National Arbitration Forum
DECISION
June Bug Enterprises, Inc.
v. myspecialprice.com
Claim Number: FA0611000833078
PARTIES
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 <magicjohnsontravelgroup.com>,
registered with Wild West Domains, Inc.
PANEL
The undersigned certifies that she has acted independently and
impartially and to the best of her knowledge has no known conflict in serving
as Panelist in this proceeding.
Linda M. Byrne as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on November 6, 2006; the
National Arbitration Forum received a hard copy of the Complaint on November 8, 2006.
On November 7, 2006, Wild West Domains, Inc. confirmed by e-mail to
the National Arbitration Forum that the <magicjohnsontravelgroup.com> domain
name is registered with Wild West Domains, Inc.
and that the Respondent is the current registrant of the name. Wild West
Domains, Inc. has verified that Respondent is bound by the Wild West Domains, 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 November 15, 2006, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of December 5, 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@magicjohnsontravelgroup.com
by e-mail.
A timely Response was received and determined to be complete on December 5, 2006.
A timely Additional Submission from Complainant was received and
determined to be complete on December 8, 2006.
On December 13, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Linda M. Byrne as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends that Respondent’s domain name <magicjohnsontravelgroup.com> is confusingly similar to Complainant’s trademarks MAGIC JOHNSON and MAGIC JOHNSON TRAVEL GROUP; that Respondent does not have any rights or legitimate interest with respect to the domain name; and that the domain name was registered and being used in bad faith.
B. Respondent
Respondent contends that Respondent had a legitimate business interest in the <magicjohnsontravelgroup.com> domain name; and that Respondent did not register and use the domain name in bad faith.
C. Additional Submissions
Complainant’s Additional Submission stated that the Response failed to
identify the preferred method of communicating with Respondent, failed to
include a certification statement, failed to identify legal proceedings, and
failed to include a statement that a copy of the Response had been sent to
Complainant. The Additional Submission
also states that the Response had not disputed the major arguments set forth in
the Complaint.
FINDINGS
Complainant owns several
On May 22, 2006, Respondent registered the domain name <magicjohnsontravelgroup.com>.
This domain name resolves to the <myspecialprice.com> website, which has
links for “Book Travel Now,” “Business Opportunities,”
and “Fund Raisers.” Respondent stated that it registered the <magicjohnsontravelgroup.com>
domain name “hoping perhaps in the future that their [sic] might be a need
for it and maybe come in contact with Magic’s
The website associated with <magicjohnsontravelgroup.com> contains a series of links, including
“Magic Johnson Autographs,” “Free Magic Johnson Jersey,” “Free LA Laker
Poster,” etc. The website also contains
links to other popular categories for searches, such as travel, financial
planning, real estate, insurance, etc.
The record contains no correspondence between the parties. On November 6, 2006, Complainant filed this complaint to seek the transfer of the <magicjohnsontravelgroup.com > domain name.
DISCUSSION
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.
Identical and/or Confusingly
Similar
Complainant asserts rights in the MAGIC JOHNSON mark through several registrations with the United States Patent and Trademark Office (e.g., Reg. No. 2,121,386 issued December 16, 1997). Complainant has established rights in the MAGIC JOHNSON mark through this registration under 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 Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.").
Complainant
also asserts rights in the MAGIC JOHNSON TRAVEL GROUP mark through the filing
of three
Moreover,
this Panel concludes that the <magicjohnsontravelgroup.com>
domain name is confusingly
similar to Complainant’s MAGIC JOHNSON and MAGIC JOHNSON TRAVEL GROUP
marks. The <magicjohnsontravelgroup.com>
domain name is identical to Complainant’s MAGIC JOHNSON TRAVEL GROUP mark,
as the disputed domain name consists of the mark in its entirety with the
addition of the generic top-level domain “.com.” The addition of a generic top-level domain is
not relevant in a Policy ¶ 4(a)(i) analysis. 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 Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July
7, 2000) (finding <pomellato.com> identical to the complainant’s mark
because the generic top-level domain (gTLD) “.com” after the name POMELLATO is
not relevant).
