Advertising Magic, Inc. v.
Ad Magic Inc., d/b/a Ad Magic c/o
Claim Number: FA0701000894041
PARTIES
Complainant is Advertising Magic, Inc. (“Complainant”), represented by Timothy
Clyne, of Machetta Law Firm,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <admagic.com>, <admagic-inc.com>, <admagicadvertising.com>, and <admagic.org>, registered
with Go
Daddy Software, Inc.
PANEL
The undersigned certify that they have acted independently and impartially
and to the best of their knowledge have no known conflict in serving as
Panelists in this proceeding.
Sandra J.
Franklin, Esq., Peter L. Michaelson, Esq., F.C.I. Arb. and
Dr. Reinhard Schanda, Chair, as Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on January 22, 2007; the
National Arbitration Forum received a hard copy of the Complaint on January 22, 2007.
On January 22, 2007, Go Daddy Software, Inc. confirmed by e-mail to
the National Arbitration Forum that the <admagic.com>, <admagic-inc.com>, <admagicadvertising.com>, and <admagic.org> domain
names are registered with Go Daddy Software,
Inc. and that the Respondent is the current registrant of the
names. Go
Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 February 1, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of February 21, 2007 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@admagic.com,
postmaster@admagic-inc.com, postmaster@admagicadvertising.com and postmaster@admagic.org
by e-mail.
On February 7, 2007, Respondent requested, pursuant to Supplemental Rule 6, an extension of 20 days to respond to the Complaint due to extenuating circumstances. On February 8, 2007, the National Arbitration Forum, with Complainant’s consent, granted Respondent an extension and set a new deadline of March 13, 2007 for a filing of a Response.
On
February 13, 2007 Respondent filed a motion to suspend proceedings, pending
disposition of Ad Magic, Inc. v. Advertising Magic, Inc. and Harilaos Boukis,
United States District Court, District of New Jersey Docket no. 2:06-cv-05775
(SRC), which lawsuit was initiated prior to this ICANN proceeding.
A timely Response was received and determined to be complete on March 13, 2007.
On March 21, 2007, pursuant to Respondent’s
request to have the dispute decided by a three-member Panel, the National
Arbitration Forum appointed Sandra J. Franklin, Esq., Peter L.
Michaelson, Esq., F.C.I. Arb. and Dr. Reinhard
Schanda, Chair as Panelists.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
Complainant makes the following assertions:
1. Respondent’s <admagic.com>,
<admagic-inc.com>,
<admagicadvertising.com>, and
<admagic.org> domain names
are confusingly similar to Complainant’s ADVERTISING MAGIC mark.
2. Respondent
does not have any rights or legitimate interests in the <admagic.com>,
<admagic-inc.com>,
<admagicadvertising.com>, and
<admagic.org> domain names.
3. Respondent
registered and used the <admagic.com>, <admagic-inc.com>,
<admagicadvertising.com>, and
<admagic.org> domain names in
bad faith.
Respondent contends that there is no significant degree of similarity
between the domain names at dispute and the Complainant’s mark. Furthermore
Respondent has rights in the domain names at dispute and did not register and
use the <admagic.com>,
<admagic-inc.com>,
<admagicadvertising.com>, and
<admagic.org> domain names in
bad faith.
Additionally Respondent contends
that it has filed suit against the Complainant in federal court to protect its
rights to and interests in the “AD MAGIC” service mark, requesting a judicial
declaration that it has not infringed upon Complainant’s “ADVERTISING MAGIC”
trademark. The action, filed in December 2006 is docketed as Ad Magic, Inc. v.
Advertising Magic, Inc., and Boukis,
United States District Court, District of New Jersey, Docket No. 2:06-CV-05775
(SRC).
With its additional submission Respondent has filed a motion to suspend
proceedings pending disposition of its Federal lawsuit, that lawsuit having
been initiated prior to the ICANN proceeding. In its additional submission
Respondent has submitted its extensive arguments on the merits in the pending proceedings
before the District Court.
Respondent contends that it seeks
declaration that its use of the service mark AD MAGIC and its domain names <admagic.com>,
<admagic-inc.com>,
<admagicadvertising.com>, and
<admagic.org> and related
websites in the course of advertising its goods and services do not infringe
Complainant’s claimed trademark rights and do not constitute false designation
of origin or unfair competition under state law.
According to Respondent, the District Court action will provide a
resolution of all disputes between the parties concerning all of their marks,
which the Forum cannot decide. In addition, the District Court proceedings
permit the exchange of discovery, examination of witnesses, presentation of
reply arguments, and examination and cross-examination of live witnesses, all
of which are unavailable in a proceeding under the UDRP. The ability to resolve
the entire breadth of the parties’ dispute, in a forum which allows detailed
consideration of all the parties’ grievances, calls for a stay of the present
proceedings in favor of the District Court.
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.
Respondent has allegedly filed a lawsuit against Complainant in the United States District Court for the District of New Jersey seeking a declaratory judgment that it has not infringed upon Complainant’s ADVERTISING MAGIC mark by using the AD MAGIC mark.
Rule 18(a) of the Policy provides: “In the event of any legal
proceeding initiated prior to or during an administrative proceeding in respect
of a domain-name dispute that is the subject of the complaint, the panels shall
have the discretion to decide whether to suspend or terminate the
administrative proceeding, or to proceed to decision”.
After fully
considering all issues in dispute, particularly in light of those raised in the
Respondent's Additional Submission, the Panel concludes that determination of
all these issues is beyond the scope of an ICANN proceeding . Thus, pursuant to
Rule 18(a) of the Policy, the Panel, in exercise of its discretion decides to
terminate the present proceeding, without prejudice, and defer resolution of
all these issues to the United States District Court and through the lawsuit
now ongoing between the parties. See AmeriPlan Corp. v.
Gilbert FA105737 (Nat. Arb. Forum Apr. 22, 2002) (finding that
Policy ¶ 4(k) requires that ICANN not implement an administrative panel’s
decision regarding a UDRP dispute until the court proceeding is resolved and
therefore, a panel should not rule on a decision when there is a court
proceeding pending because no purpose is served by the panel rendering a
decision on the merits to transfer the domain name, or have it remain, when a
decision regarding the domain name will have no practical consequence); see also Lutton Invs., Inc. v.
Darkhorse Distrib., Inc., FA 154142 (Nat. Arb. Forum June 4, 2003) (stating
that “[t]he pending arbitration between the parties to this dispute, touching
on matters directly relevant to the resolution of a claim under the UDRP,
justifies terminating the present administrative proceeding” and dismissing the
complaint without prejudice). Once the
pending District Court litigation concludes, then either of the parties, should
it desire to do so, can initiate a subsequent ICANN proceeding regarding any of
the present domain names presently in dispute.
DECISION
Because this matter is subject to previously filed proceedings in the
United States District Court for the District of New Jersey, the ICANN
proceedings are terminated. The Complainant with respect to the domain names <admagic.com>,
<admagic-inc.com>,
<admagicadvertising.com>, and
<admagic.org> is hereby
dismissed without prejudice.
Dr. Reinhard Schanda, Chair
Sandra J.
Franklin, Esq., Peter L. Michaelson, Esq., F.C.I. Arb., Panelists
Dated: April 4, 2007
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