Stephen J. Taylor and Sigma Two Group LLC v. Avenstar and Mark McGinnis
Claim Number: FA0803001169965
Complainant is Stephen J. Taylor and Sigma Two Group
LLC (“Complainant”), represented by Gary J. Nelson, of Christie, Parker &
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <magicalfireflies.com>, registered with Netfirms, Inc.
The undersigned Daniel B. Banks, Jr., 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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 26, 2008; the National Arbitration Forum received a hard copy of the Complaint on March 27, 2008.
On March 27, 2008, Netfirms, Inc. confirmed by e-mail to the National Arbitration Forum that the <magicalfireflies.com> domain name is registered with Netfirms, Inc. and that the Respondent is the current registrant of the name. Netfirms, Inc. has verified that Respondent is bound by the Netfirms, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 31, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 21, 2008 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
A timely Response was received and determined to be complete on April 10, 2008.
An Additional Submission was received from Complainant on April 16, 2008 and determined to be timely and complete in compliance with the National Arbitration Forum’s Supplemental Rule 7.
On April 23, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Daniel B. Banks, Jr., as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Stephen J. Taylor owns the United States registered trademarks and trade names FIREFLY MAGIC (registered on February 29, 2006) and MAGICAL FIREFLIES (registered on January 29, 2008), which he licenses to Sigma Two LLC for use in connection with the sale of specialty electric lights that mimic the effect of fireflies. Complainants also own and operate a related web site at <fireflymagic.com>. The Respondents sell a competing product under the trade name Creativations Fireflies.
Complainants’ products are used in a variety of settings including firefly research, natural science museums, zoos, theme parks, hotels, restaurants and theatrical and film production. These products have received significant attention and coverage in publications addressed to these markets.
In addition to registered trademark rights, Complainants claim common
law rights in the MAGICAL FIREFLIES mark dating to Complainant’s first use of
the mark in commerce in February, 2005. Since
2004, Complainants have continuously and exclusively used the FIREFLY MAGIC
trademark in the
The subject domain name is identical to Complainants’ mark MAGICAL FIREFLIES. The only difference in Complainants’ MAGICAL FIREFLIES mark and the contested domain name is the addition of the “.com” generic top-level domain (gTLD) which is insufficient in distinguishing a disputed domain name from an identical trademark.
The subject domain name is confusingly similar to Complainants’ mark FIREFLY MAGIC. The terms in Complainants’ mark have been transposed and slightly modified in a manner that does not diminish the resulting confusion. Merely transposing the elements of a relevant mark does not avoid confusion similarity under the Policy. Also, minor modifications to the terms in the mark, such as making a term plural, cannot alleviate the resulting consumer confusion.
Respondents have no rights or legitimate interests in the contested domain name. The UDRP describes circumstance that will support a Respondent’s contention that it has rights and legitimate interest in the contested domain name but none of those exist in this case. Under UDRP Paragraph 4(c)(i), a competitor’s use of a mark in a confusingly similar domain name cannot be a bona fide use. Under UDRP Paragraph 4(c)(ii), Respondents are not known individually, as a business or in other manner by Magical Fireflies or <magicalfireflies.com>. Respondents are not licensed by Complainants nor do they have any legal relationship that would entitle them use Complainants’ trademarks or trade names. Under UDRP Paragraph 4 (c)(iii), Respondents are not making a legitimate noncommercial or fair use of Complainants’ trademarks. Respondents website sells electric lights that mimic the effect of fireflies and competes directly with Complainants’ product in this limited market. This is clearly a commercial use of the contested domain name.
Respondents have registered and are using the contested domain name in bad faith. Respondents are intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainants’ mark as to the source, sponsorship, affiliation or endorsement of the web site or location or of a product or service on the web site. It is well settled that registration and commercial use of a domain name that is confusingly similar to the mark of a competitor satisfies this requirement of the Policy, Paragraph 4(b)(iii) and (iv).
Because the FIREFLY MAGIC and MAGICAL FIREFLIES trademarks are so obviously connected with Complainants and because the domain name <magicalfireflies.com> so clearly references the Complainants’ marks and products, registration by Respondents suggest bad faith.
Respondent, Mark McGinnis, first began collaborating with partners to manufacture a fireflies product in 2002. He brought his product to the Internet in 2003. The copyrighted name used for the Respondents’ Fireflies product is Creativations. Also, in 2003, Respondents had a website, <creativations.net>, and then another website in 2003 at <fireflies.tv>. Respondents began selling their “Magical Fireflies” on the Internet.
