Stephen J. Taylor and Sigma
Two Group LLC v. Avenstar and Mark McGinnis
Claim Number: FA0803001169965
PARTIES
Complainant is Stephen J. Taylor and Sigma Two Group
LLC (“Complainant”), represented by Gary J. Nelson, of Christie, Parker &
Hale LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <magicalfireflies.com>, registered
with Netfirms,
Inc.
PANEL
The undersigned Daniel B. Banks, Jr., certifies that he has acted
independently and impartially and to the best of his knowledge has no known
conflict in serving as Panelist in this proceeding.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on March 26, 2008; the
National Arbitration Forum received a hard copy of the Complaint on March 27, 2008.
On March 27, 2008, Netfirms, Inc. confirmed by e-mail to the
National Arbitration Forum that the <magicalfireflies.com> domain name is
registered with Netfirms, Inc. and that
the Respondent is the current registrant of the name. Netfirms, Inc.
has verified that Respondent is bound by the Netfirms,
Inc. 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 March 31, 2008, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of April 21, 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@magicalfireflies.com by e-mail.
A timely Response was received and determined to be complete on April 10, 2008.
An Additional Submission was received from Complainant on April 16,
2008 and determined to be timely and complete in compliance with the National
Arbitration Forum’s Supplemental Rule 7.
On April 23, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Daniel B. Banks, Jr., as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Stephen J. Taylor owns the United States registered trademarks and
trade names FIREFLY MAGIC (registered on February 29, 2006) and MAGICAL
FIREFLIES (registered on January 29, 2008), which he licenses to Sigma Two LLC
for use in connection with the sale of specialty electric lights that mimic the
effect of fireflies. Complainants also
own and operate a related web site at <fireflymagic.com>. The Respondents sell a competing product
under the trade name Creativations Fireflies.
Complainants’ products are used in a variety of settings including
firefly research, natural science museums, zoos, theme parks, hotels,
restaurants and theatrical and film production.
These products have received significant attention and coverage in
publications addressed to these markets.
In addition to registered trademark rights, Complainants claim common
law rights in the MAGICAL FIREFLIES mark dating to Complainant’s first use of
the mark in commerce in February, 2005. Since
2004, Complainants have continuously and exclusively used the FIREFLY MAGIC
trademark in the
The subject domain name is identical to Complainants’ mark MAGICAL
FIREFLIES. The only difference in
Complainants’ MAGICAL FIREFLIES mark and the contested domain name is the
addition of the “.com” generic top-level domain (gTLD) which is insufficient in
distinguishing a disputed domain name from an identical trademark.
The subject domain name is confusingly similar to Complainants’ mark
FIREFLY MAGIC. The terms in Complainants’
mark have been transposed and slightly modified in a manner that does not
diminish the resulting confusion. Merely
transposing the elements of a relevant mark does not avoid confusion similarity
under the Policy. Also, minor
modifications to the terms in the mark, such as making a term plural, cannot
alleviate the resulting consumer confusion.
Respondents have no rights or legitimate interests in the contested
domain name. The UDRP describes
circumstance that will support a Respondent’s contention that it has rights and
legitimate interest in the contested domain name but none of those exist in
this case. Under UDRP Paragraph 4(c)(i),
a competitor’s use of a mark in a confusingly similar domain name cannot be a bona fide use. Under UDRP Paragraph 4(c)(ii), Respondents are
not known individually, as a business or in other manner by Magical Fireflies
or <magicalfireflies.com>. Respondents are not licensed by Complainants
nor do they have any legal relationship that would entitle them use
Complainants’ trademarks or trade names.
Under UDRP Paragraph 4 (c)(iii), Respondents are not making a legitimate
noncommercial or fair use of Complainants’ trademarks. Respondents website sells electric lights
that mimic the effect of fireflies and competes directly with Complainants’
product in this limited market. This is
clearly a commercial use of the contested domain name.
Respondents have registered and are using the contested domain name in
bad faith. Respondents are intentionally
attempting to attract, for commercial gain, Internet users to its website by
creating a likelihood of confusion with the Complainants’ mark as to the
source, sponsorship, affiliation or endorsement of the web site or location or
of a product or service on the web site.
