Trademark owner should be master of his domain name

More than 15 years ago, Magic Johnson, the Hall of Fame basketball player, assigned his trademark rights to the “Magic Johnson” name to June Bug Enterprises Inc.

At the time, JBE registered the mark with the U.S. Patent and Trademark Office and subsequently registered the magicjohnson.com Internet domain name. But JBE let the domain name registration expire in the late 1990s. Shortly thereafter, Mercedita Kyamko of Angeles City, Philippines, registered magicjohnson.com and used the site to redirect Internet traffic to her pornographic site, clubhongkong.com. JBE brought an arbitration case against Kyamko, about four years after her registration, for the return of the domain name.

As a part of the domain name registration agreement, which is common to most domain name registrations, Kyamko was bound to allow dispute resolution to be handled by the National Arbitration Forum. (Under NAF arbitration, all awards are reviewable by the courts. A court must “confirm” the arbitrator’s award to give it legal effect. Parties are entitled to the same legal remedies in arbitration as the court system.)

To claim rights in a domain name registered by another party, a trademark owner must assert that: the domain name being used is identical to their registered trademark; the other party does not have any rights or legitimate interests in the registered domain name; and the domain name is registered in bad faith.

The NAF held that the disputed domain name was identical to the MAGIC JOHNSON mark. The panel also found that Kyamko was wholly appropriating the trademark owned by JBE because she was not making a bona fide offering of goods or services using the domain name; she was only using the mark to link to her main Web site. Further, the panel found that exhibiting pornography was not a legitimate non-commercial or fair use of the domain name. Therefore, the panel held that Kyamko had no rights or legitimate interests in the disputed domain name.

Further, the panel inferred that Kyamko received revenues by redirecting traffic from magicjohnson.com to clubhongkong.com. This was an activity for commercial gain by creating a likelihood of confusion with JBE’s mark. The panel considered Kyamko’s quick registration of the domain, after JBE abandoned it, as evidence indicative of the distinctiveness of the domain name and bad faith “preying” by Kyamko. The panel had some reluctance finding for JBE as it waited for about four years to file a claim, but Kyamko failed to overcome the presumption of bad faith in redirecting traffic to a pornographic site. The panel stated it might have favored Kyamko if she had made a more substantial investment in her newly acquired domain name, but that was not the case.

Finally, the panel found no reason Kyamko needed to appropriate JBE’s mark just to link to another site displaying pornography. Though JBE had failed in renewing the domain name in a timely manner and delayed bringing the case, the panel did not relax its view of the bad faith actions of Kyamko.

As JBE met all three elements for claiming domain name rights, the panel last November ordered that the disputed domain name be transferred to June Bug Enterprises.

This case underlines the principle that the registration of a trademark with the U.S. Patent and Trademark Office provides additional protection in the event of appropriation of an identical or confusingly similar domain name. A complaint about appropriation of an Internet domain should be filed without unreasonable delay. Otherwise, the owner of the trademark may lose the domain name if the domain registrant makes a bona fide use of the domain name.

Generally speaking though, it is always a bad idea to register a domain name in the hope of riding on the value someone else has put in the name.

Todd A. Sullivan is a patent attorney with the Concord law firm of Hayes Soloway and Amit K. Singh is a patent agent with the firm.