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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