Technologies Sensopia Inc. v. BLUE NOVA INC.
Claim Number: FA1704001725217
Complainant is Technologies Sensopia Inc. (“Complainant”), Canada. Respondent is BLUE NOVA INC. (“Respondent”), represented byAri Goldberger of Esqwire.com, New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <magicplan.com>, registered with Uniregistrar Corp.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Charles A. Kuechenmeister
Richard W. Hill
Hon. Neil Brown, QC
Complainant submitted a Complaint to the Forum electronically on April 4, 2017; the Forum received payment on April 4, 2017.
On April 4, 2017, Uniregistrar Corp confirmed by e-mail to the Forum that the <magicplan.com> domain name is registered with Uniregistrar Corp and that Respondent is the current registrant of the name. Uniregistrar Corp has verified that Respondent is bound by the Uniregistrar Corp registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 7, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 1, 2017 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to email@example.com. Also on April 7, 2017, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on May 1, 2017.
On May 30, 2017, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed Charles A. Kuechenmeister (Chair), Richard W. Hill and Hon. Neil Brown QC as Panelists.
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” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant is the owner, creator, and publisher of the MagicPlan home design app for iOS and Android platforms. The MAGICPLAN mark is the brand name of the product Complainant offers. Complainant applied to register the MAGICPLAN mark with the United States Patent and Trademark Office (“USPTO”) on January 5, 2017. Complainant has been consistently using the MAGICPLAN mark in commerce since 2011 and it has become a well-known brand name worldwide for Complainant’s app, which is used to create floor plans. Respondent’s <magicplan.com> domain name (the “Domain Name”) is confusingly similar to Complainant’s MAGICPLAN mark because it incorporates the mark in its entirety, merely adding the “.com” generic top level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the Domain Name. It is not commonly known by the Domain Name, nor does it offer any goods or services under it. Respondent does not hold a trademark protecting the “magicplan” name.
Respondent registered and is using the Domain Name in bad faith. It initially registered it in 2004 targeting the Walt Disney Company, listing key words including “Disney Cruises,” “Disney World,” “Animal Kingdom” and others. Although this registration did not target Complainant it was still done in bad faith because Respondent did not have any authorization from Disney, did not offer any product or service related to the brand names listed, and did not detain [sic] any of these trademarks. The content of Respondent’s website resolving from the Domain Name remained unchanged from 2004 until 2012, shortly after Complainant’s app was released. Respondent then changed the content of its website to target Complainant’s app, listing key words such as “MAGICPLAN,” “House Floor Plans,” “Floor Plans Software” and the like. In doing so it attempted to attract Internet users to Respondent’s website for commercial benefit, thereby disrupting Complainant’s business and ability to reflect its mark in a domain name. Respondent had actual knowledge of Complainant and its rights to the MAGICPLAN mark at this time.
On February 17, 2017, Respondent changed the registrar of its Domain Name. This constitutes a new registration, at a time when it is clear that it had actual knowledge of Complainant’s MAGICPLAN mark. Moreover, it renewed its registration of the Domain Name each year since 2004. Its renewals after 2011, when Complainant had begun using its MAGICPLAN mark, were also with actual knowledge of Complainant’s rights in that mark. This is further evidence of bad faith registration.
The Domain Name resolves to a parked webpage offering click-through-links to goods and services in direct competition with Complainant’s business.
Respondent is in the business of buying domain names and selling or renting them for profit. Any perceived value the Domain Name might have for Respondent is exclusively the result of Complainant’s goodwill.
Respondent is in the business of domain investing, which is a legitimate use in and of itself. It registered <magicplan.com> on December 12, 2004, after its prior owner did not renew the registration and it became available for purchase. Respondent’s ownership of the Domain Name predates Complainant’s first use of the MAGICPLAN mark in 2011.
Respondent has rights and legitimate interests in <magicplan.com>. The domain name is comprised of two descriptive dictionary terms to which Complainant cannot assert exclusive rights. Respondent currently owns multiple domain names containing either the word “magic” (magicboxs.com, magicchefs.com, magiccottage.com, magicpie.com and numerous others) or “plan” (accountplan.com, acousticplan.com, advertisingplan.com, mealplan.com, musicplan.com and numerous others). Respondent is a legitimate generic domain name reseller. It has the right to register and use domains name based on the appeal of generic, descriptive terms, as long as it does not target the trademark rights of a third party. Respondent has never targeted Complainant’s trademark, and its registration and use of the Domain Name are legitimate.
Respondent did not register or use the Domain Name in bad faith. Its acquisition of it when the prior owner allowed its registration to expire is evidence of that. Further, at the time it registered the Domain Name in 2004, Respondent had no prior knowledge of Complainant or its business, and could not have known of it, as Complainant did not begin using its mark in business until seven years after Respondent registered the Domain Name. Also, there is no evidence that Respondent has attempted to create a likelihood of confusion as to the source, affiliation or endorsement of the website resolving from the Domain Name, or to benefit commercially from the reputation and goodwill of Complainant. Finally, an offer to sell a descriptive term domain name is not, in and of itself, evidence of bad faith.
