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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

magicJack LP v. Nhan Bui

Case No. D2009-1053

1. The Parties

The Complainant is magicJack LP of West Palm Beach, Florida, United States of America, represented by Arnold & Porter LLP, United States of America.

The Respondent is Nhan Bui of HoChiMinh, Viet Nam.

2. The Domain Name and Registrar

The disputed domain names <indiamagicjack.com>, <japanmagicjack.com>, <koreamagicjack.com>, <magicjackaustralia.com>, <magicjackcenter.com>, <magicjackchina.com>, <magicjackcuba.com>, <magicjackczechrepublic.com>, <magicjackfilipine.com>, <magicjackindonesia.com>, <magicjackmalaysia.com>, <magicjackmongolia.com>, <magicjackpakistan.com>, <magicjackpoland.com>, <magicjackrussia.com>, <magicjackthailand.com>, <magicjackvietnam.com>, <mexicomagicjack.com>, <phillipinesmagicjack.com>, <usamagicjack.com>, <usmagicjack.com>, and <vietnammagicjack.com> (together "the Domain Names") are all registered with GoDaddy.com, Inc. (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 5, 2009. On August 6, 2009, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On August 6, 2009, the Registrar transmitted by email to the Center its verification response, providing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on September 1, 2009.

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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 7, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was September 27, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent`s default on October 1, 2009.

The Center appointed Tony Willoughby as the sole panelist in this matter on October 2, 2009. 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.

The need for an amendment to the Complaint arose primarily because on or shortly before the filing of the Complaint and unbeknown to the Complainant the then registrant of the Domain Names, Diva Satellite, transferred the Domain Names to the Respondent. According to the Registrar the transfer took place on July 31, 2009. The Complainant contends that the Registrar`s WhoIs database still recorded Diva Satellite as the registrant on August 3, 2009.

The Panel is unable to resolve that issue on the papers before him, but the matter is academic given the view that the Panel has taken of the registration of the Domain Names in the name of the Respondent.

4. Factual Background

The Complainant is a limited partnership organized and existing under the laws of Delaware, United States, with its headquarters in West Palm Beach in Florida, United States.

The Complainant markets a telephone service, which operates through a USB device which it has developed and which is known as a "magicJack".

According to the press cuttings exhibited to the Complaint the Complainant`s magicJack was introduced to the market in the course of 2007 and rapidly acquired nationwide recognition in online media within the United States.

The Complainant is the registered proprietor of various United States trade mark registrations including United States Patent and Trademark Office Registration No. 3446818 dated June 10, 2008 (filed April 14, 2006) MAGICJACK (word) in class 9 for telecommunications equipment and Registration No. 3618510 dated May 12, 2009 (filed May 8, 2008) MAGICJACK (word) in classes 9 and 38 for VOIP related software. First use in commerce is claimed from May 31, 2007 in respect of both registrations.

The Complainant operates through a website connected to the domain name, <magicjack.com>.

The Domain Names were all registered between November 2008 and January 2009 in the names of Diva Satellite or that company`s president, Thong Tran.

On April 14, 2009 the Complainant`s representatives wrote to Diva Satellite in respect of 12 of the Domain Names and seeking inter alia their assignment to the Complainant.

On April 22, 2009 Thong Tran sent a message addressed to Proactive Event Marketing Inc. of Philadelphia reading "To Whom It May Concern – This letter is to inform you that we are withdrawing your [sic] offer for the Magicjack Purchase and Sale Agreement which was offered on the 11^th day of June 2008, effecting [sic] immediately. This action also includes all attachments and Exhibits to the Agreement."

On April 29, 2009 the Complainant`s representatives wrote again to the previous registrant and making reference to the message of April 22, 2009 quoted above. The letter reiterated the demand for transfer of the 12 Domain Names.

On June 29, 2009 Diva Satellite sent an email to the Complainant`s representatives refusing to transfer the Domain Names, but indicating a willingness to negotiate a sale.

On June 30, 2009 Diva Satellite sent an email to the Complainant`s representatives suggesting that the Complainant "might want to purchase those names from Ebay. Good luck bidding."

On July 1, 2009 the Complainant`s representatives visited the eBay website and found all 22 of the Domain Names up for auction on that site at prices ranging from USD 2,500 to USD 90,000.

On July 2, 2009 the Complainant`s representatives wrote to Diva Satellite seeking transfer of the Domain Names and drawing the latter`s attention to the fact that it was exposing itself to the risk of a USD 2.3 million damage claim in a cybersquatting action. Oddly, the letter ends by reserving all rights in the name of what appears to the Panel to be the name of a different client of that firm. The Panel assumes that it was a "cut-and-paste" error.

On July 6, 2009 the Complainant`s representatives received a telephone call from a lawyer purporting to represent Diva Satellite who said that the matter was being considered by his client and that his client was looking for a lawyer more familiar with intellectual property. Nothing further was heard.

Throughout this year, most of the Domain Names have been connected to parking pages of the Registrar featuring sponsored links to a wide variety of commercial websites. The general style of the sites has remained unchanged notwithstanding the change of registrant in or around July 31, 2009.

5. Parties` Contentions

A. Complainant

The Complainant contends that the Domain Names are all confusingly similar to its MAGICJACK trade mark in which it claims both registered and unregistered rights.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of any of the Domain Names.

Finally, the Complainant contends that all the Domain Names were registered and are being used in bad faith. The Complainant contends that they all fall foul of paragraphs 4(b)(i) and 4(b)(iv) of the Policy.

B. Respondent

The Respondent did not reply to the Complainant`s contentions.

6. Discussion and Findings

A. General

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove that:

(i) The Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the Domain Names; and

(iii) The Domain Names have been registered in bad faith and are being used in bad faith.