Complainants do own the registered trademarks FIREFLY MAGIC and MAGICAL FIREFLIES however, the name in dispute, MAGICAL FIREFLIES, was not trademarked by Complainant until January of 2008. Respondents were using the name MAGICAL FIREFLIES and variations of that name since the inception of their first website. Respondents have acquired good will among their customers and distributors and as far back as 2003, Respondents’ outdoor lighting was known fondly as “Magical Fireflies.”
Respondents registered the disputed domain name in November of 2005. Prior to registration, Respondents did a search at the Trademark Office and with the Domain Registry to see if the name was legally clear to use. The change of Respondents’ website from <fireflies.tv> to <magicalfireflies.com> was done due to the overwhelming response from Respondents’ customers.
Respondent and his company Avenstar Enterprises, Inc., have put well over $200,000 in marketing and distributing his Creativations Fireflies product and continues to spend thousands of dollars today. This money is allocated to advertising, including press releases and paid radio and magazine ads. Respondents also have a 30 minute infomercial and have been working with an engineer on a continual basis to tweak and improve on the fireflies lighting effect and similar but different products.
The MAGICAL FIREFLIES name is not confusingly similar to Complainants’ FIREFLY MAGIC. Fireflies is the plural form of firefly and magical is a derivative of magic and the words have been interchanged. When all three of these differences are combined, the names look and sound clearly different and not confusingly similar.
With respect to the claim that MAGICAL FIREFLIES is identical to Complainants’ trademark, that name was not trademarked until January 2008. Respondents registered the disputed domain name in November of 2005. And, Complainants’ claim that they have been using the name “Magical Fireflies” since 2004 and have common law rights. That use came only after Respondents had established it to a national audience of customers starting in 2003.
The circumstance which supports the Respondents’ claim in this case is UDRP Paragraph 4(c)(i) which states that “before any notice to respondent of the dispute, respondent uses or prepares to use the domain name in connection with a bona fide offering of goods and services.” Respondents have, since 2003, sold Creativations Fireflies and marketed them as a magical lighting effect. The technology is patented and is a one-of-a-kind product. It is highly technical and sophisticated. Complainants’ product is stagnant and offers blinking lights. They are similar and Complainants have advertised their fireflies as magical on the Internet since 2004, but only after Respondents. Respondents clearly have rights and legitimate interest in the contested name.
Respondents deny that the disputed domain name was registered and is being used in bad faith.
Respondents ask that the panel deny the remedy requested by Complainants. Complainants never contacted the Respondents prior to the filing of this Complaint and have acted in bad faith in this matter. Respondents claim Copyright protection for their product since 2003. Respondents ask the panel to find reverse domain name hijacking against the Complainants.
C. Additional Submissions
In an additional submission, Complainants say that Respondents admit that Complainants do own the registered trademarks “FIREFLY MAGIC” and “MAGICL FIREFLIES.” However, Respondents seem to argue that Complainants have no rights in the marks until the federal registrations. This is incorrect because Complainants filed the application to register FIREFLY MAGIC in January of 2005, ten months before Respondents registered the domain name at issue. Second, Respondents ignore Complainants’ common law rights in both marks that were established before Respondents registered the disputed domain name. Complainants have established common law rights because it used the FIREFLY MAGIC mark in commerce as early as June 2004 and used the MAGICAL FIREFLIES mark in commerce as early as August 2004. Products bearing these names have received considerable attention in the press and public and were known to the public months before Respondents registered the disputed domain name. Furthermore, both of these marks are presumed to be inherently distinctive or have acquired secondary meaning because they were allowed by the U.S. Patent and Trademark Office and were registered.
Respondents’ claim of priority is unsupported by trademark law. Respondents argue that the use of the words “magic” and “magical” to describe their product in advertising materials establishes earlier trademark rights. In order to claim priority, the mark must also be used continuously. The name of Respondents’ product at the time of the infomercial was clearly “Fireflies.” The product is never referred to as “Magical Fireflies.” And, today Respondents’ product is still known as “Fireflies” and not “Magical Fireflies.”
The subject domain name is confusingly similar to Complainants’ marks. There can be no question about the MAGICAL FIREFLIES mark. Even ignoring Complainants’ rights in that mark, the domain name at issue is also confusingly similar to Complainants’ FIREFLY MAGIC mark. Domain names comprised of the transposed trademark terms and/or slightly modified trademark terms are routinely found to be confusingly similar.
