WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Magic Software Enterprises Ltd v. Evergreen Technology Corporation
Case No. D2000-0746
1. The Parties
The Complainant is:
Magic Software Enterprises Ltd of 5 Haplada Street, Or Yehuda 62108, Israel.
Represented by Steve Greenberg of Complainant and Ilanit Yaheskiely, Adv. Naomi Assia Law Office, PO Box 314, Ramat Hasharon 47103, Israel.
The Respondent is:
Evergreen Technology Corporation of 231 Emerson Street, Palo Alto, Ca 94301, United States of America.
Represented by John L. Slafsky and Richard Nessary, Wilson, Sonsini Goodrich & Rosati of 650 Page Mill Road, Palo Alto, CA 94304-1050, United States of America.
2. The Domain Name and Registrar
The domain name with which this dispute is concerned is:
The Registrar with which the domain name is registered is: Network Solutions, Inc. 505 Huntmar Park Drive, Herndon, VA 20170, United States of America
The Registrant’s dispute resolution policy is the Policy and is applicable to the domain name.
The domain name was registered on August 3, 1989.
3. Procedural History
The Complaint was submitted electronically and in hard copy to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on July 6 and July 10, 2000, respectively.
On July 14, 2000, the Registrar verified that the current registrant of the domain name is the Respondent, the Registrar's 5.0 Service Agreement applies to the domain name. The domain name is "Active" and that the Administrative Contact, Technical Contact and Zone Contact for the domain name is:
Markevitch, James A (JAM69)
231 Emerson St
Palo Alto, CA 94301
On July 14, 2000, all formal requirements for the establishment of the Complaint were checked by the WIPO Center and found to be in compliance with the applicable ICANN Rules ("the Rules") for Uniform Domain Name Dispute Resolution Policy ("the Policy"), and WIPO Supplemental Rules. The Panel has checked the file and confirms the WIPO Center’s finding of proper compliance with the Rules and establishment of the Complaint.
Notification of Complainant and Commencement of Administrative Proceeding was sent to Respondent electronically on July 17, 2000, and by facsimile and by courier on July 17, 2000.
The Administrative Proceeding commenced on July 17, 2000.
The last day for filing a Response by Respondent was August 6, 2000. The Response was filed electronically on August 5, 2000 requesting a three member panel.
The panelists having filed a Statements of Acceptance and Declaration of Impartiality, the Panel comprising Mayer GABAY, G. Gervaise DAVIS III and Desmond RYAN (Presiding) was duly appointed on September 21, 2000.
The Panel proceeds to its determination in accordance with the Uniform Domain Name Dispute Resolution Policy ("the Policy"), the Rules and the applicable rules and principles of law on the basis of the Complaint and the Response.
4. Factual Background
Complainant is an Israeli corporation carrying on business in the development of application software. Complainant was initially known as Mashov Software Enterprises Ltd, and Complainant asserts that the mark MAGIC was adopted for its software in 1984-85 as an acronym for "Mashov Applications Generator in C". Complainant's software was advertised and promoted throughout 1987-88 as MAGIC PC (Complaint Exhibit A), and Complainant's U.S. subsidiary was formed in 1991. Complainant asserts that its software is used in more than sixty countries with more than 100,000 development licences issued and 1.3 million deployment units sold.
Complainant is the registered proprietor of U.S. Trade Mark No. 1,868,026 MAGIC, registered in respect of "computer software programs providing coded-free, object oriented application development tools used by computer professionals to facilitate the generation of application programs". The mark was registered on December 20, 1994 on an application filed August 15, 1990 claiming first use in commerce in the United States in July 1986 (Complaint Exhibit B).
Complainant has corresponding registrations in the United Kingdom, Benelux, Italy, France, Switzerland, Canada, Thailand and Israel and has a number of other trade marks registered and applications pending which include the word MAGIC (Complaint Exhibit C).
Complainant is the registrant of the domain names "magic-sw.com" and "magicsoftware.com" (Complaint Exhibits E and F).
Respondent is a computer consulting firm based in Palo Alto which designs hardware and software. Its sole proprietor is James A. Markevitch. On December 23, 1999 Respondent sought to change the name of the registrant of the domain name from "Evergreen Technology Corporation" to "Evergreen Technology Group" (Response Exhibit 2). Markevitch is the sole proprietor of Evergreen Technology Group (Response Exhibit 1). Accordingly, nothing appears to turn upon the change of name. The term "Respondent" will be used hereinafter to refer to Mr Markevitch, Evergreen Technology Corporation and Evergreen Technology Group as the context requires or permits.
