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Posts Tagged ‘Cease and Desist Letter’

MagicJack Calls In An International Win

Monday, June 22nd, 2009

In a recent domain dispute decision of MagicJack LP v. Neil Adams 1258600 (Nat. Arb. Forum June 11, 2009), a single member Panel was faced with a dispute over the domain www.canadianmagicjack.com. Complainant sells the popular MAGICJACK voice over Internet protocol (VOIP) device which permits customers to make and receive calls through an Internet connection. The MAGICJACK product has been marketed and sold since at least March 2008 and they maintain a web site at www.magicjack.com. Complainant has a federally registered trademark for MAGICJACK. Respondent registered the disputed domain on August 1, 2008. Complainant contends that Respondent’s domain offers telephone service identical to its own service, including International local phone numbers that can be forwarded to existing U.S. Magic Jack numbers. Complainant also argues that Respondent sent MagicJack’s CEO an email taunting them and admitting that Respondent crossed into the U.S. border to purchase and resell Complainant’s device in Canada. Respondent claimed that since Complainant had only applied for a trademark application as of May 13, 2008, that Respondent had prior Canadian rights since it was in business as of April 30, 2008.

A review of the three ICANN UDRP policies requires a Complainant to prove (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.

In addressing the first element, the Panel explained that merely adding the geographic term “Canadian” was not a significant alteration to result in a distinguishable domain. The Panel found that the domain contained all of Complainant’s mark and determined that Complainant therefore satisfied this element.

Moving to the second element, whether Respondent had any rights or legitimate interests in the domain, the Panel found that Complainant made a prima facie case and thus shifted the burden of proof to the Respondent. The Panel explained that Respondent failed to show it had any rights or legitimate interests and used the domain knowing of Complainant’s rights. The Panel further found Respondent used the domain to draw Internet traffic to advertise competing goods and services. Additionally Respondent was not commonly known by the disputed domain according to the WHOIS records. Lastly, the Panel addressed Respondent’s Canadian trademark application priority theory and explained:

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. 

Moving to the final element, the Panel found that using the domain to compete with Complainant’s business was evidence of bad faith. Additionally, the use of the domain would create a likelihood of confusion pursuant to ¶4(b)(iv) of the Policy. Ultimately, the Panel found that Complainant satisfied all of the elements, and agreed to TRANSFER the disputed domain.

(UPDATE 7/20/09): Subsequent to the UDRP decision reported above, we were informed by Respondent that it filed a Canadian law suit to block the Panel’s order transferring the domain. The outcome of this dispute remains uncertain, but as of this posting Respondent continues to control the domain.

ALAMO doesn’t suck!

Tuesday, December 9th, 2008

In a recent domain dispute, Vanguard Trademark Holdings USA, LLC v. European Travel Network (WIPO D2008-1325, October 31, 2008), a Panel was faced with whether or not a “sucks” web site violated the ICANN policies. Critical commentary or “sucks” web sites are many times the subject of domain disputes. Complainant is the owner of the ALAMO and ALAMO RENT A CAR trademarks, which have been in use since at least 1973. Complainant maintains a web site at www.alamo.com. The disputed domain was www.alamo-sucks.com. The disputed domain was registered on April 29, 2008.  Complainant sent the Respondent a cease and desist letter regarding the use of the disputed domain, since it was being redirected to www.lowest-car-rental-price.com, which provided links to other providers of car rentals services.  Respondent’s web site apparently did not criticize Complainant ALAMO. After receiving the cease and desist letter, Complaint changed the domain to a landing site offering the domain for sale at a price of $7,500.00.  As a result the following domain dispute was instituted.

The Panel analyzed the three prong test in the ICANN policy and first addressed whether the disputed domain was identical or confusingly similar. The Panel found that the disputed domain incorporated all of Complainant’s trademark and that inclusion of the additional term “sucks” did not dispel such confusing similarity.

In addressing the second prong, whether or not Respondent had any rights or legitimate interests in the disputed domain, the Panel made some observations regarding the Respondent’s prior use.

The use of a domain name incorporating the Complainant’s well-known ALAMO mark to redirect Internet users to a pay-per-click website containing links to other providers of vehicle rental or leasing services does not constitute a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. Nor does the offering of the disputed domain name for sale, under the circumstances of this case, fall within this safe harbor provision. To the contrary, as discussed below, such opportunistic behavior is a strong indication of the Respondent’s bad faith intent to profit from and exploit the Complainant’s mark.

As a result the Panel found that Respondent did not have any rights or legitimate interests. The Panel then reviewed the last prong, whether or not the domain was registered and used in bad faith. The Panel explained:

It is an inescapable inference from the circumstances of this case that the Respondent knew of and had in mind the Complainant and the Complainant’s ALAMO Marks when registering the disputed domain name. The Respondent’s opportunistic use of the disputed domain name to redirect Internet visitors to its “www.lowest-car-rental-prices.com” website underscores this conclusion. Such opportunistic use by the Respondent prior to receiving notice of this dispute, followed by the Respondent’s attempt to sell the disputed domain name for an amount appearing to be in excess of the reasonable out-of-pocket expenses directly related to the domain name without any evidence to the contrary shown by the Respondent, manifests the Respondent’s bad faith intent to profit from and exploit the Complainant’s ALAMO Marks. The pattern of cybersquatting indicated by prior decisions under the Policy involving the Respondent provides an exclamation point to the Respondent’s bad faith in this case.

Ultimately the Panel found that all of the ICANN prongs had been met and agreed to TRANSFER the disputed domain to Complainant.

Porta-John vs. Porta-Jon: They care where you go!

Thursday, September 4th, 2008

In the case of Toilets.com, Inc. v. Porta-Jon of the Piedmont (WIPO D2008-1043, August 22, 2008), the Panel was faced with two long standing companies using nearly identical marks and web sites. Complainant first used the phrase “porta-john” for rented portable toilets in 1962. And owns registered mark for PORTA-JOHN since 1972. Complainant’s principal website is “www.porta-john.com”, which it has used continuously since 1997. Respondent conducted a similar business in the state of North Carolina since May 1969, and incorporated its business under the name Porta-Jon of the Piedmont, Inc. in North Carolina in 1973. Respondent holds state trademark registrations for PORTA-JON in North Carolina and South Carolina. Respondent registered the disputed domain name “porta-jon.com” in 1998 and used it to promote its business.

                 

The Complainant sent many cease and desist letters to Respondent over the years. The panel acknowledged, that the only fathomable argument in favor of finding a lack of legitimate purpose was that the cease and desist letters may have served as notice of the dispute. However, the panel quickly dismissed any validity or support thereto.

Instead the panel focused on the evidence presented in favor of legitimate use by the Respondent, noting:

This Panel cannot conceive circumstances in which decades of use of a business name, without interruption, can fail to give a registrant a right or legitimate interest under the Policy to incorporate the principal word in that name into a domain name used for purposes of that business. Such circumstances are exactly the reason for the safe harbor in paragraph 4(c)(ii) of the Policy.

The Panel observed further that:

To the extent Complainant believes its business has been adversely affected by Respondent’s long-time conduct, an action in court for trademark infringement or unfair competition is the appropriate means for seeking redress. A court action, not a Policy proceeding, similarly is the place to determine “priority” and other rights under national trademark laws. With its abbreviated proceedings and considerably lower costs, the Policy may appear to be a quick-and-dirty alternative to an infringement action or, as appears to be true in this case, to a further cease-and-desist letter.

Ulitimately, the Panel denied the transfer of the domain and found that the complaint was “nothing more than harassment” and was Reverse Domain Name Hijacking.

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