June Bug Enterprises,
Inc. v. Bobby Gosnell
Claim Number: FA1004001319346
Complainant is June Bug
Enterprises, Inc. (“Complainant”),
represented by Stephen J. Strauss, of Fulwider Patton LLP,
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <earvinmagicjohnsonjr.com>,
registered with Godaddy.com, 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.
Judge Ralph Yachnin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on April 14, 2010.
On
April 15, 2010, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration
Forum that the <earvinmagicjohnsonjr.com> domain name is registered with
Godaddy.com, Inc. and that Respondent is
the current registrant of the name. Godaddy.com, Inc. has verified that Respondent
is bound by the Godaddy.com, 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 19, 2010, the Forum served the Complaint and all Annexes, including a
Written Notice of the Complaint, setting a deadline of May 10, 2010 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@earvinmagicjohnsonjr.com. Also on April 19, 2010, the Written Notice of
the Complaint, notifying Respondent of the email 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 National Arbitration Forum
transmitted to the parties a Notification of Respondent Default.
On
May 14, 2010, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Judge Ralph
Yachnin as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration Forum has discharged its
responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy "to employ reasonably available means calculated
to achieve actual notice to Respondent" through submission of a Written
Notice, as defined in Rule 1. Therefore,
the Panel may issue its decision based on the documents submitted and in
accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1.
Respondent’s
<earvinmagicjohnsonjr.com>
domain name is confusingly similar to Complainant’s EARVIN “MAGIC” JOHNSON
mark.
2.
Respondent
does not have any rights or legitimate interests in the <earvinmagicjohnsonjr.com> domain
name.
3.
Respondent
registered and used the <earvinmagicjohnsonjr.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, June Bug Enterprises, Inc., holds multiple trademark
registrations for its EARVIN “MAGIC” JOHNSON mark with the United States Patent
and Trademark Office (“USPTO”) (e.g.,
Reg. No. 2,967,088 issued July 12, 2005).
The mark is registered in connection with former NBA star Earvin “Magic”
Johnson who is associated with a wide array of products and services
including: personal appearances,
clothing and sports jerseys, medical services and books related to career
counseling and business management.
Respondent, Bobby Gosnell, registered the disputed domain name on August
21, 2008. The disputed domain name
resolves to a website displaying links to third-party sites that relate to
Complainant’s mark, basketball and NBA tickets.
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."
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(e), 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 and inferences set forth in the Complaint as
true unless the evidence is clearly contradictory. See Vertical
Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb.
Forum July 31, 2000) (holding that the respondent’s failure to respond allows
all reasonable inferences of fact in the allegations of the complaint to be
deemed true); see also Talk City,
Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a
response, it is appropriate to accept as true all allegations of the
Complaint.”).
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.
Respondent, Bobby Gosnell, registered the disputed domain name on August
21, 2008.
Complainant
asserts rights in its EARVIN “MAGIC” JOHNSON mark through its holding of
multiple trademark registrations for the EARVIN “MAGIC” JOHNSON mark with the
USPTO (e.g.,
Reg. No. 2,967,088 issued July 12, 2005).
The Panel finds that Complainant has established rights in its EARVIN
“MAGIC” JOHNSON mark pursuant to Policy ¶ 4(a)(i) through its trademark
registration with the USPTO. See Enter. Rent-A-Car
Co. v. David Mizer Enters., Inc., FA 622122 (Nat. Arb. Forum Apr. 14, 2006)
(finding that the complainant’s registration of the ENTERPRISE, ENTERPRISE
RENT-A-CAR, and ENTERPRISE CAR SALES marks with the USPTO satisfied the
requirement of demonstrating rights in the mark under consideration pursuant to
Policy ¶ 4(a)(i)); see also Intel
Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26,
2006) (finding that the complainant had established rights in the PENTIUM,
CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO).
