NATIONAL ARBITRATION FORUM DECISION Avaya Inc. v. Holdcom Claim Number: FA0806001210545 PARTIES Complainant is Avaya Inc.

(“Complainant”), represented by Joseph Englander, of Shutts & Bowen LLP, Florida, USA. Respondent is Holdcom (“Respondent”), represented by Robert L. Powley, of Powley & Gibson, P.C., New York, USA. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <magiconhold.com>, registered with DomainDiscover. 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. Paul M. DeCicco, as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on June 18, 2008; the National Arbitration Forum received a hard copy of the Complaint on June 19, 2008. On July 1, 2008, DomainDiscover confirmed by e-mail to the National Arbitration Forum that the <magiconhold.com> domain name is registered with DomainDiscover and that the Respondent is the current registrant of the name. DomainDiscover has verified that Respondent is bound by the DomainDiscover 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 July 8, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 28, 2008 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@magiconhold.com by e-mail. A timely Response was received and determined to be complete on July 29, 2008. On or about August 5, 2008, Complainant’s Additional Submission was received in a timely manner according to Supplemental Rule #7. On or about August 12, 2008, Respondent’s Additional Submission was received in a timely manner according to Supplemental Rule #7. On August 5, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco as Panelist. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES’ CONTENTIONS A. Complainant Complainant contends as follows: The Complaint is based upon Complainant's MAGIC ON HOLD trademark. Complainant has long used and continues to use the trademark in jurisdictions throughout the United States and around the world. Complainant has also registered the MAGIC ON HOLD trademark in the United States Patent and Trademark Office (the "USPTO") in several classes. The original registrant of the MAGIC ON HOLD mark was Telephonetics International, Inc.; the date of first use by Telephonetics International was at least as early as September of 1984. The trademark rights to the mark were subsequently assigned to AT&T Corporation. Complainant received all trademark rights to MAGIC ON HOLD and to these registrations through an assignment from AT&T Corporation, obtained its own registration for goods providing music and recorded messages. Thus, the mark has been in extensive and continuous use since at least as early as September of 1984. Complainant itself has continuously used the trademark MAGIC ON HOLD for the identified goods and services since it obtained the rights to the mark. Each of Complainant’s registrations is valid, subsisting and incontestable pursuant to Section 15 of the Lanham Act, 15 U.S.C. § 1065. Complainant also licenses the above-referenced trademark registrations to Audio Messaging Solutions, LLC ("AMS"). AMS is the owner of the website at <magic-

on-hold.com>. This licensee is the only authorized vendor for Complainant for its message and music on hold solutions. The at-issue domain name is identical to a trademark in which Complainant has rights. The at-issue domain name comprises Complainant's mark MAGIC ON HOLD in its entirety, so that the public would automatically associate the at-issue domain name with Complainant. The idea suggested by the at-issue domain name in view of Complainant's federally registered marks and Complainant's long-time use of the mark is that any possible goods or services associated with, or websites accessible at the at-issue domain name, are authorized by Complainant. The at-issue domain name is confusingly similar to the Complainant's mark MAGIC ON HOLD. The spaces between the words in <magiconhold.com> are currently not reproducible in a domain name. Therefore, they cannot be considered a distinguishing feature sufficient to avoid a finding that the at-issue domain name is confusingly similar to the mark MAGIC ON HOLD. Moreover, Respondent is a corporation doing business in a field that overlaps one of Complainant's fields of business. Respondent is currently using the at-issue domain name to sell services in direct competition with Complainant. Respondent uses the website at the at-issue domain name to sell, inter alia, a service for providing recorded messages and music to be played while a person is on hold. Respondent cannot demonstrate that it has any rights or legitimate interests in the at-issue domain name. Complainant's registrations for the MAGIC ON HOLD trademark evidence its exclusive rights in such mark with respect to the goods and services specified therein, and Complainant has not authorized Respondent to use the MAGIC ON HOLD trademark. Respondent has not made use of, or made demonstrable preparations to use, the at-issue domain name or a name corresponding to the at-issue domain name in connection with a bona fide offering of goods or services, nor could Respondent do so in light of the notoriety of Complainant's MAGIC ON HOLD trademark and Complainant's exclusive rights in the MAGIC ON HOLD trademark. Respondent has not been commonly known by the at-issue domain name. Given the widespread and long-term notoriety and use enjoyed by Complainant's MAGIC ON HOLD trademark worldwide, it is impossible for Respondent to meet its burden. Furthermore, on the website associated with the at-issue domain name, Respondent actually only uses its own registered mark HOLDCOM for directly competing products instead of MAGIC ON HOLD or any formative thereof. Respondent is commonly known by a completely different mark. Respondent is actually commonly known by its HOLDCOM mark for its messaging services, and Respondent is intentionally misdirecting consumers to a competing service, thereby disrupting Complainant's business. Such conduct is