Complainant argues that Respondent’s renewals or re-registrations of the Domain Name after it learned of Complainant’s MAGICPLAN mark constitute new registrations, which were in bad faith because of such knowledge. This argument is without merit. Any construction of “registration” as a continuous process would negate the distinction between “registration” and “use” within the Policy. Even if complainant’s argument were adopted, there still is no bad faith attempt to benefit commercially from Complainant’s mark, and thus no evidence of bad faith registration or use.
Respondent alleges on information and belief that Complainant attempted in July 2016 to purchase the Domain Name from Respondent. This effort having failed Complainant is attempting to deprive Respondent of the Domain Name by filing this proceeding, and Complainant is thereby engaging in reverse domain name hijacking.
FINDINGS AND 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.”
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.
The Panel makes the findings and determinations set forth below with respect to the Domain Name.
Identical and/or Confusingly Similar
Complainant is the owner, creator, and publisher of the MagicPlan home design app for iOS and Android platforms, with which users can create floor plans for buildings. The MAGICPLAN mark is the brand name of the product Complainant offers. Complainant applied to register the MAGICPLAN mark with USPTO (Ser. No. 87,290,585, filed Jan. 5, 2017), with first use in commerce occurring on April 9, 2011. See, Amend. Compl., Appendix H. While Complainant does not have registered trademark rights, “A Complainant does not need to hold registered trademark rights in order to have rights in a mark under Policy ¶ 4(a)(i). It is well established that a Complainant may rely on common law or unregistered trademarks that it can make out.” Oculus VR, LLC v. Ivan Smirnov, FA 1625898 (Forum July 27, 2015). Complainants may establish a common law trademark through evidence such as the manner and amount of promotion of goods available under the mark, the extent of complainant’s use of the mark, and a degree of consumer recognition, all of which contribute to the establishment of a secondary meaning in a mark. See, Gourmet Depot v. DI S.A., FA 1378760 (Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”).
Complainant released its “MagicPlan” app in April 2011, and since that time Complainant has experienced considerable commercial success with it. Appendix G to the Complaint demonstrates in excess of 11 million downloads since 2011, throughout the world. Given this experience and the level of notoriety the MAGICPLAN mark has achieved in commerce it is clear that Complainant has established rights in the MAGICPLAN mark.
Respondent argues that its registration of the <magicplan.com> domain name predates Complainant’s alleged rights in the mark, but such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the Domain Name is identical or confusingly similar to Complainant’s mark. See AB Svenska Spel v. Zacharov, WIPO Case No. D2003-0527, holding that the UDRP does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under Policy ¶ 4(a)(i).
The Domain Name is confusingly similar to Complainant’s MAGICPLAN mark because it incorporates the mark in its entirety, merely adding the “.com” gTLD. “The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.” Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Forum Apr. 10, 2007). Additionally, “the inclusion of the generic top-level domain ‘.com’ is inconsequential to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names.” Metro-Goldwyn-Mayer Studios Inc. v. Antigua Domains, FA 1073020 (Forum Oct. 17, 2007).
For the reasons set forth above, the Panel finds that the requirements of Policy ¶ 4(a)(i) have been met.
Rights or Legitimate Interests
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden shifts to respondent to show that it does. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the Domain Name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name because (i) it is not known by the Domain Name, (ii) it does not offer any product or services under the name “MagicPlan,” and (iii) it has no trademark protecting that name. These allegations appear to be true and for this reason the Panel finds that Complainant has made a prima facie showing that Respondent has no rights or legitimate interests in the Domain Name. It is thus incumbent upon Respondent to demonstrate that it does.
Respondent answers by saying that it is a legitimate generic domain name reseller. It has registered thousands of descriptive, generic, common word domain names, along with the Domain Name, because “they best fulfill the purpose of a domain name which is to be easy to remember. Common word domains therefore serve well as online identities and, as a result, are commercially valuable.” See, Declaration of Leandra Wilfred-Boyce, a director of Respondent (“Declaration”), Exhibit 2 to Response, paragraph 8. Examples of similar, short, brandable, common word domains including the word “magic” that Respondent has registered are “magicboxs.com,” “magicbridals.com,” “magicchefs.com,” “magiccottage.com,” “magiccreams.com,” “magicfood.com,” “ magicpie.com” and the like. Examples of similar, short, brandable, common word domains including the word “plan” that Respondent has registered are “accountplan.com,” “acousticplan.com,” “creditplan.com,” “empireplan.com,” “medicalplan.com,” “menuplan,com,” “missionplan.com” and the like. Declaration, paragraphs 6 & 7. In other words, Respondent acquires and registers descriptive, short, common word domain names and holds them as inventory, for sale or lease to entities that might wish to use them. This is a common business model and numerous UDRP panels have regarded it as legitimate within the meaning of the Policy. X6D Limited v. Telepathy, Inc. WIPO Case No. D2010-1519, Network GmbH v. Steve Gregory, WIPO Case No. D2000-0016, John Fairfax Publications Pty Ltd v. Domain Names 4U and Fred Gray, WIPO Case No. D2000-1403. Incorp Services, Inc. v. RareNames, webReg, FA 559911, (Forum Nov. 19, 2005), General Machine Porducts Company, Inc., v. reime Domains ) a/k/a Telepathy, Inc. (Forum Mar. 16, 20000. See also, Alphalogix Inc. v. DNS Servs., FA 491557 (Forum. July 26, 2005) (“Respondent is in the business of creating and supplying names for new entities, including acquiring expired domain names. This is a legitimate activity in which there are numerous suppliers in the United States)”.