Respondent claims active and continuous use of "magic" as, or as part of, his electronic address for seventeen years, and from prior to the development of the Worldwide Web. Respondent claims use of "magic" as a site name since at least July 1983 as well as "magicgate" and "magic-sw". Respondent submits evidence in support in the form of copies of electronic messages dating from December 1984 showing the use of "magic" as Respondent's address and in February 1987 Respondent registered "magic" as the site name under the registration system known as UUCP Maps. UUCP stands for Unix to Unix Copy Protocol. In July of 1989 Respondent registered the domain name "magic.com" under a service called UU Net and in 1996 it registered the domain name with Network Solutions and has maintained that registration (Response Exhibits 4 to 13).
Respondent exhibits to the Response, many examples of his use of "magic" as a site name, electronic address and/or domain name in the course of his business (Response Exhibit 19), as well as supporting declarations from customers and professional colleagues attesting to Respondent's use of the domain name as, or as part of his electronic address (Response Exhibits 15 to 18).
Respondent has not established a web-site to which the domain name resolves, but Respondent claims, and has established, substantial and on-going use of the domain name as his electronic address.
In 1998 and 1999 Complainant attempted to negotiate with Respondent for the transfer of the domain name to it. It is unnecessary to go into the details of the correspondence in relation to this, save to note that each approach by Complainant was rejected by Respondent who, on May 23, 1999 replied to Complainant: "It's not for sale. Period. We've got many requests about this domain and provided the same answer to everyone" (Complainant Exhibit D, Response Exhibits 22 to 29).
5. Applicable Dispute
This dispute is one to which the Policy applies. By registering the domain name Respondent accepts the dispute resolution policy adopted by the Registrar from time to time. Registrar's current policy ,set out in its 5.0 Service Agreement, is the Policy.
To succeed in its Complaint, Complainant must show that each of the conditions of paragraph 4(a) of the Policy are satisfied, namely that:
(i) the domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in the domain name;
(iii) the domain name has been registered and is being used in bad faith.
6. The Parties Contentions
Complainant contends that:
(a) the domain name is identical or confusingly similar to Complainant's trade marks.
(b) Complainant cites and produces evidence of its trade mark registrations in support of this.
Complainant asserts that Respondent does not have a legitimate interest in respect of the domain name. Complainant asserts that the Respondent has not been using the domain name in connection with the bona fide offering of goods or services and that the domain name is not being used as an active address. Complainant refers to the correspondence between Complainant and Respondent requesting the transfer of the domain name and cites Respondent's failure to resolve the domain name to a web-site as an indication of Respondent's lack of legitimate reason for having registered the name. Complainant points out that mere registration of a domain name is not sufficient to establish rights or legitimate interests and cites National Arbitration Forum Case FA94427 – State Farm Mutual Automobile Insurance Co. v. Bulldog Inc.
Complainant asserts registration and use of the domain name in bad faith. Citing paragraph 4(b)(ii) of the Policy Complainant contends that Respondent's registration has prevented it from using its trade mark as a domain name and that damage has thereby been caused to Complainant because potential customers will be discouraged if they cannot find Complainant's web-page under "magic.com". Complainant cites in support the decision of the U.S. Ninth Circuit Court of Appeals in Panavision International v. Toeppen, 141 F.3d 1316.
Complainant categorises Respondent's failure to establish a web-site as passive holding of the domain name. Complainant cites in support the well-known decision in Telstra Corporation Ltd, v. Nuclear Marshmellows Case D2000-0003 as well as Mondich and American Wine Biscuits, Inc. v. Brown, Case D2000-0004 and Beverages and More,. Inc. v. Glen Sober Mgmt, Case AF-0092.
Respondent asserts that the domain name is not identical or confusingly similar to Complainant's trade mark. In support, Complainant contends that its adoption of the domain name preceded Complainant's adoption of the trade mark. Respondent further contends that it does not use the domain name as a trade mark and no likelihood of confusion will result and that MAGIC is a commonly used trade mark in the computer related area citing several registrations owned by third parties (Response Exhibit 31).