acceptable evidence of registration and use in bad faith pursuant to Policy ¶ 4(b) (iii). Moreover, Respondent is also not making a legitimate noncommercial or fair use of the at-issue domain name without intent (1) for commercial gain to divert consumers misleadingly or (2) to tarnish the trademarks at issue. Respondent has operated a commercial website at <magiconhold.com> through which it sells and offers for sale competing goods and services related to prerecorded customized messages for others. Such use does not constitute fair use. Rather, such use infringes upon Complainant's trademark rights. Respondent has used the at-issue domain name for commercial gain in a related business enterprise to mislead consumers into believing that its website is the "official" MAGIC ON HOLD website and to divert consumers based on its messages on its website. Respondent uses <magiconhold.com> to compete directly with Complainant for the same messaging services Complainant associates with its MAGIC ON HOLD mark. Such use cannot be a bona fide offering of goods or services. The at-issue domain name is essentially identical and confusingly similar to Complainant's MAGIC ON HOLD trademark, and Respondent capitalizes on that confusing similarity to route Internet traffic to its own website that is likely destined for Complainant's website, which is improper. Such use of the at-issue domain name by Respondent constitutes a breach of the Registration Agreement, as well as the Policy, under which Respondent warranted that, to the best of its knowledge and belief, the registration of the at-issue domain name would not infringe the legal rights of a third party. Respondent's breach of that warranty divested it of any rights or interests in the at-issue domain name that it may have had. Given the exclusive rights owned by Complainant in the MAGIC ON HOLD trademark, Respondent can have no rights or legitimate interests in the at-issue domain name. The domain name was registered in bad faith. Respondent registered the atissue domain name without any bona fide basis for such registration in an attempt to capitalize unfairly on the goodwill of Complainant's well-known MAGIC ON HOLD trademark. It is unlikely that the registrant would have selected the domain name without knowing of the reputation of the trademark in question In the present proceeding, it is highly unlikely that Respondent selected the atissue domain name without being aware of Complainant's well-known MAGIC ON HOLD trademark, which has been extensively in use since 1984. To the contrary, Respondent almost certainly registered the at-issue domain name because of its knowledge of Complainant's well-known trademark. For

Respondent to have proceeded with registration in the face of such knowledge clearly demonstrates bad faith on the part Respondent. Thus, Complainant submits that Respondent registered the at-issue domain name in bad faith. The fact that Respondent provides competing goods and services cannot justify Respondent's use in the at-issue domain name of Complainant's MAGIC ON HOLD trademark. Therefore, Respondent registered the at-issue domain name in bad faith, for the purpose of disrupting the business of Complainant. The domain name is being used in bad faith. In addition, Respondent has made use of the at-issue domain name in bad faith. Respondent has used the at-issue domain name to operate a website through which it has sold an assortment of goods and services identical to those offered by Complainant itself and for which its MAGIC ON HOLD trademark is registered, namely, promoting the goods and services of others by producing customized recorded messages to be played while a customer is on a telephone hold line. Among the services previously and currently sold by Respondent through the website affiliated with the at-issue domain name were prerecorded messages played while a customer is on a telephone hold line. Simply by using the at-issue domain name, Respondent makes prominent trademark use of Complainant's MAGIC ON HOLD trademark without authorization from Complainant. The at-issue domain name <magiconhold.com> appears in the URL of every page within Respondent's website and creates the false impression that the services offered by Respondent are authentic services or that they are sponsored or endorsed by Complainant. Use of the at-issue domain name in this manner creates a strong likelihood of confusion between the source or sponsorship of Respondent's goods and services and those offered by Complainant, especially since the goods and services offered by both Respondent and Complainant overlap. Respondent's use of the at-issue domain name suggests a false designation of origin or sponsorship for Respondent's goods and services. Complainant submits that the at-issue domain name was chosen by Respondent: (1) in an effort to freeride on the goodwill associated with the distinctive MAGIC ON HOLD trademark in which Complainant enjoys exclusive rights; and/or (2) for the purpose of creating the false impression that Respondent is an authorized agent or licensee or representative of Complainant, which Respondent is not. Respondent's use of the disputed domain name to display links to a competing website is evidence of registration and use in bad faith. Therefore, Respondent has registered and is using the at-issue domain name in bad faith.

