Complainant is magicJack LP, of West Palm Beach, Florida, United States of America ("United States"), represented by Bryan Cave, LLP, United States.
Respondent is Tom Chambers of Starke, Florida, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 13, 2017. On September 13, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 14, 2017, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 9, 2017. In accordance with the Rules, paragraph 5(a), the due date for Response was October 29, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on November 1, 2017.
The Center appointed Georges Nahitchevansky, Carol Anne Been and Evan D. Brown as panelists in this matter on November 22, 2017. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
Complainant, magicJack LP, is a provider of domestic and long distance telephone services using Voice over Internet Protocol ("VoIP"), and related downloadable applications and "softphones" to make phone calls. Complainant promotes and sells its products and services under the name and mark MAGICJACK.
Complainant is the owner of several federal trademark registrations for the MAGICJACK mark in the United States in connection with its goods and services, including Registration Nos. 3446818, 3618510, 4133114, 4772645, 4133115 and 4974650. The earliest of these registrations issued on June 10, 2008 for telecommunication equipment (Registration No. 3446818), and the earliest registration that covers downloadable software to enable ViOP communication issued on May 12, 2009 (Registration No. 3618510). Complainant also owns several registrations for the MAGICJACK mark in Canada and Mexico.
Respondent registered the disputed domain name on May 26, 2015. The disputed domain name is currently being used with a website that purports to offer downloads of software and support drivers related to Complainant's MAGICJACK products and services. 5. Parties' Contentions A. Complainant
Complainant asserts that it owns and uses the MAGICJACK mark in connection with its VoIP related telephone services, mobile applications and software and has continuously done so in commerce for over 10 years.
Complainant contends that the disputed domain name is essentially identical to Complainant's MAGICJACK mark because it contains the MAGICJACK mark in its entirety. Complainant also contends that the inclusion in the disputed domain name of the generic term "download" is legally insignificant and does not distinguish the disputed domain name.
Complainant argues that Respondent lacks any rights or legitimate interests in the disputed domain name because Respondent (a) is not commonly known by the disputed domain name, (b) is not associated with Complainant and has never received an authorization or license from Complainant to use the MAGICJACK mark, and (c) has never used the disputed domain name for a bona fide offering of goods and services and is not making a legitimate noncommercial or fair use of the disputed domain name. In that regard, Complainant asserts that the website at the disputed domain name provides downloads to software and drivers unrelated to Complainant's MAGICJACK products and services. Complainant also contends that Respondent's lack of a legitimate interest is confirmed by Respondent's failure to respond to a cease and desist letter sent by Complainant on or about April 19, 2017.
Finally, Complainant asserts that Respondent registered and has used the disputed domain name in bad faith since Respondent was clearly aware of Complainant's MAGICJACK mark and products when he registered the disputed domain name. Complainant further argues that Respondent's bad faith registration and use is established by Respondent's use of the disputed domain name to divert potential customers away from Complainant to Respondent's website that offers software and drivers unrelated to Complainant and its MAGICJACK products and services. Complainant also asserts that Respondent's use of an inconspicuous disclaimer at the bottom of his website at the disputed domain name further establishes Respondent's awareness of Complainant and its MAGICJACK mark. Lastly, Complainant argues that Respondent's bad faith registration and use is further established by Respondent's failure to respond to the demand letter sent by Complainant on or about April 19, 2017.
B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names were registered and are being used in bad faith.
Here, although Respondent has failed to respond to the Complaint, the default does not automatically result in a decision in favor of Complainant, nor is it an admission that Complainant's claims are true. The burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. A panel, however, may draw appropriate inferences from a respondent's default in light of the particular facts and circumstances of the case, such as regarding factual allegations that are not inherently implausible as being true. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"); see also The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340. A. Identical or Confusingly Similar
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See WIPO Overview 3.0 at section 1.2.1. Complainant has provided evidence that it owns trademark registrations for the MAGICJACK mark in the United States, Canada and Mexico, and that such issued to registration well before Respondent registered the disputed domain name.
With Complainant's rights in the MAGICJACK mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the generic Top-Level Domain ".com") is identical or confusingly similar with Complainant's mark. See B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross,WIPO Case No. D2010-0842. The threshold for satisfying this first element is low and generally panels have found that fully incorporating the identical mark in a disputed domain name is sufficient to meet the threshold. See WIPO Overview 3.0 at section 1.7.
In the instant proceeding, the disputed domain name is confusingly similar to Complainant's MAGICJACK mark as it incorporates the MAGICJACK mark in its entirety at the head of the disputed domain name. The addition of the word "download" at the tail of the disputed domain name does not distinguish the disputed domain name from Complainant's MAGICJACK mark, as it suggests that the disputed domain name is related to Complainant or its MAGICJACK products and services. See WIPO Overview 3.0 at sections 1.7 and 1.8.