Respondents have no rights or legitimate interest in the contested domain name. Respondents argue that they have a legitimate interest because they are involved in the legitimate business off selling goods. This ignores the fact that an otherwise bona fide business offering is not entitled to protection if the offering is made by one competitor at a domain name that is confusingly similar to the mark of another.
Respondents registered and use the domain name in bad faith. Respondents admit that their business and the business of Complainants are the only “credible and visible competition in the niche market of ‘fireflies’ products.” Respondents also admit that before registering the domain name at issue, they sold the “Fireflies” product at an online store at two other domain names for several years. In late 2005, Respondents clearly made a strategic decision to move his existing online store to the domain name <magicalfireflies.com>. Respondents’ claim of good faith is undermined by the fact that they knew at the time of registration that their main competitor was already using the FIREFLY MAGIC and MAGICAL FIREFLY marks and the domain name <fireflymagic.com>. While Respondents deny any intent to attract customers by creating a likelihood of confusion, it is difficult to accept that assertion in light of the vast array of domain names available and their decision in 2005 to register a domain name so similar to that of their admitted main competitor. Even today, when Complainants’ FIREFLY MAGIC mark has been used for over four years and registered for over two years, Respondents’ website prominently features large font front page text that says “Add Incredible Fireflies Magic to Your Backyard in Just Minutes.”
Finally, Respondents’ argument that Complainants have shown bad faith bringing this claim to enforce trademark rights without first contacting Respondents reflects misunderstanding of the legal term “bad faith.” Enforcing ones rights through UDRP proceedings is not bad faith.
1 – The disputed domain name, <magicalfireflies.com> is identical to Complainants’ trademark MAGICAL FIREFLIES and is confusingly similar to Complainants’ trademark FIREFLY MAGIC.
2 – The Respondents have no rights or legitimate interests in respect of the domain name.
3 – The domain name was registered and is being used in bad faith.
4 – Complainants did not attempt reverse domain name hijacking.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
Complainants assert rights in the FIREFLY MAGIC (Reg. No. 3,063,037 issued February 28, 2006) and MAGICAL FIREFLIES mark (3,375,298 issued January 29, 2008) through registration of the marks with the USPTO. Although Complainants’ rights do not predate Respondents’ domain name registration, the Panel nonetheless finds that Complainants have sufficient rights in the mark through this trademark registration pursuant to Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the UDRP Policy does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under Policy ¶ 4(a)(i) but may prevent a finding of bad faith under Policy ¶ 4(a)(iii)); see also Javacool Software Dev., LLC v. Elbanhawy Invs., FA 836772 (Nat. Arb. Forum Jan. 2, 2007) (holding that a complainant need not show that its rights in its mark predate the respondent’s registration of the disputed domain name in order to satisfy Policy ¶ 4(a)(i))
Complainants also allege that they have sufficient common law rights in the marks as they have marketed their products under the FIREFLY MAGIC mark since August 1, 2004, and the MAGICAL FIREFLIES mark since February 25, 2005. Both of these dates correspond to the first dates of use in commerce on each mark’s respective USPTO registration. Complainants argue that they have spent over $150,000 in advertising and marketing these products lines, and offers as evidence numerous media articles documenting Complainants’ products as early as December 2004. Based on the record, the Panel finds that Complainants have shown sufficient common law rights in the marks to grant standing under Policy ¶ 4(a)(i) dating back to August 1, 2004 and February 25, 2005 for the FIREFLY MAGIC and MAGICAL FIREFLIES marks, respectively. See Bibbero Sys., Inc. v. Tseu & Assoc., FA 94416 (Nat. Arb. Forum May 9, 2000) (finding, while the complainant had registered the BIBBERO SYSTEMS, INC. mark, it also had common law rights in the BIBBERO mark because it had developed brand name recognition with the word “bibbero”); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established).
Complainants assert that the <magicalfireflies.com> domain name is identical to Complainants’ MAGICAL FIREFLIES mark given that it entirely incorporates Complainants’ mark. The addition of the generic top-level domain “.com” is irrelevant in a Policy ¶ 4(a)(i) analysis. The Panel finds that the disputed domain name is identical to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) ("[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants . . . ."); see also Daedong-USA, Inc. v. O’Bryan Implement Sales, FA 210302 (Nat. Arb. Forum Dec. 29, 2003) (“Respondent's domain name, <kioti.com>, is identical to Complainant's KIOTI mark because adding a top-level domain name is irrelevant for purposes of Policy ¶ 4(a)(i).”).