Rights or Legitimate Interests
Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). Respondent’s WHOIS information does not indicate that Respondent is commonly known by the <magicjohnsontravelgroup.com> domain name and Complainant has asserted that Respondent is not authorized to use Complainant’s marks. 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 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).
Complainant
contends that Respondent has no rights or legitimate interests in the <magicjohnsontravelgroup.com> domain name, but is using Complainant’s mark to
attract Internet users to Respondent’s website for Respondent’s commercial
benefit. The content of Respondent’s
site allows computer users to be linked to several unrelated, third-party
sites, and Respondent presumably receives click-through fees as a result. This Panel concludes that Respondent has not
made 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 WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum
June 12, 2003) (finding that the respondent’s use of
the disputed domain name to redirect Internet users to websites unrelated to
the complainant’s mark, websites where the respondent presumably receives a
referral fee for each misdirected Internet user, was not a bona fide
offering of goods or services as contemplated by the Policy); see also Black
& Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June
24, 2002) (holding that the respondent’s use of the disputed domain name to
redirect Internet users to commercial websites, unrelated to the complainant
and presumably with the purpose of earning a commission or pay-per-click
referral fee did not evidence rights or legitimate interests in the domain
name).
Registration and Use in Bad Faith
This Panel finds that
Respondent’s registration of the disputed domain name only a few days after the
public announcement of the MAGIC JOHNSON TRAVEL GROUP constitutes opportunistic
bad faith under Policy ¶ 4(a)(iii). Respondent admits knowing of Complainant’s
mark and business when registering the <magicjohnsontravelgroup.com> domain
name. See Sota v.
Waldron, D2001-0351 (WIPO June 18, 2001) (finding that the respondent’s
registration of the <seveballesterostrophy.com> domain name at the time
of the announcement of the Seve Ballesteros Trophy golf tournament “strongly
indicates an opportunistic registration”); see
also Pavillion Agency, Inc. v.
Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the
“domain names are so obviously connected with the Complainants that the use or
registration by anyone other than Complainants suggests ‘opportunistic bad
faith’”).
Respondent has admitted to knowledge of both Magic Johnson and his
company launched under the MAGIC JOHNSON mark.
As a result, it appears that the disputed domain name was registered in
bad faith as Respondent had actual notice of both Complainant and Complainant’s
mark when registering the <magicjohnsontravelgroup.com> domain
name. See Albrecht v. Natale, FA 95465 (Nat. Arb.
Forum Sept. 16, 2000) (finding registration in bad faith based where there is
no reasonable possibility, and no evidence from which to infer that the domain
name was selected at random since it entirely incorporated the complainant’s
name); see also Reuters Ltd. v.
Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that the
respondent demonstrated bad faith where the respondent was aware of the
complainant’s famous mark when registering the domain name as well as aware of
the deception and confusion that would inevitably follow if he used the domain
names).
Complainant asserts that Respondent receives click-through fees for diverting Internet users to unrelated commercial websites. Since Respondent’s <magicjohnsontravelgroup.com> domain name is identical to Complainant’s MAGIC JOHNSON TRAVEL GROUP mark and is confusingly similar to Complainant’s MAGIC JOHNSON mark, consumers accessing Respondent’s domain name may become confused as to Complainant’s affiliation with the resulting website. Confusion is particularly likely in view of the fact that both Complainant and Respondent offer travel agency services. Thus, Respondent’s commercial use of the disputed domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Qwest Communications Int’l Inc. v. Ling Shun Shing, FA 187431 (Nat. Arb. Forum Oct. 6, 2003) (“Respondent's attempt to commercially benefit from the misleading domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv).”); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <magicjohnsontravelgroup.com> domain
name be TRANSFERRED from Respondent to Complainant.
Linda M. Byrne, Panelist
Dated: December 27, 2006
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