Complainant
asserts that Respondent’s disputed domain name is confusingly similar to
Complainant’s mark under Policy ¶ 4(a)(i). Respondent’s <earvinmagicjohnsonjr.com> domain name incorporates the entirety of Complainant’s
mark, deletes the quotation marks and adds the descriptive abbreviation “jr”
and the generic top-level domain (“gTLD”) “.com.” The Panel finds that the removal of
punctuation such as the quotation marks in Complainant’s mark creates a
confusing similarity between the disputed domain name and Complainant’s
mark. See Mrs. World Pageants, Inc.
v. Crown Promotions, FA 94321 (Nat. Arb. Forum Apr. 24, 2000)
(finding that punctuation is not significant in determining the similarity of a
domain name and mark); see also Chernow Commc’ns, Inc. v. Kimball, D2000-0119
(WIPO May 18, 2000) (holding “that the use or absence of punctuation marks,
such as hyphens, does not alter the fact that a name is identical to a
mark"). Additionally, the Panel
finds that the addition of the descriptive abbreviation “jr” renders
Respondent’s disputed domain name confusingly similar to Complainant’s mark. See
Kelson Physician Partners, Inc. v. Mason,
CPR003 (CPR 2000) (finding that <kelsonmd.com> is identical or
confusingly similar to the complainant’s federally registered service mark,
KELSON); see also
The Panel finds that Policy ¶ 4(a)(i) has been
satisfied.
Complainant
alleges that Respondent does not have rights and legitimate interests in the
disputed domain name. Once Complainant
makes a prima facie case in support
of its allegations, the burden shifts to Respondent to prove it has rights or
legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). Based on the
arguments made in the Complaint, the Panel finds that Complainant has
established a prima facie case in
support of its contentions and Respondent has failed to submit a Response to
these proceedings. See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan.
4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its
allegations, the burden shifts to respondent to show that it does have rights
or legitimate interests pursuant to paragraph 4(a)(ii)
of the Policy.”); see also Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13,
2007) (finding that once a prima facie case
has been established by the complainant, the burden then shifts to the respondent
to demonstrate its rights or legitimate interests in the disputed domain name
pursuant to Policy ¶ 4(c)).
Nevertheless, the Panel will examine the record to determine if
Respondent has rights or legitimate interests in the disputed domain name pursuant
to Policy ¶ 4(c).
The WHOIS
information lists the registrant as “Bobby
Gosnell.” Complainant asserts that
Respondent has no relationship with Complainant and that Complainant has not
given permission or authorized Respondent to register and use the disputed
domain name. Without evidence in the
record to the contrary, the Panel finds that Respondent is not commonly known
by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July
7, 2006) (concluding that the respondent was not commonly known by the disputed
domain names where the WHOIS information, as well as all other information in
the record, gave no indication that the respondent was commonly known by the
disputed domain names, and the complainant had not authorized the respondent to
register a domain name containing its registered mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5,
2007) (concluding that the respondent was not commonly known by the
<lilpunk.com> domain name as there was no evidence in the record showing
that the respondent was commonly known by that domain name, including the WHOIS
information as well as the complainant’s assertion that it did not authorize or
license the respondent’s use of its mark in a domain name).
Respondent’s <earvinmagicjohnsonjr.com> domain name was registered
on August 21, 2008. The disputed domain name resolves to a
website displaying links to third-party sites that relate to Complainant’s
mark, basketball and NBA tickets. Respondent
presumably profits through the receipt of click-through fees associated with
these third-party links. The Panel finds
that Respondent’s use of the disputed domain name is not in connection with
either 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 Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8,
2007) (concluding that the operation of a pay-per-click website at a
confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate
noncommercial or fair use, regardless of whether or not the links resolve to
competing or unrelated websites or if the respondent is itself commercially
profiting from the click-through fees); see
also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept.
30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking
Complainant’s website to a website of Respondent and for Respondent’s benefit
is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it
is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <earvinmagicjohnsonjr.com>
domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court,
NY (Ret.)
Dated May 18, 2010
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