June Bug Enterprises, Inc. v. Cameron Jackson
Claim Number: FA0509000566966
Complainant is June Bug Enterprises, Inc. (“Complainant”), represented by Stephen J. Strauss, of Fulwider Patton Lee & Utecht, LLP, 6060 Center Drive, Tenth Floor, Los Angeles, CA 90045. Respondent is Cameron Jackson (“Respondent”), P.O. Box 198, Rosebery, NSW, II 1445, AU.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <magicjohnson.info>, registered with Public Domain Registry.com.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 22, 2005; the National Arbitration Forum received a hard copy of the Complaint on September 22, 2005.
On January 18, 2006, Public Domain Registry.com confirmed by e-mail to the National Arbitration Forum that the <magicjohnson.info> domain name is registered with Public Domain Registry.com and that Respondent is the current registrant of the name. Public Domain Registry.com has verified that Respondent is bound by the Public Domain Registry.com 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 January 20, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 9, 2006 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 postmaster@magicjohnson.info by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 15, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole 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 (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." 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:
Complainant is the assignee of the rights to the name, likeness, and appearance of former National Basketball Association (“NBA”) player Earvin “Magic” Johnson.
Mr. Johnson played in the NBA for a total of thirteen years starting in 1979, and led the Los Angeles Lakers to nine appearances in the NBA finals and five NBA championships.
Mr. Johnson received three Most Valuable Player awards and is now in the NBA Hall of Fame.
Complainant uses Earvin “Magic” Johnson’s name in connection with the marketing of clothing and entertainment services.
Complainant has registered the MAGIC JOHNSON trademark with the United States Patent and Trademark Office (“USPTO”) (U.S. Reg. No. 1,555,839; registered on September 12, 1989, and U.S. Reg. No. 2,121,386, registered on December 16, 1997).
Complainant also owns trademark registrations for the MAGIC JOHNSON THEATRES and EARVIN “MAGIC” JOHNSON marks.
Respondent registered the domain name <magicjohnson.info> on January 2, 2006.
Respondent has not employed the <magicjohnson.info> domain name in connection with an active website.
Respondent’s <magicjohnson.info> domain name is identical to Complainant’s MAGIC JOHNSON mark.
Respondent does not have any rights or legitimate interests in the <magicjohnson.info> domain name.
Respondent registered and uses the <magicjohnson.info> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is identical to a trademark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has established rights in the MAGIC JOHNSON mark
through registration of the mark with the USPTO. See Vivendi Universal
Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11,
2003): “Complainant's federal trademark registrations establish Complainant's
rights in the BLIZZARD mark.” See also
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.”
Respondent’s <magicjohnson.info> domain name is identical to Complainant’s MAGIC JOHNSON mark pursuant to Policy ¶ 4(a)(i), because it contains Complainant’s entire mark, and merely deletes the space between the two parts of the mark and adds a generic top-level domain name, “.info.” Panels have many times concluded that the elimination of a space between two words and the addition of a generic top-level domain name are irrelevant in determining whether a respondent’s domain name is identical to a complainant’s mark. See 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).” See also 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 . . . ." Further see Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding that the domain name <wembleystadium.net> is identical to the WEMBLEY STADIUM mark); and Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding that a respondent’s domain name <charlesjourdan.com> is identical to the complainant’s marks).
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent does not have rights or legitimate interests in the <magicjohnson.info> domain name. Complainant has the initial burden of proof to assert that Respondent has no rights or legitimate interests in the domain name. However, once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have such rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Lush LTD v. Lush Environs, FA 96217 (Nat. Arb. Forum Jan. 13, 2001) (finding that even when a respondent does file a response, a complainant must allege facts which, if true, would establish that the respondent does not have any rights or legitimate interests in the disputed domain name); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once a complainant asserts that a respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
Respondent’s failure to answer the Complaint raises a presumption that Respondent has no rights or legitimate interests in the <magicjohnson.info> domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002): “[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.” See also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from a respondent’s failure to reply to the complaint).
In addition, there is no evidence in the record in this proceeding
showing that Respondent is commonly known by the <magicjohnson.info>
domain name. Therefore, Respondent has
not established rights or legitimate interests in the <magicjohnson.info>
domain name pursuant to Policy ¶ 4(c)(ii).
See Gallup, Inc. v. Amish Country
Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that a respondent
does not have rights in a domain name when the respondent is not known by the
mark); see also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003): “Given the
WHOIS contact information for the disputed domain [name], one can infer that
Respondent, Onlyne Corporate Services11, is not commonly known by the name
‘welsfargo’ in any derivation.”
Finally under this heading, there is nothing in the record
here to show that Respondent has either actively employed or made preparations
to use the <magicjohnson.info> domain name. Therefore, the Panel is entitled to and does
infer that Respondent is passively holding the disputed domain name. Such nonuse does not constitute a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a
legitimate noncommercial or fair use of the domain name pursuant to Policy ¶
4(c)(iii). See Pharmacia & Upjohn
AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or
legitimate interests where a respondent failed to submit a response to a
complaint and had made no use of the domain name in question); see also TMP
Int’l, Inc. v. Baker Enters., FA
204112 (Nat. Arb. Forum Dec. 6, 2003): “[T]he Panel concludes that Respondent's
passive holding of the domain name does not establish rights or legitimate
interests pursuant to Policy ¶ 4(a)(ii).” Further see Bloomberg L.P.
v. Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001) (finding that no rights
or legitimate interests can be found when a respondent fails to use a disputed
domain name in any way).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
In the circumstances here presented, Respondent’s passive
holding of the domain name <magicjohnson.info>, which is identical
to Complainant’s mark, is evidence of bad faith registration and use of the
name pursuant to Policy ¶ 4(a)(iii). See Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000)
(finding that a respondent made no use of the domain name or website connected
with a contested domain name, and that passive holding of a domain name permits
an inference of registration and use in bad faith); see also DCI S.A.
v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that a
respondent’s passive holding of the domain name satisfies the requirement of ¶
4(a)(iii) of the Policy); see also Body Shop Int’l PLC v. CPIC NET,
D2000-1214 (WIPO Nov. 26, 2000) (finding bad faith where, among other things, a
respondent failed to use the domain name; see also Alitalia –Linee
Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000)
(finding bad faith where a respondent made no use of the domain name in question
and there were no other indications that the respondent could have registered
and used the domain name in question for any non-infringing purpose).
Moreover, it is evident from the record in this proceeding
that Respondent registered the contested domain name with at least constructive
knowledge of Complainant’s rights in the MAGIC JOHNSON mark by virtue of the
prior registration of that mark with the United States Patent and Trademark
Office. Registration of an identical or
confusingly similar domain name despite such constructive knowledge evidences
bad faith registration and use of the domain name pursuant to Policy ¶
4(a)(iii). See Digi Int’l v. DDI Sys.,
FA 124506 (Nat. Arb. Forum Oct. 24, 2002); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb.
Forum Oct. 4, 2002).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <magicjohnson.info> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: February 28, 2006
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