It is well settled that registration and commercial use of a domain name
that is confusingly similar to the mark of a competitor satisfies this
requirement of the Policy, Paragraph 4(b)(iii) and (iv).
Because the FIREFLY MAGIC and MAGICAL FIREFLIES trademarks are so
obviously connected with Complainants and because the domain name <magicalfireflies.com> so clearly
references the Complainants’ marks and products, registration by Respondents
suggest bad faith.
B. Respondents
Respondent, Mark McGinnis, first began collaborating with partners to
manufacture a fireflies product in 2002.
He brought his product to the Internet in 2003. The copyrighted name used for the Respondents’
Fireflies product is Creativations. Also,
in 2003, Respondents had a website, <creativations.net>, and then another
website in 2003 at <fireflies.tv>.
Respondents began selling their “Magical Fireflies” on the Internet.
Complainants do own the registered trademarks FIREFLY MAGIC and MAGICAL
FIREFLIES however, the name in dispute, MAGICAL FIREFLIES, was not trademarked
by Complainant until January of 2008.
Respondents were using the name MAGICAL FIREFLIES and variations of that
name since the inception of their first website. Respondents have acquired good will among their
customers and distributors and as far back as 2003, Respondents’ outdoor
lighting was known fondly as “Magical Fireflies.”
Respondents registered the disputed domain name in November of
2005. Prior to registration, Respondents
did a search at the Trademark Office and with the Domain Registry to see if the
name was legally clear to use. The
change of Respondents’ website from <fireflies.tv> to <magicalfireflies.com> was done
due to the overwhelming response from Respondents’ customers.
Respondent and his company Avenstar Enterprises, Inc., have put well
over $200,000 in marketing and distributing his Creativations Fireflies product
and continues to spend thousands of dollars today. This money is allocated to advertising,
including press releases and paid radio and magazine ads. Respondents also have a 30 minute infomercial
and have been working with an engineer on a continual basis to tweak and
improve on the fireflies lighting effect and similar but different
products.
The MAGICAL FIREFLIES name is
not confusingly similar to Complainants’ FIREFLY MAGIC. Fireflies is the plural form of firefly and
magical is a derivative of magic and the words have been interchanged. When all three of these differences are
combined, the names look and sound clearly different and not confusingly
similar.
With respect to the claim that MAGICAL FIREFLIES is identical to
Complainants’ trademark, that name was not trademarked until January 2008. Respondents registered the disputed domain
name in November of 2005. And,
Complainants’ claim that they have been
using the name “Magical Fireflies” since 2004 and have common law rights. That
use came only after Respondents had established it to a national audience of
customers starting in 2003.
The circumstance which supports the Respondents’ claim in this case is
UDRP Paragraph 4(c)(i) which states that “before any notice to respondent of
the dispute, respondent uses or prepares to use the domain name in connection
with a bona fide offering of goods
and services.” Respondents have, since
2003, sold Creativations Fireflies and marketed them as a magical lighting
effect. The technology is patented and
is a one-of-a-kind product. It is highly
technical and sophisticated.
Complainants’ product is stagnant and offers blinking lights. They are similar and Complainants have
advertised their fireflies as magical on the Internet since 2004, but only
after Respondents. Respondents clearly
have rights and legitimate interest in the contested name.
Respondents deny that the disputed domain name was registered and is
being used in bad faith.
Respondents ask that the panel deny the remedy requested by Complainants. Complainants never contacted the Respondents
prior to the filing of this Complaint and have acted in bad faith in this
matter. Respondents claim Copyright
protection for their product since 2003.
Respondents ask the panel to find reverse domain name hijacking against
the Complainants.
C. Additional Submissions
In an additional submission, Complainants say that Respondents admit
that Complainants do own the registered trademarks “FIREFLY MAGIC” and “MAGICL
FIREFLIES.” However, Respondents seem to
argue that Complainants have no rights in the marks until the federal
registrations. This is incorrect because
Complainants filed the application to register FIREFLY MAGIC in January of
2005, ten months before Respondents registered the domain name at issue. Second, Respondents ignore Complainants’
common law rights in both marks that were established before Respondents
registered the disputed domain name.
