DECISION

June Bug Enterprises, Inc. v. Mercedita Kyamko

Claim Number:  FA0409000337694

PARTIES

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 Mercedita Kyamko (“Respondent”), P.O. Box #53792, CSEZ Clarkfield, Angeles City, Pampanga 2009, Phillippines.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <magicjohnson.com>, registered with iHoldings.com, Inc. d/b/a Dotregistrar.com.

PANEL

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.

Honorable Paul A. Dorf (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on September 28, 2004; the Forum received a hard copy of the Complaint on September 30, 2004.

On September 30, 2004, iHoldings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail to the Forum that the domain name <magicjohnson.com> is registered with iHoldings.com, Inc. d/b/a Dotregistrar.com and that Respondent is the current registrant of the name. iHoldings.com, Inc. d/b/a Dotregistrar.com has verified that Respondent is bound by the iHoldings.com, Inc. d/b/a Dotregistrar.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 October 5, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 25, 2004 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.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On November 2, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <magicjohnson.com> domain name is identical to Complainant’s MAGIC JOHNSON mark.

2. Respondent does not have any rights or legitimate interests in the <magicjohnson.com> domain name.

3. Respondent registered and used the <magicjohnson.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, June Bug Enterprises, holds the rights to the MAGIC JOHNSON mark.  The mark is the nickname of a famous basketball player—Earvin Magic Johnson.  Mr. Johnson has assigned his rights to the “Magic Johnson” name to Complainant, and Complainant first registered the MAGIC JOHNSON mark on September 12, 1989 with the U.S. Patent and Trademark Office (“USPTO”) (reg. no. 1,555,839, stating “THE NAME MAGIC JOHNSON IDENTIFIES A LIVING INDIVIDUAL WHOSE CONSENT IS OF RECORD”).  Complainant also holds various subsequent USPTO registrations for the MAGIC JOHNSON mark.

Complainant previously registered the <magicjohnson.com> domain name, but “inadvertently let the domain name registration expire in the late 1990s.”

Respondent registered the <magicjohnson.com> domain name on March 1, 1999.  The disputed domain name refers to another domain name, <clubhongkong.com>, which exhibits pornography.

DISCUSSION

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.

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:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) 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

Because Complainant has a USPTO registration for the MAGIC JOHNSON mark, and that registration predates Respondent’s registration of the <magicjohnson.com> domain name, Complainant may bring a claim under the Policy pursuant to Policy ¶ 4(a)(i).  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that 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, and Respondent has the burden of refuting this assumption).

The <magicjohnson.com> domain name is identical to Complainant’s MAGIC JOHNSON mark.  The only difference is the omissino of the space between the terms, which does not significantly distinguish the domain name from the mark.  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); see also Croatia Airlines v. Kijong, AF-0302 (eResolution Sept. 25, 2000)  (finding that the domain name <croatiaairlines.com> is identical to Complainant's CROATIA AIRLINES trademark).

The Panel finds that Complainant has established Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent has not submitted a Response.  Therefore, the Panel may accept all reasonable assertions by Complainant as true.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true); see also Bayerische Motoren Werke AG v. Bavarian AG, FA110830 (Nat. Arb. Forum June 17, 2002) (finding that in the absence of a Response the Panel is free to make inferences from the very failure to respond and assign greater weight to certain circumstances than it might otherwise do).

Respondent is wholly appropriating Complainant’s mark to exhibit pornography, which is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).  See American Eagle Outfitters, Inc. v. Zuccarini, FA 155178 (Nat. Arb. Forum June 10, 2003) (finding that Respondent’s use of a domain name that was a misspelling of Complainant’s mark to redirect Internet users to an adult-oriented website was not a bona fide offering of goods or services); see also Microsoft Corp. v. Horner, D2002-0029 (WIPO Feb. 27, 2002) (holding that Respondent’s use of Complainant’s mark to “define the location of Respondent’s website on the Internet” and to host a pornographic website was not a legitimate noncommercial or fair use of the domain name).

There is nothing in the record, including the WHOIS domain name registration information, that demonstrates that Respondent is commonly known by the domain name pursuant to Policy ¶ 4(c)(ii).  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark).

The Panel finds that Complainant has established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent is using the disputed domain name to redirect Internet traffic and Complainant’s customers to a pornographic website.  The Panel finds that this is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO March 4, 2003) (stating that “whatever the motivation of Respondent, the diversion of the domain name to a pornographic site is itself certainly consistent with the finding that the Domain Name was registered and is being used in bad faith”); see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that absent contrary evidence, linking the domain names in question to graphic, adult-oriented websites is evidence of bad faith).

In addition, the Panel infers that Respondent is receiving revenues by redirecting traffic from <magicjohnson.com> to <clubhongkong.com>.  The Panel finds that Respondent has registered and used the disputed domain name for commercial gain by creating a likelihood of confusion with Complainant’s mark pursuant to Policy ¶ 4(b)(iv).  See ESPN, Inc. v. Ballerini, FA 95410 (Nat. Arb. Forum Sept. 15, 2000) (finding bad faith where Respondent linked the domain name to another website <iwin.com>, presumably receiving a portion of the advertising revenue from the site by directing Internet traffic there, thus using a domain name to attract Internet users for commercial gain); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).