Complainants allege in the Complainant, and reiterate in its Additional Submission, that the disputed domain name is confusingly similar to Complainants’ FIREFLY MAGIC mark, in that Respondents transposed the words “magic” and “firefly,” and then altered the word forms by pluralizing “firefly” into “fireflies,” and changing “magical” into its derivative “magic.” Complainants further allege that Respondents are a strict competitor of Complainants, thus adding to the confusing similarity. The Panel finds that Respondents’ <magicalfireflies.com> domain name is confusingly similar to Complainants’ mark pursuant to Policy ¶ 4(a)(i). See Slep-Tone Entm't Corp. v. Sound Choice Disc Jockeys, Inc., FA 93636 (Nat. Arb. Forum Mar. 13, 2000) (stating that “likelihood of confusion is further increased by the fact that the Respondent and [Complainant] operate within the same industry”); see also NCRAS Mgmt., LP v. Cupcake City, D2000-1803 (WIPO Feb. 26, 2001) (finding the domain name <nationalrentalcar.com> confusingly similar to the mark NATIONAL CAR RENTAL and holding that “merely inverting the terms of a mark . . . is quite insufficient to dispel consumer confusion; the mark and the resulting domain name are simply too similar to each other”); see also Am. Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 24, 2000) (finding that the respondent’s domain name <go2AOL.com> was confusingly similar to the complainant’s AOL mark).
The Panel finds that Complainants have made a prima facie case that Respondents lack rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and that the burden shifts to Respondents to show they 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); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Respondents are not commonly known by the disputed domain name, are not known individually, or as a business, by MAGICAL FIREFLIES or FIREFLY MAGIC, and are not licensed by Complainants to use either of the marks. Furthermore, the registrants of the disputed domain name are listed in the WHOIS information as “Avenstar and Mark McGinnis,” and do not bear any resemblance to the disputed domain name. The Panel finds that Respondents lack rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
Complainants assert that Respondents registered the disputed domain name to sell their strictly competing firefly-mimicking light systems in the same limited market as Complainants. Complainants allege that such use would be purely beneficial and intended to deprive Complainants of potential customers through the misleading disputed domain name. It should be noted that Complainant used the registered trademarks “Firefly Magic” and “Magical Fireflies” as the name of his product. Respondent used the terms “magic” and “magical” only to describe the effect of his product which he has always marketed as “Creativations Fireflies.” The Panel finds that Respondents lack rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), because they do not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site); see also Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (finding that the respondent used a domain name for commercial benefit by diverting Internet users to a website that sold goods and services similar to those offered by the complainant and thus, was not using the name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use).
Complainants assert that Respondents’ registration of the disputed domain name was primarily intended to disrupt Complainants’ business. Complainants argue that such intent is evidenced by Respondents’ registration of the disputed domain name identical and confusingly similar to Complainants’ MAGICAL FIREFLIES and FIREFLY MAGIC marks respectively, that both Complainant and Respondent operate in the same industry and limited market, and finally that the disputed domain name was registered after Complainants’ market entry. The Panel agrees and finds that Respondents engaged in bad faith registration and use under Policy ¶ 4(b)(iii). See EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith where the respondent’s sites pass users through to the respondent’s competing business); see also Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between the complainant and the respondent, the respondent likely registered the contested domain name with the intent to disrupt the complainant's business and create user confusion).
Complainants argue that Respondents’ registration of the disputed domain name was an intentional effort to attract Internet users seeking Complainants’ goods to Respondents’ competing website for commercial gain. Complainants contend that the disputed domain name is identical and confusingly similar to Complainants’ MAGICAL FIREFLIES and FIREFLY MAGIC marks, respectively. Again, the Panel agrees and finds that Respondents engaged in bad faith registration and use under Policy ¶ 4(b)(iv) by creating a likelihood of confusion regarding the source and affiliation of the disputed domain name and corresponding website. See TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where the respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of the complainant); see also Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent and the complainant were in the same line of business and the respondent was using a domain name confusingly similar to the complainant’s FITNESS WAREHOUSE mark to attract Internet users to its <efitnesswarehouse.com> 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 <magicalfireflies.com> domain name be TRANSFERRED from Respondents to Complainants.
Daniel B. Banks, Jr., Panelist
Dated: May 7, 2008
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