JPG v. The Photographers Network tm
Claim Number: FA0204000112426
Complainant
is JPG, Fosses, FRANCE
(“Complainant”) represented by Anne
Goeres, of JPG. Respondent is The Photographers Network tm, Arlington, ME, USA (“Respondent”).
The
domain name at issue is <jpg.biz>,
registered with Registration
Technologies, Inc.
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding.
Hon.
Carolyn Marks Johnson sits as Panelist.
Complainant
has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint,
as it timely filed the required Intellectual Property (“IP”) Claim Form with
the Registry Operator, NeuLevel. As an
IP Claimant, Complainant timely noted its intent to file a STOP Complaint
against Respondent with the Registry Operator, NeuLevel and with the National
Arbitration Forum (the “Forum”).
Complainant
submitted a Complaint to the Forum electronically on April 26, 2002; the Forum
received a hard copy of the Complaint on June 5, 2002.
On
July 18, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of August 7,
2002 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent in compliance with paragraph 2(a) of the Rules for
the Start-up Trademark Opposition Policy (the “STOP Rules”).
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On August 23, 2002, pursuant to STOP Rule 6(b), the
Forum appointed Hon. Carolyn Marks Johnson
as the single Panelist.
Having
reviewed the communications records, the Administrative Panel (the “Panel”)
finds that the Forum has discharged its responsibility under Paragraph 2(a) of
the STOP Rules. Therefore, the Panel
may issue its decision based on the documents submitted and in accordance with
the STOP Policy, STOP Rules, the Forum’s STOP Supplemental Rules and any rules
and principles of law that the Panel deems applicable, without the benefit of
any Response from Respondent.
Complainant
seeks transfer of the domain name from Respondent to Complainant.
A. Complainant makes the following
allegations in this proceeding:
1. Respondent’s <jpg.biz> domain
name is identical to Complainant’s JPG common law mark.
2. Respondent does not have any rights or
legitimate interests in the <jpg.biz> domain name.
3. Respondent registered the <jpg.biz>
domain name in bad faith.
B. Respondent did not submit a Response in
this proceeding.
Complainant is a French company created
in 1976 under the title of JPG, an acronym representing the business entity
Jean-Paul Guisset. Complainant sells office products and furniture by mail
order and has been expanding since its 1976 inception. Complainant’s operation
employs as many as 950 employees.
Complainant sells products from various
suppliers under their name (e.g., Microsoft, Clairefontain, La Couronne, etc.),
but also offers products under the JPG brand name as well (e.g., staplers,
paper, files, glue, etc.). Complainant offers a host of office supply products
under the JPG moniker and submits that the JPG mark has come to signify
Complainant’s goods and services in the office supply industry.
Complainant solicited orders by catalogue
beginning in 1976 and expanded its business to the Internet in 1996.
Complainant operates from the <jpg.fr> and <jpg.be> websites, with
“fr” and “be” denoting French and Belgian country codes.
Respondent registered the domain name in
issue on March 27, 2002. Complainant’s investigation indicates that
Respondent’s business name is “The Photographers Network tm.”
Paragraph 15(a) of the STOP 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.”
In view
of Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of the Complainant's undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the STOP Rules
and will draw such inferences as it considers appropriate pursuant to paragraph
14(b) of the STOP Rules.
Paragraph
4(a) of the STOP Policy requires that Complainant must prove each of the
following three elements to obtain an order that a domain name should be
transferred:
(1) the domain name is identical 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 or is being used in bad faith.
Due
to the common authority of the ICANN policy governing both the Uniform Domain
Name Dispute Resolution Policy (“UDRP”) and these STOP proceedings, the Panel
will exercise its discretion to rely on relevant UDRP precedent where
applicable.
Under
STOP proceedings, a STOP Complaint may only be filed when the domain name in
dispute is identical to a trademark or service mark for which a Complainant has
registered an Intellectual Property claim form. Therefore, every STOP proceeding necessarily involves a disputed
domain name that is identical to a trademark or service mark in which a
Complainant asserts rights. The
existence of the “.biz” generic top-level domain (“gTLD”) in the disputed
domain name is not a factor for purposes of determining that a disputed domain
name is not identical to the mark in which the Complainant asserts rights.
