magicJack LP v. Neil Adams
Claim Number: FA0904001258600
Complainant is magicJack LP (“Complainant”), represented by Catherine
Rowland, of Arnold & Porter LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <canadianmagicjack.com>, registered with Netfirms, Inc.
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.
Daniel B. Banks, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 21, 2009; the National Arbitration Forum received a hard copy of the Complaint on April 21, 2009.
On April 21, 2009, Netfirms, Inc. confirmed by e-mail to the National Arbitration Forum that the <canadianmagicjack.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 April 30, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 20, 2009 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 firstname.lastname@example.org by e-mail.
An electronic Response was received prior to the response deadline, however, the Response was not received in hard copy and thus is deemed deficient pursuant to ICANN Rule 5.
An Additional Submission was received from Respondent without the required fee and is deemed to not be in compliance with the Forum’s Supplemental Rule 7.
A timely Additional Submission was received from Complainant and was deemed to be in compliance with the Forum’s Supplemental Rule 7. In this Additional Submission, Complainant was aware of and Responded to Respondent’s Response and Additional Submission. Therefore, the panel decided to consider Respondent’s Response and Additional Submission
On May 28, 2009, 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.
This dispute involves the domain name <canadianmagicjack.com>. Complainant, MagicJack LP, has exclusive rights in the MAGICJACK mark. MagicJack markets and sells a revolutionary, highly popular Voice over Internet Protocol (“VoIP”) device under the MAGICJACK trademark. This device provides customers with several features, among them a phone number and an ability to make and receive unlimited local and long distance calls over the Internet.
Complainant has spent more than $25 million developing the technology, infrastructure and equipment necessary to create and support the magicJack product.
MagicJack provides its product and service in both the
Complainant has obtained a federal trademark registration for the mark from the U.S. Patent and Trademark Office and is the assignee of U.S. Reg. No. 3,446,818 for the word mark MAGICJACK for use in connection with “telecommunications equipment, namely, electrical connectors used to enable voice communications over the Internet Protocol and IP networks.”
Complainant has two additional pending
Respondent registered the disputed domain name on August 1, 2008, well
after magicJack began using its MAGICJACK mark in both the
To further confuse, Respondent uses the “Testimonials” page of the infringing website to post reviews of the real magicJack’s products and services. It also uses a copyright-protected advertisement displayed on magicJack’s website. It has posted one of the exact commercials posted on the legitimate magicJack website.
On October 30, 2008, long after magicJack established itself as a
leader in the VoIP field, Respondent changed its corporate name from Wildfire
UWB Communications Ltd. to Canadianmagicjack.ca Ltd, without magicJack’s
knowledge or consent. On December 23,
2008, Respondent sent an email to magicJack’s President and CEO, taunting
magicJack because Complainant had begun the process of registering as a
proposed Competitive Local Exchange Carrier under the name Canadianmagicjack.ca
LTD. A cease-and-desist letter was sent
to respondent that same day. Respondent
refused to comply and instead, responded by email, gloating over the domain
name and admitting that he crosses the border into the
The “canadianmagicjack.com” domain name is identical or confusingly
similar to the MAGICJACK mark.
Respondent has incorporated the MAGICJACK exact mark into the Infringing
Domain Name with the mere addition of the geographically descriptive word “
Respondent has no legitimate interests or rights in the Infringing Domain Name because he has never sought or obtained any trademark registrations for “magicJack” or any variation thereof. He is not a licensee of magicJack and has not obtained permission to use the mark. Respondent’s actions are no accident. Clearly he chose to use the magicJack trademark to draw Internet users to his website by capitalizing on the association of the MAGICJACK mark with its telephone products and services.
Because Respondent’s use of the MAGICJACK mark and commercials clearly creates the potential to mislead and confuse customers as to the source or origin of information found on the Infringing Website, there is no doubt that Respondent is not making a bona fide offering of goods so as to create rights or legitimate interests in the domain name at issue.
Respondent has registered and is using the Infringing Domain Name in bad faith by doing so knowing of magicJack’s rights in the mark. His emails make it clear the he was fully aware of the magicJack device when he registered the Infringing Domain Name. He is using the domain name to attract customers to his competing website and attempting to confuse consumers into believing the he is either magicJack or is affiliated with magicJack. Also, Respondent’s method of infringement – using the exact magicJack mark to lure customers to his website – demonstrates bad faith under the Policy. He must have expected that any use of the Infringing Domain Name would cause harm to magicJack. It is so obviously indicative of magicJack products that Respondent’s use would inevitably lead to confusion of some sort.
Respondent’s non-complying Response and Additional Submission consisted
of email transmittals to The National Arbitration Forum. In the emails, Respondent states that the
case should be dismissed based on the fact that MAGIC JACK LP is claiming that
they own the trademark in
C. Additional Submissions
In Complainant’s Additional Submission, it submits a timeline showing Respondent’s failure to comply with the Policy and rules. Then, Complainant addresses each of Respondent’s contentions.