Complainant has stated in its Complainant that it used to hold the registration for the <magicjohnson.com> domain name but “inadvertently let the domain name registration expire in the late 1990s.”  In addition Complainant has waited almost four years to file a complaint.  Neither Complainant’s failure to maintain the registration for the <magicjohnson.com> domain name nor Complainant’s delay in filing a claim completely mitigates Respondent’s bad faith. 

Generally, where one party holds a domain name that is similar to its mark, and another party acquires that domain name by registering the domain name upon its expiration, the Panel looks at the timing of the subsequent registration and the distinctiveness of the mark to determine whether the subsequent registration is in bad faith.  In other words, in regards to timing, the Panel is looking to see if the new registrant preyed upon the former registrant by snapping up the domain name upon its registration expiration.  See Earth Forums v. Lee Yi, FA 143702 (Nat. Arb. Forum Mar. 7, 2003) (holding that Respondent’s immediate registration of the disputed domain name after Complainant’s registration expired, in light of the fact that other domain names incorporating Complainant’s mark with a different generic top-level domain were available for registration at the time that Respondent deliberately chose to register Complainant’s lapsed domain name, was evidence that Respondent lacked rights or legitimate interests in the domain name); see also R-H-Interactive Jobfinance v. Mooburi Services, FA 137041 (Nat. Arb. Forum Jan. 16, 2003) (finding that Respondent’s registration and use of the <jobfinance.com> domain name “immediately after Complainant failed to timely renew the domain name registration” was evidence of bad faith).  But, the Panel also looks toward the timeliness of the prior registrant’s assertion of a claim to see if the subsequent registrant has expended time and money in reliance of being the true holder of the domain name registration.  See Yupi Internet, Inc. v. Mercantil, Inc., FA 117302 (Nat. Arb. Forum Sept. 19, 2002) (“While the UDRP [P]olicy might well help in a lapsed domain name case, it won’t help those that continue to slumber on their rights by failing to contact Respondent before . . . substantial expenses in creating a website at a newly acquired domain name [are incurred]”).

In addition, to determine whether this “snapping-up” of recently expired domain names is in bad faith, the Panel looks to distinctiveness.  The rationale is simple, the less distinctive the mark, the less likely that the subsequent registrant may usurp the prior registrant’s goodwill and the less likely that the subsequent registrant is preying on the former registrant’s mark.  Cf. GLB Services Interactivos S.A. v. Ultimate Search, Inc., D2002-0189 (WIPO May 29, 2002) (stating that “Respondent is entitled to conduct a business of capturing generic trademark names which become available in the marketplace – often through failure to renew registration”); Canned Foods Inc. v. Ult. Search Inc., FA 96320 (Nat. Arb. Forum Feb. 13, 2001) (holding that Respondent’s registration of a generic domain name after Complainant inadvertently permitted its registration to lapse was not evidence that the domain name was registered in bad faith).

Respondent’s diversion from the <magicjohnson.com> to the <clubhongkong.com> domain name displaying pornography creates a presumption of bad faith that must be overcome by Respondent.  In this instance, after failing to renew its registration in the <magicjohnson.com>, and after Respondent’s subsequent registration of the <magicjohnson.com> domain name, Complainant has waited almost four years to file a claim.  Barring any other consideration, the Panel would be reluctant to find for Complainant because of its delay in filing this claim. 

Because Respondent uses the <magicjohnson.com> domain name to refer to another domain name, the Panel finds that Respondent’s reliance is de minimius and not to its detriment.  Additionally, because the <magicjohnson.com> domain name is a registered mark, and Respondent has not offered any evidence to refute the mark’s distinctiveness, the Panel finds that Respondent’s actions are predatory.  See Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that absent contrary evidence, linking the domain names in question to graphic, adult-oriented websites is evidence of bad faith); see also Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO March 4, 2003) (stating that “whatever the motivation of Respondent, the diversion of the domain name to a pornographic site is itself certainly consistent with the finding that the Domain Name was registered and is being used in bad faith”).  

Finally, the Panel finds that there is no reason why Respondent needs to appropriate Complainant’s mark merely to link to another domain name that displays pornography.  Surely Respondent can endeavor to display pornography under a different name (and does, namely <clubhongkong.com>).  Cf.  State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that Respondent can accomplish his stated purpose of providing news and information about State Farm without the use of State Farm’s trademark in a name); Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).

The Panel finds that Complainant’s failure to renew the registration and delay in bringing a claim does not mitigate Respondent’s bad faith.

The Panel finds that Complainant has established Policy ¶ 4(a)(iii).

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 <magicjohnson.com> domain name be TRANSFERRED from Respondent to Complainant.

Honorable Paul A. Dorf (Ret.), Panelist

Dated:  November 16, 2004

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