Complainants have established common law rights because it used the
FIREFLY MAGIC mark in commerce as early as June 2004 and used the MAGICAL
FIREFLIES mark in commerce as early as August 2004. Products bearing these names have received
considerable attention in the press and public and were known to the public
months before Respondents registered the disputed domain name. Furthermore, both of these marks are presumed
to be inherently distinctive or have acquired secondary meaning because they
were allowed by the U.S. Patent and Trademark Office and were registered.
Respondents’ claim of priority is unsupported by trademark law. Respondents argue that the use of the words
“magic” and “magical” to describe their product in advertising materials
establishes earlier trademark rights. In
order to claim priority, the mark must also be used continuously. The name of Respondents’ product at the time
of the infomercial was clearly “Fireflies.”
The product is never referred to as “Magical Fireflies.” And, today Respondents’ product is still
known as “Fireflies” and not “Magical Fireflies.”
The subject domain name is confusingly similar to Complainants’
marks. There can be no question about
the MAGICAL FIREFLIES mark. Even
ignoring Complainants’ rights in that mark, the domain name at issue is also
confusingly similar to Complainants’ FIREFLY MAGIC mark. Domain names comprised of the transposed
trademark terms and/or slightly modified trademark terms are routinely found to
be confusingly similar.
Respondents have no rights or legitimate interest in the contested
domain name. Respondents argue that they
have a legitimate interest because they are involved in the legitimate business
off selling goods. This ignores the fact that an otherwise bona fide business offering is not
entitled to protection if the offering is made by one competitor at a domain
name that is confusingly similar to the mark of another.
Respondents registered and use the domain name in bad faith. Respondents admit that their business and the
business of Complainants are the only “credible and visible competition in the
niche market of ‘fireflies’ products.”
Respondents also admit that before registering the domain name at issue,
they sold the “Fireflies” product at an online store at two other domain names
for several years. In late 2005,
Respondents clearly made a strategic decision to move his existing online store
to the domain name <magicalfireflies.com>. Respondents’ claim of good faith is
undermined by the fact that they knew at the time of registration that their
main competitor was already using the FIREFLY MAGIC and MAGICAL FIREFLY marks
and the domain name <fireflymagic.com>.
While Respondents deny any intent to attract customers by creating a
likelihood of confusion, it is difficult to accept that assertion in light of
the vast array of domain names available and their decision in 2005 to register
a domain name so similar to that of their admitted main competitor. Even today, when Complainants’ FIREFLY MAGIC
mark has been used for over four years and registered for over two years,
Respondents’ website prominently features large font front page text that says
“Add Incredible Fireflies Magic to Your Backyard in Just Minutes.”
Finally, Respondents’ argument that Complainants have shown bad faith
bringing this claim to enforce trademark rights without first contacting
Respondents reflects misunderstanding of
the legal term “bad faith.” Enforcing
ones rights through UDRP proceedings is not bad faith.
FINDINGS
1 – The disputed domain name, <magicalfireflies.com> is
identical to Complainants’ trademark MAGICAL FIREFLIES and is confusingly
similar to Complainants’ trademark FIREFLY MAGIC.
2 – The Respondents have no rights or
legitimate interests in respect of the domain name.
3 – The domain name was registered and is
being used in bad faith.
4 – Complainants did not attempt reverse
domain name hijacking.
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.
Complainants assert rights in the
FIREFLY MAGIC (Reg. No. 3,063,037 issued February 28, 2006) and MAGICAL
FIREFLIES mark (3,375,298 issued January 29, 2008) through registration of the
marks with the USPTO. Although
Complainants’ rights do not predate Respondents’ domain name registration, the
Panel nonetheless finds that Complainants have sufficient rights in the mark
through this trademark registration pursuant to Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP
Servs., FA 221171 (Nat. Arb. Forum Feb.
18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes
Complainant's rights in the mark.”); see
also AB Svenska Spel v.