Respondent asserts legitimate rights and interest in the domain name. Respondent points to his use of the domain name as an electronic address, both in personal correspondence and in the bona fide offering of his goods and services since many years prior to notice of the dispute (para. 4(c)(i) of the Policy). Respondent further contends that he has been commonly known by the domain name through its use as his electronic address (para. 4(c)(ii) of the Policy) and that he has been making a legitimate fair use of the domain name without intent to misleadingly divert customers or to tarnish the trade mark or service mark of Complainant (para. 4(c)(iii)).
Respondent distinguishes on the facts the cases cited by Complainant and points to his long established use of the domain name as an electronic address.
Respondent similarly responds to the allegation that the domain name has been registered and is being used in bad faith pointing to his continued and active use of the domain name for over a decade and again distinguishing the cases cited by the Complainant. Respondent points out that legitimate use of domain names is not limited to their use as pointing to a web-site and states that "there are legitimate commercial, practical, financial and security reasons why web-sites may be unsuitable for many domain name registrants."
Respondents cites the decision in Zero International Holding GmbH & Co. Kommanditgesellschaft v. Beyonet Services and Stephen Urich, Case D2000-0161 at paragraph 7.6 where the Panel in that case said::
"The second matter relied upon by the Complainant [as to bad faith] is the fact that the Respondent has never established a web-site by reference to the domain name. This is conceded. The evidence establishes that the Respondent has used the domain name in relation to e-mail and file transfer operations associated with both his personal activities and his profession as a network engineer. Although the World Wide Web is one of the most successful and widespread manifestations of the use of the Internet and the domain name system, it is by no means the only possible use. As Respondent's activities indicate, the Internet can be used for many other purposes, e-mail and file transfer being two examples. We do not accept the Complainant's contention that registration of a domain name which is only to be used for such purposes is in some way improper and constitutes bad faith."
7. Discussion and Findings
Identical or Confusingly Similar Trade Marks
The Panel finds that the domain name, having as its essential characteristic the word "MAGIC" is identical or confusingly similar to the trade marks of the Complainant.
The Panel does not accept Respondent's argument that the requirement of the Policy is not satisfied because Respondent is not using the name as a trade mark or because the mark is one common to the trade, or even because Respondent was first to adopt the name. Whilst there may be cases where the trade mark rights of the Complainant are insignificant and the areas of interest so remote that these factors are to be taken into account, that is not the case here.
Respondent’s Rights or Legitimate Interests
The Panel finds that Respondent has clearly established rights and legitimate interests in the domain name.
Complainant's contentions to the contrary appear to proceed from the false assumption that legitimate interests in a domain name can only stem from an interest in the use of the domain name to resolve to a web-site. As Respondent points out, this disregards the history of the development of the Internet and the use of domain names as electronic addresses. The Respondent has clearly demonstrated long standing and widespread use of the domain name as his electronic address and in file transfer operations. He has a right to continue such use. The Panel respectfully adopts the finding of the Panel in the Zero Case quoted above. Complainant has therefore failed to establish that Respondent has no legitimate rights or interests in the domain name.
Registration and Use in Bad Faith
Complainant having failed to establish Respondent's lack of rights or legitimate interest in the domain name under paragraph 4(a)(ii) of the Policy, it is unnecessary for the Panel to consider the further ground under paragraph 4(a)(iii). However, in view of Complainant's allegations of bad faith the Panel places on record its finding that Complainant has failed to establish bad faith in either the registration or the use of the domain name by the Respondent. There is no evidence that Respondent registered the domain name primarily for the purpose of selling it. Respondent adopted the domain name long before commercial interest in such names developed and his response to Complainant's approach to purchase the name demonstrates that he had no interest in selling the domain name at that time. Respondent's registration has not prevented Complainant from reflecting its trade mark in a corresponding domain name "magic-sw.com". Plainly Respondent did not register the domain name for that purpose and he has not engaged in a pattern of such conduct. Equally, the evidence shows that Respondent did not register the domain name with any intent to disrupt the business of Complainant and he has not attempted to attract Internet users to a web-site.
Complainant has therefore failed to establish any bad faith on the part of Respondent.
Complainant having failed to establish the elements required by paragraph 4(a)(ii) and 4(a)(iii) of the Policy, the Complaint is denied and cancellation or transfer of the domain name is refused.
Mayer Gabay G Gervaise Davis III
Dated: October 4, 2000