Complainant
asserts rights in the JPG mark stemming from longstanding and continuous use of
the mark beginning in 1976 in connection with its office supply business.
Complainant has operated under the JPG acronym since its creation. JPG
represents its formal “Jean-Paul Guisset” business name. Complainant also
produces its own line of office supplies offered under the JPG brand. The Panel
finds that Complainant has sufficiently demonstrated rights in the JPG mark. See
British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting
that the Policy “does not distinguish between registered and unregistered
trademarks and service marks in the context of abusive registration of domain
names” and applying the Policy to “unregistered trademarks and service marks”);
see also Great Plains Metromall,
LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (finding that the
Uniform Domain Name Dispute Resolution Policy does not require “that a
trademark be registered by a governmental authority for such rights to exist”);
see also Crazy Creek Prods., Inc. v. Siemen’s Bus. Servs., FA 102795
(Nat. Arb. Forum Feb. 12, 2002) (finding that the Complainant satisfied STOP
Policy ¶ 4(a)(i) by demonstrating its common law rights in the CRAZY CREEK
mark).
Respondent’s
<jpg.biz> domain name is identical to Complainant’s JPG mark and
business identity. The domain name registered by Respondent mirrors
Complainant’s trade name. In fact, Respondent’s second-level domain name fails
to deviate from Complainant’s JPG mark in any particularity. Precedent and practicality have determined
that the addition of a gTLD, such as “.biz,” is inconsequential when conducting
an identical analysis under STOP Policy ¶ 4(a)(i) and Respondent’s domain name
is identical to Complainant’s mark. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000)
(finding that the top level of the domain name such as “.net” or “.com” does
not affect the domain name for the purpose of determining whether it is
identical or confusingly similar); see also Princeton Linear Assoc., Inc. v.
Copland o/b/o LAN Solutions Inc. FA 102811 (Nat. Arb. Forum Feb. 8, 2001)
(finding that the <.biz> gTLD in the disputed domain name is not a factor
and hence to be ignored, in determining whether a disputed domain name is
identical to the mark in which Complainant asserts rights).
Accordingly,
the Panel finds that STOP Policy ¶ 4(a)(i) has been satisfied.
Respondent did not submit a Response in
this proceeding and has failed to refute Complainant’s allegations that
Respondent has no rights or legitimate interests in the disputed domain name.
Because Respondent failed to submit a Response, the Panel is permitted to make
all reasonable inferences in favor of Complainant. See Talk City, Inc.
v. Robertson, D2000-0009 (WIPO Feb. 29, 2000)
(“In the absence of a response, it is appropriate to accept as true all
allegations of the Complaint”); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000)
(finding it appropriate for the Panel to draw adverse inferences from
Respondent’s failure to reply to the Complaint).
Furthermore, Complainant’s Submission
effectively places the burden on Respondent to demonstrate its rights and
legitimate interests or to contest Complainant’s allegations. By not
responding, Respondent has shown no circumstance that could demonstrate
Respondent’s rights or interests in the domain name. See Do The Hustle, LLC
v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once
Complainant asserts that Respondent has no rights or legitimate interests in
respect of the domain, the burden shifts to Respondent to provide credible
evidence that substantiates its claim of rights and legitimate interests in the
domain name); see also Geocities
v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent
has no rights or legitimate interest in the domain name because Respondent
never submitted a response nor provided the Panel with evidence to suggest
otherwise).