Zacharov, D2003-0527 (WIPO
Oct. 2, 2003) (holding that the UDRP Policy 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) but may prevent a finding of bad faith under
Policy ¶ 4(a)(iii)); see also Javacool Software Dev., LLC v. Elbanhawy
Invs., FA 836772 (Nat. Arb. Forum Jan. 2, 2007) (holding that a
complainant need not show that its rights in its mark predate the respondent’s
registration of the disputed domain name in order to satisfy Policy ¶ 4(a)(i))
Complainants also allege that they have
sufficient common law rights in the marks as they have marketed their products
under the FIREFLY MAGIC mark since August 1, 2004, and the MAGICAL FIREFLIES
mark since February 25, 2005. Both of
these dates correspond to the first dates of use in commerce on each mark’s
respective USPTO registration.
Complainants argue that they have spent over $150,000 in advertising and
marketing these products lines, and offers as evidence numerous media articles
documenting Complainants’ products as early as December 2004. Based on the record, the Panel finds that
Complainants have shown sufficient common law rights in the marks to grant
standing under Policy ¶ 4(a)(i) dating back to August 1, 2004 and February
25, 2005 for the FIREFLY MAGIC and
MAGICAL FIREFLIES marks, respectively. See Bibbero Sys., Inc. v. Tseu & Assoc.,
FA 94416 (Nat. Arb. Forum May 9, 2000) (finding, while the complainant had
registered the BIBBERO SYSTEMS, INC. mark, it also had common law rights in the
BIBBERO mark because it had developed brand name recognition with the word
“bibbero”); see also Tuxedos By Rose v.
Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights
in a mark where its use was continuous and ongoing, and secondary meaning was
established).
Complainants assert that the <magicalfireflies.com> domain name is identical to
Complainants’ MAGICAL FIREFLIES mark given that it entirely incorporates
Complainants’ mark. The addition of the
generic top-level domain “.com” is irrelevant in a Policy ¶ 4(a)(i)
analysis. The Panel finds that the
disputed domain name is identical to Complainant’s mark pursuant to Policy ¶
4(a)(i). See Busy Body, Inc. v. Fitness
Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) ("[T]he addition
of the generic top-level domain (gTLD) name ‘.com’
is . . . without legal significance since use of a gTLD is
required of domain name registrants . . . ."); see also Daedong-USA,
Inc. v. O’Bryan Implement Sales,
FA 210302 (Nat. Arb. Forum Dec. 29, 2003) (“Respondent's domain name,
<kioti.com>, is identical to Complainant's KIOTI mark because adding a
top-level domain name is irrelevant for purposes of Policy ¶ 4(a)(i).”).
Complainants allege in the Complainant, and reiterate
in its Additional Submission, that the disputed domain name is confusingly
similar to Complainants’ FIREFLY MAGIC mark, in that Respondents transposed the
words “magic” and “firefly,” and then altered the word forms by pluralizing
“firefly” into “fireflies,” and changing “magical” into its derivative
“magic.” Complainants further allege
that Respondents are a strict competitor of Complainants, thus adding to the
confusing similarity. The Panel finds
that Respondents’ <magicalfireflies.com> domain name is confusingly similar to
Complainants’ mark pursuant to Policy ¶ 4(a)(i). See
Slep-Tone Entm't Corp. v. Sound Choice Disc Jockeys, Inc., FA 93636 (Nat.
Arb. Forum Mar. 13, 2000) (stating that “likelihood of confusion is further
increased by the fact that the Respondent and [Complainant] operate within the
same industry”); see also NCRAS Mgmt., LP v. Cupcake City,
D2000-1803 (WIPO Feb. 26, 2001) (finding the domain name
<nationalrentalcar.com> confusingly similar to the mark NATIONAL CAR
RENTAL and holding that “merely inverting the terms of a
mark . . . is quite insufficient to dispel consumer
confusion; the mark and the resulting domain name are simply too similar to
each other”); see also Am. Online, Inc. v. iDomainNames.com,
FA 93766 (Nat. Arb. Forum Mar. 24, 2000) (finding that the respondent’s domain
name <go2AOL.com> was confusingly similar to the complainant’s AOL mark).
The Panel finds that Complainants
have made a prima facie case that Respondents lack rights and legitimate
interests in the disputed domain name under Policy ¶ 4(a)(ii), and that the
burden shifts to Respondents to show they have rights or legitimate
interests. See Hanna-Barbera Prods., Inc. v.
