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.