B. Respondent Respondent contends as follows: Complainant does not have superior legitimate rights in the at-issue domain name <magiconhold.com>. Respondent registered and has been using its domain name <magiconhold.com> since December of 2001. The domain name was registered in good faith, without knowledge of any existing or ongoing trademark use in commerce of the mark MAGIC ON HOLD by any party. Notwithstanding the claimed trademark registrations referenced in the Complaint, upon review of the marketplace and relevant channels of trade at the time of Respondent's domain name registration, it was Respondent's belief that the phrase "magic on hold" had become a generic term, used by multiple users in a generic sense to denote marketing and messaging services to people placed on hold on the telephone. Such information was brought to Complainant's attention several times. Additionally, prior to registering the domain name <magiconhold.com>, Respondent searched for valid trademark use in commerce which would have indicated that the term MAGIC ON HOLD was unavailable as a domain name. Respondent found no such trademark use, but instead found use of the mark in a generic way by many entities for telephone marketing and messaging services, and thereafter registered the at-issue domain name for its own use in good faith. Therefore, because of Complainant's lack of trademark use in commerce of the mark MAGIC ON HOLD at the time of Respondent's domain name registration, Complainant abandoned any valid trademark rights or domain name rights therein. Further, filing a UDRP proceeding nearly seven (7) years after Respondent's registration of the domain name and nearly six (6) years after the time Complainant first contacted Respondent regarding the at-issue domain name is significantly prejudicial to Respondent's legitimate business interests and this proceeding should be barred on the basis of laches. Respondent responded to the initial contact by Complainant by sending the 2002 Letter, explaining its good-faith registration of the domain name <magiconhold.com>. Complainant waited nearly two (2) years before contacting Respondent again on July 29, 2004 with a perfunctory and conclusory cease-anddesist-style letter. Respondent again answered with the 2004 Letter, restating Respondent's good-faith registration and use of the disputed domain name and its justification for use of the domain name. Respondent had not received any further response from Complainant until the filing of the instant UDRP action. It has been nearly four (4) years since the last communications between the parties on this matter prior to the initiation of this UDRP proceeding, and Respondent has continued to make good-faith use of the domain name. Bringing a UDRP proceeding after all this time has passed will unfairly prejudice