The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in Complainant's MAGICJACK mark and in showing that the disputed domain name is identical or confusingly similar to that trademark. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.
The evidence submitted in this proceeding shows that Respondent has used the disputed domain name for a website that is entitled "free magicJack® ** Software" and which purports to provide software and drivers to make devices, such as computers, smartphones and tablets, operational with Complainant's MAGICJACK products and services. In that regard, the website at the disputed domain name appears to provide downloads for various operating systems and devices such as (i) Microsoft Windows XP and Vista 7, 8 and 10, (ii) Apple Mac, IPad and iPhone, and (iii) Android devices including tablets and smartphones. However, based on the evidence provided by Complainant, none of which is contested by Respondent who chose not to file a Response, when a user selects one of the above operating systems, the user is apparently taken to a webpage that offers downloads of third party software products such as "My Quick Converter," "zendesk" and other software products. In addition, the website at the disputed domain name contains numerous references to Complainant's MAGICJACK trademark and an alleged trademark for MAGICJACK-DOWNLOAD.COM in the form "MagicJack-D TM". The website also includes a small disclaimer at the bottom of the website after the legend "Trademark TM 2015 www.MagicJack-D All Rights Reserved."
Respondent's use of the disputed domain name, the dominant feature of which is the MAGICJACK trademark, for purposes of attracting Internet users (particularly those interested in Complainant's MAGICJACK products and services) to a website that ultimately offers downloads of third party software unrelated to Complainant's MAGICJACK products and services does not constitute a legitimate interest. This is particularly so where, as here, the disputed domain name and associated website suggest a connection to Complainant. WIPO Overview 3.0, section 2.8. Indeed, the repeated use of Complainant's trademark throughout the website coupled with the trademark claim "MagicJack-D TM" goes well beyond a mere referential use of the MAGICJACK mark to describe the MAGICJACK-related products Respondent is offering. Instead, such extensive and repeated use of MAGICJACK reinforces a misleading connection to Complainant, the owner of the MAGICJACK trademark. See, e.g., BSH Home Appliances Corporation v. Michael Stanley / Michael Sipo, WIPO Case No. D2014-1433.
The use of a very small disclaimer at the bottom of the website below text that reinforces a connection to Complainant does not cure the confusion that likely exists when a consumer has arrived at Respondent's website. By the time a consumer even sees the small disclaimer, the consumer has already been offered multiple opportunities to download software and drivers that are unrelated to Complainant and its MAGICJACK products and services WIPO Overview 3.0, section 3.7 (and cases cited therein). Needless to say, the disclaimer is pretextual at best, and if anything, suggests to the Panel that Respondent is well aware that Internet users may be confused by the disputed domain name and associated website.
In sum, based on the evidence before the Panel, and given Respondent's failure to file a Response, it appears more likely than not that Respondent registered the disputed domain name to misleadingly divert consumers to a website that effectively suggests an affiliation with or endorsement by Complainant for purposes of selling software and drivers from third parties that are unrelated to Complainant's MAGICJACK products and services. See WIPO Overview 3.0 at section 2.5.1. As such, the Panel concludes that Respondent does not have a right or legitimate interest in the disputed domain name and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case. C. Registered and Used in Bad Faith
There are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. For example, paragraph (4)(b)(iv) of the Policy states that bad faith can be shown where "by using the domain name [Respondent] has intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with [Complainant's] mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [the] web site or location."
Here, Respondent has registered the disputed domain name that fully incorporates Complainant's MAGICJACK mark with the word "download," which on its face suggests a connection to Complainant or its MAGICJACK products or services. Respondent is using the disputed domain name to attract Internet users to a website that upon initial access will likely be seen as related to Complainant, but which, in fact, is being used by Respondent to offer downloads of third party software unrelated to Complainant or its products and services. Given that Respondent has chosen not to participate in this matter, the Panel concludes based on the evidence submitted that it is more likely than not that Respondent registered and is using the disputed domain name based on Complainant's MAGICJACK mark in bad faith to intentionally attract Internet users to Respondent's website for personal gain. See, e.g., Fulham Football Club (1987) Limited, Tottenham Hostpur Public Limited, West Ham United Football Club PLC, Manchester United Limited, The Liverpool Football Club And Athletic Grounds Limited v. Domains by Proxy, Inc./ Official Tickets Ltd,WIPO Case No. D2009-0331.
Accordingly, the Panel finds that Complainant succeeds under this element of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to Complainant.
Georges Nahitchevansky
Presiding Panelist
Carol Anne Been
Panelist
Evan D. Brown
Panelist
Date: December 7, 2017
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