Respondent says that the case should be dismissed because 1) magicJack filed its application in May of 2008 and was to be published on May 21, 2009; 2) an admission by Complainant that Respondent was in business in Canada before May, 2008, and 3) that Complainant requested an extension of time to complete its filing for Canadian trademark registration in order to prevent Respondent from taking action.
First, the claim that magicJack is limited to the May 2008 application
date is without merit. As stated,
magicJack spent substantial resources on development and marketing in 2007,
prior to Respondent’s business and has obtained three
Second, Respondent’s attempted use of a paragraph in the Amended
Complaint regarding his being in business in
Third, Respondent’s allegations regarding an extension of time in connection
with its Canadian trademark application are without merit. Complainant requested the extension because
of the Canadian Trademark Office’s request for a copy of the
Finally, Respondent has escalated his infringing conduct by advertising a competing product, the so called “MAGIC ATA BOX” on the Infringing Website. It invites users to “Upgrade your old USB Magic Jack and trade it in for the all new MAGIC ATA BOX. No computer needed anymore.” This is in violation of Complainant’s rights for two reasons. First, Respondent is using the Infringing Website to advertise a replacement for the magicJack device using Complainant’s mark to divert consumers to a competing product. Second, Respondent has named his product “MAGIC ATA BOX” using the word “MAGIC” in an obvious attempt to siphon off magicJack’s established goodwill.
1 – The disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has right.
2- The Respondent has no rights or legitimate interests in respect of the domain name.
3- The domain name has been registered and is being used in bad faith.
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.
Respondent’s Response was submitted only in electronic format prior to the Response deadline. The National Arbitration Forum does not consider the Response to be in compliance with ICANN Rule 5. The Panel has decided to accept and consider this Response in order to resolve the real dispute between the parties. It is apparent that Complainant was aware of the Response and addressed it in the Additional Submission. See Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003) (holding that the respondent’s failure to submit a hard copy of the response and its failure to include any evidence to support a finding in its favor placed the respondent in a de facto default posture, permitting the panel to draw all appropriate inferences stated in the complaint); see also J.W. Spear & Sons PLC v. Fun League Mgmt., FA 180628 (Nat. Arb. Forum Oct. 17, 2003) (finding that where respondent submitted a timely response electronically, but failed to submit a hard copy of the response on time, “[t]he Panel is of the view that given the technical nature of the breach and the need to resolve the real dispute between the parties that this submission should be allowed and given due weight”).
Complainant has provided evidence of the registration of its MAGICJACK mark with the United States Patent and Trademark Office (“USPTO”) on June 10, 2008 (Reg. No. 3,446,818). The Panel finds this is sufficient to establish Complainant’s rights in its mark pursuant to Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
The disputed domain name contains Complainant’s MAGICJACK mark with the addition of the geographic term “Canadian” and the generic top-level domain “.com.” The Panel finds these alterations do not manage to sufficiently distinguish the disputed domain name from Complainant’s mark and finds the disputed domain name is confusingly similar to the mark under Policy ¶ 4(a)(i). See Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel finds that Complainant made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
The burden then shifts to Respondent to show it does 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.”). Respondent has failed to show it does have rights or legitimate interests in the disputed domain name. To the contrary, it is clear that Respondent used the disputed domain name knowing of Complainant’s rights.
Respondent is using the disputed domain name to draw Internet traffic to a website that advertises goods and services that compete with Complainant’s business. This does not constitute a bona fide offering of goods under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not 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 Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did 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)).
Furthermore, Respondent is not commonly known by the disputed domain name. The WHOIS information lists Respondent as “Neil Adams.” The record provides no evidence supporting the conclusion that Respondent is, or ever has been, commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected).
Respondent asserts its registration of the disputed domain name predates Complainant’s rights in the mark because Complainant’s application with the Canadian Intellectual Property Office (“CIPO”) for its MAGICJACK mark has yet to be granted registration. The Panel notes, however, that Complainant has provided evidence of the June 10, 2008 USPTO registration of its MAGICJACK mark, prior to Respondent’s registration of the disputed domain name. The Panel chooses to dismiss Respondent’s argument here.
Respondent is using the disputed domain name to compete with Complainant’s business through the operation of a website offering similar goods and services. The Panel finds that Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate websites that compete with the complainant’s business); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business).
Furthermore, Respondent has engaged in its use of the confusingly similar disputed domain name with the intent to profit from such use through its creation of a likelihood of confusion as to Complainant’s affiliation with the disputed domain name. This conduct also constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <canadianmagicjack.com> domain name be TRANSFERRED from Respondent to Complainant.
Daniel B. Banks, Jr., Panelist
Dated: June 11, 2009
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