Respondent's business interests. Complainant has, through its delay and inaction of an unreasonably long period of time, constructively and implicitly consented to Respondent's use of the domain name. Complainant cannot expect to re-appear every few years demanding cessation of use of the domain name. If Complainant had any rights to prevent Respondent's use of the domain name, Complainant's silence of nearly four (4) years following its receipt of the 2004 Letter constitutes a waiver of its rights due to laches. Respondent has rights or legitimate interests in respect of the domain name. Respondent has legitimate rights and interests in the domain name <magiconhold.com> by virtue of its almost seven (7) years of continuous, uninterrupted use of the domain name in connection with messaging and marketing services for on-hold customers. Respondent has continuously used the domain name in dispute in connection with the sale of its services. Respondent has used and continues the domain name in good faith to support legitimate business interests associated with services for providing messaging and on-hold telephone marketing for businesses The at-issue domain name was not registered in bad faith. Respondent registered and used its mark in good faith to support its legitimate business interests and without knowledge of any existing or ongoing trademark use of the mark MAGIC ON HOLD by any entity. Additionally, Respondent's review of the relevant channels of trade for telephone messaging services at the time it registered the domain name <magiconhold.com>, further indicated that the phrase "magic on hold" had become generic of the relevant services through generic use by many different entities in connection with the same services. Respondent has and continues to make good faith use of the domain name in connection with telephone messaging and marketing services. Complainant's allegations that the domain name is being used in bad faith are equally unfounded. Complainant's unsupported contention that its mark is famous and the conclusory contention that, as such, Respondent has used the mark in bad faith are speculative at best. Further, the fact that some of Complainant's trademark registrations are incontestable does not save it from loss of its rights due to the mark becoming generic or from abandonment due to non-use. Respondent's position has, since first contact with Complainant nearly seven (7) years ago, been that at the time of registration, Respondent had no knowledge of trademark use in commerce by any party of the mark MAGIC ON HOLD and that the mark had become generic for the services offered, namely telephone messaging and marketing services. C. Additional Submissions

Complainant additionally contends as follows: Respondent's response to the pending Complaint includes admissions that support Complainant's claim to the disputed domain name <magiconhold.com>. Furthermore, Respondent's arguments are without weight. Respondent affirmatively states that it has been using the term MAGIC ON HOLD since the time of registration in December of 2001. Thus, Respondent admits that it registered the domain name <magiconhold.com> when the mark MAGIC ON HOLD was the subject of incontestable U.S. Trademark Registration Nos. 1,372,962 and 2,054,241, both of which are now held by Complainant. Respondent further admits that it used the mark after the date of first use of U.S. Trademark Registration Nos. 3,394,289 for MAGIC ON HOLD. Thus, Respondent admits that Complainant had superior trademark rights when Respondent began using the domain name. Also, Respondent claims that it held the belief that, despite the valid and subsisting trademark registrations, Respondent was entitled to register the domain name because the mark had become generic. "The generic or non-generic character of a trademark does not preclude the Complainant to assert legitimate rights in a registered trademark." Complainant's mark is a distinctive service mark because it is registered with USPTO. Furthermore, Complainant's use of the mark since 1984 is proof of the secondary meaning that has been acquired in the mark. Respondent further claims that it found no trademark use in commerce. Respondent offers no proof of a lack of trademark use. Complainant's registrations are valid and subsisting. Registration under U.S. law requires proof of use in commerce of the registered mark. Respondent has provided nothing to refute the proof that resulted in the registrations. Respondent has also claimed the defense of laches. The laches defense is not a valid defense under the UDRP. Therefore, Respondent's claim to this defense is entirely nugatory. In making this argument, Respondent makes heavy use of the allegation that seven years passed since the first contact from Complainant to Respondent. The Forum has found that a seven-year delay does not bar a transfer of a domain name when it is properly warranted. Respondent also provides nothing more than self-serving testimony as to its alleged rights to Complainant's mark. Furthermore, this same self-serving testimony accompanies Respondent's denial that it registered the domain name in bad faith. In its Response, Respondent points to its use of the domain name as evidence of its good faith registration. In fact, Respondent never uses the term MAGIC ON HOLD on its website. It only uses the domain name to point to a competing service provider: Respondent. As stated in the Complaint, such action