A. Identical or Confusingly Similar

The Complainant claims both registered and unregistered rights in respect of its MAGICJACK trade mark.

Details of certain of the Complainant`s registered rights are set out in Section 4 above.

The unchallenged evidence of the Complainant is that the Complainant`s goods and services supplied under and by reference to the "magicJack" name since 2007 were well-known in the United States by at least November 2008 when the first of the Domain Names was registered. The evidence put before the Panel is cogent.

For the purposes of paragraph 4(a)(i) of the Policy it is immaterial whether or not the trade mark rights predate registration of the Domain Names, but the date of the coming into existence of those unregistered rights could be of significance under B and C below. The Panel finds that the Complainant has unregistered trade mark rights in respect of the "magicJack" name and that those rights predate registration of the first of the Domain Names in November 2008.

The Domain Names all feature the Complainant`s trade mark, MAGICJACK, in combination with a geographic or generic indicator as either a prefix or a suffix.

Neither the added wording nor the generic domain suffixes serve to distinguish any of the Domain Names from the Complainant`s trade mark.

The Panel finds that the Domain Names are all confusingly similar to the Complainant`s trade mark, MAGICJACK.

B. Rights or Legitimate Interests

As indicated above, the Complainant produces significant evidence, which has not been challenged by the Respondent, to the effect that by the time the Domain Names were registered, the Complainant`s goods and services supplied under and by reference to the "magicJack" name were well-known in the United States. The Complainant further contends that the then registrant of the Domain Names must at all material times have been aware of the Complainant`s trade mark. The Complainant further asserts that the Respondent is an alias or alter ego or close associate of Diva Satellite or its president, Thong Tran.

The Complainant recites each of the examples set out in paragraph 4(c) of the Policy of what shall constitute rights or legitimate interests for the purposes of paragraph 4(a)(ii) of the Policy and contends that none of them is applicable.

If the Complainant`s allegations are not misplaced, the commercial use to which most of the Domain Names are being put (connection to commercial parking pages of the Registrar) cannot sensibly be regarded as a bona fide offering of goods and services for the purposes of paragraph 4(c)(i) of the Policy or a legitimate or fair use of the Domain Names for the purposes of paragraph 4(c)(iii) of the Policy. Self-evidently, neither the Respondent nor Diva Satellite nor Thong Tran is known by the name, "magicjack".

Moreover the Complainant asserts that it is not in any way associated with the Respondent (or Diva Satellite or Thong Tran) and has not granted them any licence to use the MAGICJACK trade mark.

The Panel accepts the Complainant`s contention that the circumstances surrounding the registration of the Domain Names and their subsequent transfer to the Respondent are to say the least suspicious and call for an explanation. In other words, in the view of the Panel the Respondent has a case to answer.

The Respondent has elected not to answer the Complainant`s allegations.

In light of the evidence put before the Panel by the Complainant and in the absence of an answer from the Respondent, the Panel finds that the Respondent has no rights or legitimate interests in respect of any of the Domain Names.

C. Registered and Used in Bad Faith

The circumstances surrounding the transfer of ownership of the Domain Names following the Complainant`s representatives` letters to the previous registrants, Diva Satellite and Thong Tran, and before the filing of the Complaint are sufficiently suspicious to warrant the inference that the Respondent is very closely associated with the previous registrants and took delivery of the Domain Names with knowledge of the Complainant`s trade mark rights.

The Complainant contends that the Domain Names were registered with the intention of selling them at a profit (paragraph 4(b)(i) of the Policy) and/or with a view to exploiting them for commercial gain within the meaning of paragraph 4(b)(iv) of the Policy. In support, the Complainant refers to the correspondence between its representatives and Diva Satellite and Thong Tran in April, June and July (see Section 4 above) and the use to which the Domain Names (or most of them) have been put, namely to connect to parking pages of the Registrar featuring commercial links.

In the view of the Panel, it is most unlikely that an innocent target of those allegations would allow them to pass unanswered. It seems to the Panel very likely that the Respondent is closely associated with the previous registrants, Diva Satellite and Thong Tran, and that at all material times whether on original registration by the previous registrants or on transfer to the Respondent just prior to the lodging of the Complaint (i) all concerned were aware of the Complainant`s trade mark rights and (ii) all concerned intended to take commercial advantage of the Complainant`s trade mark rights whether by way of selling the Domain Names at a profit or deriving commercial gain by way of pay-per-click revenue or in some other way.

The Panel cannot conceive of any lawful use that the Respondent could make of the Domain Names or any of them, which would not be likely to lead to confusion or deception of Internet users and damage to the Complainant. If and to the extent that any of the Domain Names are not being actively used, in the Panel`s view they represent an abusive threat to the Complainant`s rights hanging over the Complainant`s head.

The Panel finds that the Domain Names were registered and are being used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, <indiamagicjack.com>, <japanmagicjack.com>, <koreamagicjack.com>, <magicjackaustralia.com>, <magicjackcenter.com>, <magicjackchina.com>, <magicjackcuba.com>, <magicjackczechrepublic.com>, <magicjackfilipine.com>, <magicjackindonesia.com>, <magicjackmalaysia.com>, <magicjackmongolia.com>, <magicjackpakistan.com>, <magicjackpoland.com>, <magicjackrussia.com>, <magicjackthailand.com>, <magicjackvietnam.com>, <mexicomagicjack.com>, <phillipinesmagicjack.com>, <usamagicjack.com>, <usmagicjack.com>, and <vietnammagicjack.com>, be transferred to the Complainant.

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Tony Willoughby
Sole Panelist

Dated: October 9, 2009