Entm’t Commentaries,
FA 741828 (Nat. Arb. 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 disputed 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 (Nat. Arb. 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.”).
Respondents are not commonly known by the
disputed domain name, are not known individually, or as a business, by MAGICAL
FIREFLIES or FIREFLY MAGIC, and are not licensed by Complainants to use either
of the marks. Furthermore, the
registrants of the disputed domain name are listed in the WHOIS information as
“Avenstar and Mark McGinnis,” and do not bear any resemblance to the disputed
domain name. The Panel finds that Respondents lack rights and
legitimate interests in the disputed domain name pursuant to Policy ¶
4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where
the respondent was not commonly known by the mark and never applied for a
license or permission from the complainant to use the trademarked name); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent
has registered the domain name under the name ‘Ilyoup Paik a/k/a David
Sanders.’ Given the WHOIS domain name
registration information, Respondent is not commonly known by the
[<awvacations.com>] domain name.”).
Complainants assert that Respondents
registered the disputed domain name to sell their strictly competing
firefly-mimicking light systems in the same limited market as Complainants. Complainants allege that such use would be
purely beneficial and intended to deprive Complainants of potential customers
through the misleading disputed domain name.
It should be noted that Complainant used the registered
trademarks “Firefly Magic” and “Magical Fireflies” as the name of his product.
Respondent used the terms “magic” and “magical” only to describe the effect of his product which he has always marketed as “Creativations
Fireflies.” The Panel finds that Respondents lack rights and legitimate interests
in the disputed domain name under Policy ¶ 4(a)(ii), because they do not constitute
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 Glaxo Group
Ltd. v. WWW Zban, FA 203164 (Nat.
Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain
name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent
used the domain name to take advantage of the complainant's mark by diverting
Internet users to a competing commercial site); see also Gardens Alive, Inc.
v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (finding
that the respondent used a domain name for commercial benefit by diverting
Internet users to a website that sold goods and services similar to those
offered by the complainant and thus, was not using the name in connection with
a bona fide offering of goods or services nor a legitimate noncommercial
or fair use).
Complainants assert that
Respondents’ registration of the disputed domain name was primarily intended to
disrupt Complainants’ business.
Complainants argue that such intent is evidenced by Respondents’
registration of the disputed domain name identical and confusingly similar to
Complainants’ MAGICAL FIREFLIES and FIREFLY MAGIC marks respectively, that both
Complainant and Respondent operate in the same industry and limited market, and
finally that the disputed domain name was registered after Complainants’ market
entry. The Panel agrees and finds that
Respondents engaged in bad faith registration and use under Policy ¶
4(b)(iii). See EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (Nat. Arb.
Forum July 7, 2000) (finding bad faith where the respondent’s sites pass users
through to the respondent’s competing business); see also Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO
Feb. 5, 2001) (finding that, given the competitive relationship between the
complainant and the respondent, the respondent likely registered the contested
domain name with the intent to disrupt the complainant's business and create
user confusion).
Complainants argue that Respondents’
registration of the disputed domain name was an intentional effort to attract
Internet users seeking Complainants’ goods to Respondents’ competing website
for commercial gain. Complainants
contend that the disputed domain name is identical and confusingly similar to
Complainants’ MAGICAL FIREFLIES and FIREFLY MAGIC marks, respectively. Again, the Panel agrees and finds that
Respondents engaged in bad faith registration and use under Policy ¶ 4(b)(iv)
by creating a likelihood of confusion regarding the source and affiliation of
the disputed domain name and corresponding website. See TM
Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001)
(finding bad faith where the respondent used the domain name, for commercial
gain, to intentionally attract users to a direct competitor of the
complainant); see also Busy Body, Inc. v.
Fitness Outlet, Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding bad faith
pursuant to Policy ¶ 4(b)(iv) because the respondent and the complainant were
in the same line of business and the respondent was using a domain name
confusingly similar to the complainant’s FITNESS WAREHOUSE mark to attract
Internet users to its <efitnesswarehouse.com> domain name).
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 <magicalfireflies.com> domain name be
TRANSFERRED from Respondents to Complainants.
Daniel B. Banks, Jr., Panelist
Dated: May 7, 2008
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