is the very crux of bad faith registration and maintenance. Respondent has engaged in bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iii), as Respondent primarily intended to disrupt Complainant's business. Thus, Respondent has failed in its burden to block the rightful transfer of the atissue domain name to the Complainant. Complainant respectfully requests an Order that the domain name <magiconhold.com> be transferred to the Complainant. Respondent additionally contends as follows: Complainant continues to rely on its U.S. Trademark Registration to allege rights to the mark MAGIC ON HOLD. However, Respondent contests this assertion by demonstrating that there was no discernable use in the marketplace of the mark MAGIC ON HOLD by Complainant or its predecessor-in interest at the time Respondent registered the domain name. Despite the existence of the referenced trademark registrations, Respondent submits that the mark had been abandoned through non-use as Respondent stated to Complainant in its correspondence of 2002 and 2004 which Complainant never previously refuted. Further, Complainant had knowledge that the marks were not in use when, in April of 2007 it filed an application for the same mark, MAGIC ON HOLD, for extremely similar goods in Class 9. Respondent submits that this filing occurred because the mark in the earlier registration was in fact abandoned. Complainant waited until registration of this newest application to assert its rights because it has knowledge that the mark was not in use when Respondent registered the domain name, rendering the older registrations invalid through non-use abandonment. In addition, since Complainant only filed its most recent application on April 13, 2007, there was no possible way Respondent could have had constructive notice of the mark when it registered the domain name on December 5, 2001, nearly six (6) years earlier. Additionally, based on the abandonment of Complainant's marks and the generic nature of the marks at the time of Respondent's domain name registration, Respondent continues to assert its good-faith basis for registration of the domain name <magiconhold.com>. Complainant also disregards Respondent's defense based on laches and acquiescence due to Complainant's unreasonable delay of nearly seven years from registration of Respondent's domain name and nearly six years from Complainant's first contact with Respondent regarding ownership of the domain name. Complainant asserts that the laches defense is not valid when, in fact, it has been deemed valid and upheld as a proper defense many times.

Complainant further asserts that Respondent has "failed in its burden to block the rightful transfer of the domain name to the Complainant" when, in fact, it is axiomatic that Complainant bears the burden of proving all three of the factors in a UDRP proceeding and, in this case. Complainant has failed in its burden in establishing its rights in the mark as it has failed to offer proof of valid use of the mark at the time of the domain name registration and failed to offer proof that the mark is not generic. FINDINGS Complainant has trademark rights in the mark MAGIC ON HOLD by virtue of trademark registration with the United States Patent and Trademark Office. Complainant’s trademark rights in the at-issue mark predate the registration of the at-issue domain name. The term MAGIC ON HOLD is not generic and is capable of trademark protection. Complainant did not authorize Respondent to use its trademark. Complainant and Respondent are competitors. Respondent is not commonly known by the at-issue domain name. DISCUSSION Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (2) the 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. As a preliminary matter, Respondent urges that Complainant’s claims may be time barred under the doctrine of laches, Complainant having waited too long between first becoming aware of Respondent’s activities and filing its Complaint. The Panel disagrees. While UDRP panels have not unanimously agreed on the propriety of permitting equitable defenses in UDRP administrative hearings, the

application of the laches doctrine in our case would be ineffective. Laches "requires proof of (1) lack of diligence by the party against whom the defense is asserted, and (2) prejudice to the party asserting the defense." See Nat'l R.R. Passenger Corp. v. Morgan, 536 U.S. 101, 121-22, 122 S. Ct. 2061 (2002). Here, Respondent was made aware of the dispute early on and approximately 6 years lapsed before Complainant filed the operative Complaint. However, Respondent offers no evidence as to how it was prejudiced by the delay, asserting only the conclusion that it was. Therefore, Respondent’s putative laches defense fails. Likewise, Complainant’s failure to act does not conclusively indicate that it waived its rights or acquiesced to Respondent’s continuing conduct. Identical and/or Confusingly Similar Complainant has multiple trademark registrations of the at-issue mark with the United States Patent and Trademark Office. These registrations establish rights for the purposes of Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). The <magiconhold.com> domain name is identical to Complainant’s MAGIC ON HOLD mark under Policy ¶ 4(a)(i). The at-issue domain name contains Complainant’s mark in its entirety with the addition of the generic top-level domain “.com.” It is well settled that this addition does not distinguish a domain name under the Policy. See Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (“The panel finds that Respondent’s <bigtow.com> domain name is identical to Complainant’s BIG TOW mark pursuant to Policy ¶ 4(a)(i) because the disputed domain name contains Complainant’s mark in its entirety and adds the generic top-level domain (“gTLD”) “.com.”). Moreover, Respondent does not dispute this element of the Policy. Therefore and for the reasons stated above, the Panel finds that the Complainant has rights in a trademark that is identical to the at-issue domain name. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the Policy, Complainant must first make out a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). The threshold for such showing is low. See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005). Once a prima facie case is established, the burden then shifts to Respondent who must then demonstrate that Respondent nevertheless has rights or legitimate interests in an at-issue domain name.

