ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Cisco Technology Inc. v. Jeffrey Jackson, Telephone Magic Inc. Case No. D2025-3823 1. The Parties The Complainant is Cisco Technology Inc., United States of America (“United States”), represented by Fenwick & West, LLP, United States. The Respondent is Jeffrey Jackson, Telephone Magic Inc., Canada. 2. The Domain Name and Registrar The disputed domain name is registered with GoDaddy.com, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 19, 2025. On September 22, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 22, 2025, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent (“Registration Private, Domains By Proxy, LLC”) and contact information in the Complaint. The Center sent an email communication to the Complainant on September 23, 2025, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 24, 2025. The Center verified that the Complaint together with the amended 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 the Respondent of the Complaint, and the proceedings commenced on September 25, 2025. In accordance with the Rules, paragraph 5, the due date for Response was October 15, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 16, 2025.
page 2 The Center appointed Andrea Mondini, Georges Nahitchevansky, and Sebastian M.W. Hughes as the Administrative Panel in this matter on October 30, 2025. The Panel finds that it was properly constituted. 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 The Complainant is a NASDAQ listed company providing networking and communication equipment and software, including telephone communication systems, routers and videoconferencing systems. The Complainant has used its CISCO trademark since 1984. The Complainant owns numerous trademark registrations in several jurisdictions, including: TRADEMARK JURISDICTION REGISTRATION NUMBER REGISTRATION DATE CISCO United States 1542339 June 6, 1989 CISCO Canada TMA520923 December 23, 1999 CISCO (logo) European Union 008340391 February 22, 2010 The Complainant holds several domain names containing the term “cisco”, among them which hosts its main website. As the Respondent did not file a Response, not much is known about the Respondent. According to the information provided by the Registrar, the Respondent is apparently an individual resident in Canada. The disputed domain name was registered on November 18, 2013. For almost four years, the disputed domain name resolved to a “coming soon” page. Around September 2017, the disputed domain name began resolving to a website prominently displaying the Complainant’s CISCO trademark and logo and purporting to offer CISCO products as well as phones and accessories from competitor brands including NEC, Nortel, Avaya, Mitel and Polycom. The disputed domain name currently resolves to a page with the website at “telephonemagic.com” that likewise displays the Complainant’s CISCO trademark and products and which also offers products of competitor brands. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. Notably, the Complainant contends as follows: The trademark CISCO has been extensively used for decades to identify the Complainant and its products and services. The disputed domain name is confusingly similar to the CISCO trademark in which the Complainant has rights, because it incorporates this trademark in its entirety, and the addition of the generic terms “ip” and “phones” is not sufficient to prevent a finding of confusing similarity.
page 3 The Respondent has no rights or legitimate interests in respect of the disputed domain name, has not been authorized by the Complainant to use the CISCO trademark, is not commonly known by the disputed domain name, has not made use of the disputed domain name in connection with a bona fide offering of goods or services, and is not making a legitimate noncommercial or fair use of the disputed domain name. On the contrary, the disputed domain name currently redirects to a website prominently featuring the Complainant’s corporate logo to mislead users to believe that the site is operated by an authorized seller of the Complainant’s products. The Respondent does not accurately and prominently disclose its relationship with the Complainant and is not using the site to sell only the Complainant’s products but also products of competitors such as NEC, Nortel, Avaya, Mitel and Polycom. The disputed domain name was registered in bad faith because it is obvious that the Respondent had knowledge of both the Complainant and its well-known trademark CISCO at the time it registered the disputed domain name. The Respondent is using the disputed domain name in bad faith, by trading off of the Complainant’s reputation and goodwill to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion as to the source, sponsorship, and/or affiliation with the Respondent’s website and the goods offered on the Respondent’s website. Moreover, Internet Archive shows that at least until March 2016, the disputed domain name resolved to a “coming soon” page, and such non-use of the disputed domain name does not prevent a finding of bad faith under the doctrine of passive holding. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings According to paragraph 4(a) of the Policy, in order to succeed, a complainant must establish each of the following elements: (i) the disputed domain name is identical or confusingly similar to the trademark or service mark in which the complainant has rights; (ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7. The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The Panel finds the entirety of the CISCO mark is reproduced within the disputed domain name. Although the addition of other terms such as here “ip” (which stands for “Internet Protocol”) and “phones” may bear on assessment of the second and third elements, the Panel finds that in the present case the addition of such terms do not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.
page 4 The addition of the generic Top-Level Domain (“gTLD”) “.com” in the disputed domain name is a standard registration requirement and as such may be disregarded under the confusing similarity test under the Policy, paragraph 4(a)(i). WIPO Overview 3.0, section 1.11.1. The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that for a complainant to prove that a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Complainant has shown that the disputed domain name redirects to a page within the Respondent’s website: while the page features the Complainant’s CISCO products, every page includes a banner promoting products of competitors which when clicked on take the user to pages offering these products for sale. Panels have recognized that resellers, distributors, or service providers using a domain name containing the complainant’s trademark to undertake sales or repairs related to the complainant’s goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. Outlined in the “Oki Data test”, established on Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, the following cumulative requirements are applied in the specific conditions of a UDRP case: (i) the respondent must actually be offering the goods or services at issue; (ii) the respondent must use the site to sell only the trademarked goods or services; (iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and (iv) the respondent must not try to “corner the market” in domain names that reflect the trademark. Cases applying the Oki Data test usually involve a domain name comprising a trademark plus a descriptive term (e.g., “parts”, “repairs”, or “location”), whether at the second-level or the top-level. WIPO Overview 3.0, section 2.8. In the present case, the Respondent’s use of these disputed domain name does not meet the “Oki Data test” requirements, because (a) the Respondent uses the site posted under the disputed domain name to also sell phones and accessories from competitor brands including NEC, Nortel, Avaya, Mitel Polycom, and (b) because its website does not disclose the (lack of) relationship between the Respondent and the Complainant.
page 5 The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. Based on the available record, the Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. WIPO Overview 3.0, section 3.2.1. In the view of the Panel, noting that the Complainant’s trademark predates the registration of the disputed domain name and considering that the Complainant’s trademark is well-known and that the disputed domain name currently resolves to a website featuring the Complainant’s logo and depictions of its products, it is inconceivable that the Respondent could have registered the disputed domain name without knowledge of the Complainant’s well known trademark. In the circumstances of this case, this is evidence of registration in bad faith. The record shows that at least until March 7, 2016, the disputed domain name resolved to a “coming soon page”. Panels have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. Although panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the composition of the disputed domain name, (iii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, and (iv) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement). WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the distinctiveness and reputation of the Complainant’s trademark, the composition of the disputed domain name, the failure of the Respondent to submit a response, and the Respondent’s attempt to conceal its identity. Therefore, the Panel finds that in the circumstances of this case the initial passive holding of the disputed domain name does not prevent a finding of bad faith under the Policy. The Respondent’s subsequent use of the disputed domain name reinforces this finding because the impression given by this website would cause Internet users to believe that the Respondent is somehow associated with the Complainant when, in fact, it is not, and the Respondent on this website also uses the Complainant’s trademark and logo to also promote products of the Complainant’s competitors as well as Complainant, its services and affiliated businesses. The Panel holds that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website in the sense of Policy, paragraph 4(b)(iv). Based on the available record, the Panel finds that the Complainant has established the third element of the Policy with regard to the disputed domain name.
page 6 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 the Complainant. /Andrea Mondini/ Andrea Mondini Presiding Panelist /Georges Nahitchevansky/ Georges Nahitchevansky Panelist /Sebastian M.W. Hughes/ Sebastian M.W. Hughes Panelist Date: November 5, 2025
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