Respondent has not set out a stated
purpose for the <jpg.biz> domain name and no evidence before the
Panel suggests that Respondent has made demonstrable preparations to use the
domain name in connection with any bona fide offering of goods or services
pursuant to STOP Policy ¶ 4(c)(ii). Because of Complainant’s credible
allegations, Respondent must show evidence that it registered <jpg.biz>
for a legitimate purpose. Respondent’s failure to support its registration
with evidence signifying rights or a legitimate interest in the disputed domain
name implies that Respondent has none. See Gene Logic Inc. v. Bock, FA
103042 (Nat. Arb. Forum Mar. 4, 2002) (finding that in order to show rights or
legitimate interests in the disputed domain name Respondent must establish with
valid evidence “a course of business under the name, or at least significant
preparation for use of the name prior to learning of the possibility of a
conflict” with an IP Claimant); see also Do The Hustle, LLC v. Tropic
Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that when Respondent declares
its intent to develop a website, “[UDRP Policy ¶] 4(c)(i) requires Respondent
to show 1) ‘demonstrable’ evidence of such preparations to use the domain name,
and 2) that such preparations were undertaken ‘before any notice to [Respondent]
of the dispute’”).
No evidence suggests that Respondent is
commonly known by the <jpg.biz> domain name pursuant to STOP
Policy ¶ 4(c)(iii) and no information indicates that Respondent holds a
trademark or service mark that is identical to the <jpg.biz> domain
name under STOP Policy ¶ 4(c)(i). Complaint alleges that Respondent is known as
“The Photographers Network tm” and this name has no apparent connection with a
JPG mark or any variation thereof. See Nat’l Acad. Of Recording Arts &
Sci Inc. v. Lsites, FA 103059 (Nat. Arb. Forum Feb. 11, 2002) (finding
that, because Respondent did not come forward with a Response, the Panel could
infer that it had no trademark or service marks identical to <grammy.biz>
and therefore had no rights or legitimate interests in the domain name); see
also Gallup Inc. v. Amish Country
Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent
does not have rights in a domain name when Respondent is not known by the
mark); see also Broadcom Corp. v.
Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no
rights or legitimate interests because Respondent is not commonly known by the
disputed domain name or using the domain name in connection with a legitimate
or fair use).
Accordingly, the Panel finds that
Respondent does not have any rights or legitimate interests in the <jpg.biz>
domain name and that STOP Policy ¶ 4(a)(ii) has been satisfied.
STOP Policy ¶ 4(b) presents a
non-exhaustive list of bad faith evidence and a broad range of circumstances
may be found to show bad faith even where not specifically listed in STOP
Policy. The Panel may take into consideration the totality of circumstances in
determining if Respondent registered or used the subject domain name in bad
faith. See Twentieth Century Fox
Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that
in determining if a domain name has been registered in bad faith, the Panel
must look at the “totality of circumstances”); see also Cellular One Group v. Brien, D2000-0028
(WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy
is not an exhaustive list of bad faith evidence).
Due to the nature of NeuLevel’s STOP IP
Claim registration procedure, the Panel finds that Respondent was aware of
Complainant’s preexisting rights in the JPG mark. Although NeuLevel’s procedure
does not evaluate the legitimacy of each IP claim, a rudimentary search by
Respondent would have yielded results that indicated Complainant’s preexisting
rights. Respondent’s registration of the disputed domain name, despite this
notice of another’s rights constitutes bad faith registration under Policy ¶
4(a)(iii). See Samsonite Corp. v.
Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that
evidence of bad faith includes actual or constructive knowledge of a commonly
known mark at the time of registration); see also Valspar
Sourcing, Inc. v. TIGRE, FA 112596 (Nat.
Arb. Forum June 4, 2002) (“Respondent was on notice of Complainant’s rights in
PAINT.BIZ when it registered the disputed domain name, because Respondent
received notice of Complainant’s IP Claim.
Respondent’s registration of the disputed domain name despite this
notice when Respondent had no right or legitimate interest in the domain name
is evidence of bad faith”).
The Panel finds that STOP Policy ¶
4(a)(iii) has been satisfied.
Having established all three elements
required under the STOP Policy, the Panel concludes that relief should be
hereby GRANTED.
Accordingly, it is Ordered that the <jpg.biz>
domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks
Johnson, Panelist
Dated: September 6, 2002.
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