Complainant contends that it did not authorize Respondent to use the at-issue domain name and further that Respondent is neither affiliated with, nor commonly known as, MAGIC ON HOLD. There is nothing in the record to the contrary. Therefore, Complainant has met its slight burden. Respondent argues that it has rights and interest in the at-issue domain name because it has used the domain name continuously for 7 years and has maintained a bona fide business at a website addressed by the domain name. Continuous use adverse to the interest of Complainant is not a basis from which Respondent can acquire rights in the domain name. On the other hand the Policy expressly recognizes that rights or interest may be demonstrated by showing that Respondent has used the at-issue domain name in conjunction with a bona fide business. Policy ¶ 4(c)(i). Complainant asserts that Respondent is using the <magiconhold.com> domain name to redirect Internet users to Respondent’s competing business. If so Respondent is not using the <magiconhold.com> domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”) If however, Respondent registered the domain name without the intent of trading on the mark, and thus without knowledge of the Complainant’s claim of rights in the mark, for a legitimate purpose then Respondent’s use of the domain name may be bona fide. There is no dispute that at the time Respondent registered the at-issue domain name, Complainant had a valid federal registration for a corresponding trademark in the same area of commerce as Respondent’s business. Nor is there any dispute that Respondent conducts a competing business at its <magiconhold.com> website. Respondent contends that at the time of registering the domain name it checked to see if the mark was used in commerce. But if so, Respondent should have discovered Complainant’s trademark registration if not indirectly, directly. Further, Respondent felt the need to check the at-issue mark’s use in commerce as it alleges. There is an inference created that Respondent was in doubt as to the generic nature of the mark, else why check? The MAGIC ON HOLD mark does not appear to be generic, and Respondent offers no legal basis for asserting that the public came to associate the mark with a general class of services rather than Complainant’s services, except for the conclusory claim that Respondent believed that the mark had become generic. In light of the foregoing using the domain name to support its business when it knew or should have known of Complainant’s claim of rights in an identical mark does not constitute a bona fide use. Policy ¶4(c)(i) thus does not benefit

Respondent. Therefore and for the other reasons discussed above, the Panel finds that Respondent lacks right and interests with respect to the at-issue domain name. Registration and Use in Bad Faith Complainant asserts that Respondent registered the at-issue domain name in bad faith since it is highly unlikely that Respondent selected the at-issue domain name without being aware of Complainant’s MAGIC ON HOLD trademark. Even though Respondent acknowledges that it was aware of Complainant’s claim of rights at the time of registration, it nevertheless asserts that it believed that Complainant’s mark was generic. Without evidence of why Respondent selected the at-issue suggestive domain name or showing some evidentiary basis for claiming Complainant’s mark had become generic, this belief does not seem reasonable. Therefore, Respondent’s decision to register and then use the at-issue domain name with knowledge of Complainant’s claim of trademark rights in conjunction with a website for a competing business evidences bad faith registration and use under Policy ¶4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that the respondent registered the domain name in question to disrupt the business of the complainant, a competitor of the respondent); see also Lubbock Radio Paging v. Venture TeleMessaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000) (concluding that domain names were registered and used in bad faith where the respondent and the complainant were in the same line of business in the same market area). As mentioned above, Respondent is using the <magiconhold.com> domain name in order to operate a website in direct competition with Complainant, for Respondent’s commercial benefit. The at-issue domain name is capable of causing confusion as to the source, sponsorship, affiliation or endorsement of the domain name and referred website. Thus the Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b) (iv). See BPI Commc’ns, Inc. v. Boogie TV LLC, FA 105755 (Nat. Arb. Forum Apr. 30, 2002). 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 <magiconhold.com> domain name be TRANSFERRED from Respondent to Complainant.

Paul M. DeCicco, Panelist Dated: August 19, 2008

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