A respondent may register and use a domain name to attract internet traffic based upon the appeal of a commonly used descriptive term, even when it is identical or confusingly similar to a complainant’s registered mark. Johnson & Johnson v. Chad Wright, webQuest.com, Inc., WIPO Case No. 2012-0010, National Trust for Historic Preservation v. Barry Preston, WIPO Case No. 2005-0424.
A key factor with respect to registering generic, descriptive, common word domain names, whether in connection with a domain reselling venture or otherwise, is that the domain names be selected for their value as generic, descriptive, common word names, without targeting a specific trademark, and without commercial gain from the reputation and goodwill associated with the trademark of another. Metro Sportswear Limited v. Vertical Axis, WIPO Case No. 2008-0754, Baccus Gate Corp. v. CKV et al., WIPO Case No. 2008-0321. In this case there is no evidence whatever that Respondent intended to benefit commercially from the reputation and goodwill of Complainant when it registered the Domain Name. Indeed, Respondent registered it some seven years before Complainant even began using its MAGICPLAN mark in commerce, so it could not possibly have done so.
Accordingly, the Panel finds that the Respondent has a legitimate interest in the Domain Name due to its generic nature under ¶ 4(a)(ii) of the Policy.
Registration and Use in Bad Faith
In light of its finding with respect to rights and legitimate interests, the Panel need not address the issue of registration and use in bad faith, but because Respondent has requested a finding of reverse domain name hijacking, the Panel elects to do so.
The WIPO Overview of Panel Decisions version 2.0 states under 3.1:
Generally speaking, although a trademark can form a basis for a UDRP action under the first element irrespective of its date …, when a domain name is registered by the respondent before the complainant’s relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant’s then non-existent right.
None of the exceptions to this general principle apply to the present case. As stated above, there is no evidence whatever that Respondent registered the domain name in bad faith. The registration was made some seven years before Complainant ever used its MAGICPLAN mark in commerce. Any rights Complainant may have acquired in that mark since 2011 were not in existence in 2004 when the registration occurred. Complainant’s only argument with respect to bad faith registration is that Respondent renewed and re-registered the Domain Name numerous times after becoming aware of Complainant’s rights, but this line of reasoning has been soundly rejected by a vast majority of panels and is simply without merit. Arena Football League v. Armand F. Lange & Assocs., FA 128791 (Forum Dec. 26, 2002) (“[O]nce a Panel finds that a domain name was originally registered in good faith, any subsequent renewal [that] could qualify as having been done in bad faith is irrelevant: the relevant point of inquiry occurs at registration, not renewal of that registration”). See also, Mile, Inc. v. Michael Berg, WIPO Case No. 2010-2011.
As to bad faith use, the resale of descriptive, generic domain names does not prove bad faith. So long as there is no intended targeting of the mark owner, or some level of abuse directed specifically toward that victim, bad faith cannot be found from an offer to sell such a domain name. HP Hood LLC v. hood.com, FA 313566 (Forum Nov 9, 2004).
Likewise, there is no evidence that Respondent acted in any way that could fit within the circumstances described in Policy subparagraphs 4(b)(ii) through (iv). The sheer number of domain names containing the words “magic” and “plan” registered by Respondent demonstrates clearly that there was no targeting of Complainant or its mark, no intent to benefit from its reputation and goodwill.
For the reasons set forth above, the Panel finds that Respondent did not register, nor is it using the Domain Name in bad faith.
Complainant having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <magicplan.com> domain name REMAIN WITH RESPONDENT.
Reverse Domain Name Hijacking
Respondent requests a finding of reverse domain name hijacking. This is defined in Rule 1 as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” Paragraph 15(e) of the Rules provides as follows:
If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
Complainant knew or should have known when it filed this case that it could not possibly prove bad faith registration, since Respondent registered the Domain Name seven years before Complainant began using its MAGICPLAN mark. It knew or should have known that its renewal/re-registration argument was universally discredited and would not be accepted by any Panel. It knew or should have known that it would have to prove both bad faith registration and bad faith use in order to prevail. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D 2000-0003. There is credible evidence that a person acting on behalf of Complainant attempted unsuccessfully to buy the Domain Name from Respondent in July 2016 (Declaration paragraph 13, Response, p. 2, Exhibit 4 to Response), and this action followed. For the foregoing reasons the Panel is convinced that Complainant filed this action in bad faith, perhaps as an alternative acquisition strategy, but in any event without any legal or factual basis for its claims. The Panel therefore finds Reverse Domain Name Hijacking and declares that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
Charles A. Kuechenmeister, Chair
Richard W. Hill, Panelist
Hon. Neil Brown QC, Panelist
Dated: June 9, 2017