The Complainant is Marc John Randazza, Randazza Legal Group, PLLC, United States of America (“United States”), internally-represented.
The Respondent is Contact Privacy Inc. Customer 1248477621, Canada / Don Juravin, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 14, 2020. On November 16, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 16, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 17, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 21, 2020. The Center verified that the Complaint, together with the amended Complaint, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 23, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 13, 2020. On December 4, 2020, the Respondent contacted the Center requesting a 30-day extension to the Response filing period. Pursuant to paragraph 5(e) of the Rules, the Complainant was invited to submit its comments regarding the Respondent’s extension request. On December 8, 2020, the Complainant objected to the Respondent’s extension request. On December 9, 2020, pursuant to paragraph 5(b) of the Rules, the Response due date was automatically extended until December 17, 2020. The Center received an email communication from the Respondent on December 10, 2020. On December 18, 2020, the Center informed the Parties that it would proceed to panel appointment, pursuant to paragraph 6 of the Rules. The Center appointed Evan D. Brown as the sole panelist in this matter on December 28, 2020. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background The Complainant has provided legal services under the MARC RANDAZZA and RANDAZZA LEGAL GROUP trademarks since 2008. It owns a trademark registration for the latter mark, United States Reg. No. 4409640, registered on October 1, 2013. The Complainant is well known for its services, as evidenced by numerous mentions in the press and media. As per the Complaint, the Complainant has appeared on and written several articles for various news outlets, including National Public Radio, The New York times, CNN, Fox News, NBC, and Vegas Inc., and he was a regular columnist for CNN. The disputed domain name was registered on October 19, 2020. The Respondent has been a party in multiple legal cases against clients of the Complainant. The Complainant asserts that the Respondent’s registration of the disputed domain name is part of the Respondent’s scheme of extortion and fraud. More specifically, according to the Complainant, the Respondent immediately began using the disputed domain name to post false and misleading information about the Complainant, with the intent to profit by trying to pressure the Complainant from ceasing to represent his clients. 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s trademarks; that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith. B. Respondent The Respondent did not formally respond to the Complaint. 6. Discussion and Findings The Panel first notes that at various times, as noted above, the Respondent wrote to the Center asking for more time, but no Response was ever filed, nor was counsel for the Respondent ever named (one communication said “our expert is not available now”) or copied; the Panel notes in particular in that regard that the Parties have encountered each other before in legal disputes. The Panel considers therefore that the requests for an extension were likely motivated by an attempt to delay, and that the Respondent has had a fair opportunity to advance any facts and arguments he may have in the instant proceeding but has not availed himself of this. To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and, (iii) the disputed domain name has been registered and is being used in bad faith. The Panel finds that all three of these elements have been met in this case. A. Identical or Confusingly Similar The Complainant has rights in the marks MARC RANDAZZA and RANDAZZA LEGAL GROUP, evidenced by the widespread use and recognition of those marks,1 and by the registration certificate for the latter mark. See Marc J. Randazza v. Reverend Crystal Cox, Eliot Bernstein,WIPO Case No. 2012-1525, finding that the Complainant had established common law trademark rights in his own personal name. The disputed domain name, for purposes of this first element, is confusingly similar to the Complainant’s mark. It incorporates the Complainant’s common law mark MARC RANDAZZA in its entirety. Moreover, when looking at the disputed domain name as a whole, including the generic Top-Level Domain “.legal”, the disputed domain name closely resembles – and indeed obviously invokes – the Complainant’s RANDAZZA LEGAL GROUP mark. See Mr Green Ltd. v. Alfred Zeiselberger, Mediapool Communications Limited,WIPO Case No. D2017-1944 (the disputed domain name The Panel evaluates this element of the Policy by first looking to see whether the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. If the Complainant makes that showing, the burden of demonstrating rights or legitimate interests shifts to the Respondent. On this point, the Complainant asserts that: - the Respondent’s only reason for registering and using the disputed domain name is for the Respondent's alleged scheme of extortion and fraud; - any of the free speech arguments the Respondent would make concerning use of the disputed domain name are merely a pretext for cybersquatting or tarnishment; - it is inevitable that the disputed domain name – containing the Complainant’s name and making no indication that it will direct users to a criticism site – will confuse internet users looking for the Complainant’s services; - there is no evidence that the Respondent is commonly known by the text of the disputed domain name; and, - there are no facts that would lead a reasonable person to conclude that the Respondent has any rights or legitimate interests in the disputed domain name. The Respondent has not introduced any of its own evidence to contradict these assertions. As noted in WIPO Overview of WIPO Panel Views on Select UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.6, panels have found that even a general right to legitimate criticism does not necessarily extend to registering or using a domain name identical to a trademark, and to support fair use under the UDRP, paragraph 4(c)(iii), a respondent’s criticism must be genuine and noncommercial. As noted above, the disputed domain name is identical to the Complainant’s name, to which the Complainant has argued common law rights, and the Panel agrees with the Complainant’s assertions that the Respondent’s use of the disputed domain name amounts to a pretext for cybersquatting or tarnishment. Accordingly, the Complainant has established, prima facie, that the Respondent lacks rights or legitimate interests in the disputed domain name, and the Respondent has not come forth with evidence to rebut that showing. In particular, given the facts and circumstances of this case, and the prior history between the Parties, it is not at all obvious that a sufficient rebuttal would indeed be forthcoming. The Complainant has satisfied this second element of the Policy. C. Registered and Used in Bad Faith The Complainant has shown that the Respondent knew of the Complainant when the Respondent registered the disputed domain name. It is clear that the Respondent indeed targeted the Complainant when it registered the disputed domain name. The Complainant asserts that the Respondent has posted false and misleading information about the Complainant on the website appearing at the disputed domain name, and the Respondent has not refuted that assertion. Based on these unrefuted facts, the Panel finds that the Complainant registered the disputed domain name in bad faith. The Panel likewise credits the Complainant’s assertions that the Respondent has used the disputed domain name with pretextual the intent to profit e.g., by trying to pressure the Complainant from ceasing to represent his clients. This shows bad faith use of the disputed domain name. Accordingly, the Complainant has satisfied this third element under the Policy. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name Evan D. Brown 1 As additionally set out in the Complaint: “The media regularly turn to [the Complainant] for commentary on legal issues and the legal implications of political events. In 2016, Complainant authored an opinion column on CNN addressing public concerns that then-Presidential candidate Donald J. Trump would be harmful to the First Amendment of the U.S. Constitution if elected. (See Marc Randazza, ‘Is the First Amendment safe from Donald Trump?’, CNN (Feb. 28, 2016)[.] In 2018, the Hollywood Reporter reached out to Complainant for his thoughts on whether then-nominee Brett Kavanaugh would likely uphold free speech protections if confirmed as a U.S. Supreme Court Justice. (See Eriq Gardner, ‘Watch Out, CNN: Trump’s Supreme Court Frontrunner Is Bad News for Free Speech,’ THE HOLLYWOOD REPORTER (July 6, 2018)[.]”
Sole Panelist
Date: January 12, 2021
Full & Egal Universal Law Academy