO mark with the USPTO demonstrates 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)).
Respondent’s <madrivomedia.net> domain name contains Complainant’s MADRIVO trademark followed by the term “media” and with all followed by the“.net” top-level domain. Under Policy ¶ 4(a)(i) the differences between Respondent’s domain name and Complainant’s trademark do nothing to distinguish one from the other. Therefore, the Panel concludes that Respondent’s <madrivomedia.net> domain name is confusingly similar to Complainant’s MADRIVO trademark. 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); see also, MTD Products Inc v J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”);
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
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. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration).
The WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Rexford Asibuo” and the record before the Panel contains no evidence tending to prove that Respondent is commonly known by the <madrivomedia.net> domain name. The Panel therefore concludes that Respondent is not commonly known by the <madrivomedia.net> domain name for the purposes of Policy ¶ 4(c)(ii). See also, Radio Flyer Inc. v. er nong wu, FA 2011001919893 (Forum Dec. 16, 2020) (“Here, the WHOIS information lists “er nong wu” as the registrant and no information suggests Complainant has authorized Respondent to use the RADIO FLYER mark in any way. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”).
Additionally, Respondent uses its <madrivomedia.net> domain name to address a website utilizing Complainant’s MADRIVO mark and logo and there offers identical services as Complainant. Respondent’s use of the domain name to offer competing services is neither a bona fide offering of goods or services under Policy ¶ 4 (c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a 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 also, Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] 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).”).
Given the forgoing, Complainant satisfies its initial burden and demonstrates Respondent’s lack of rights and lack of legitimate interests in respect of the at-issue domain name under Policy ¶ 4(a)(ii).
As discussed below without being exhaustive, there is sufficient evidence to allow the Panel to conclude that Respondent acted in bad faith pursuant to the Policy.
As mentioned regarding rights and legitimate interests, Respondent uses its confusingly similar domain name to address a website where Respondent uses Complainant’s trademark to pose as Complainant and there purports to offer services that are identical to MADRIVO’s performance marketing platform. Such use of the domain name is disruptive to Complainant’s business and capitalizes on the confusion Respondent creates between Complainant’s trademark and Respondent’s domain name and associated website. Respondent thereby acts in bad faith regarding the at-issue domain name pursuant Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv). See Target Brands, Inc. v. Lucas Theis / Cool Yeti, FA006001899335 (Forum July 6, 2020) (“Respondent is clearly using the [Disputed Domain Name] to attract, for commercial gain, Internet users to [its] website by creating a likelihood of confusion with the [Madrivo Marks] as to the source, sponsorship, affiliation or endorsement of [the] website. Also, by registering and using a confusingly similar domain name to attract Internet traffic to Respondent’s own website…Respondent is disrupting the business of Complainant. This fits within the circumstances articulated by Policy ¶¶ 4(b)(iii) and (iv) and is clear evidence of bad faith registration and use.”); see also, Fitness International, LLC v. ALISTAIR SWODECK / VICTOR AND MURRAY, FA1506001623644 (Forum July 9, 2015) (“Respondent uses the at-issue domain name to operate a website that purports to offer health club related services such as fitness experts, fitness models, fitness venues, exercise programs, and personal training, all of which are the exact services offered by Complainant. Doing so causes customer confusion, disrupts Complainant’s business, and demonstrates Respondent’s bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iii).”); see also, 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <madrivomedia.net> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: July 6, 2023
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