Jane Peterer Music Corporation v. Martin Reyes
Claim Number: FA0205000114359
Complainant is Jane Peterer Music Corporation, Burlington, VT (“Complainant”) represented by Thomas G. West. Respondent is Martin Reyes, Austin, TX (“Respondent”).
The domain name at issue is <jpmc.biz>, registered with Domain Discover.
The undersigned 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.
Tyrus R. Atkinson, Jr., 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 May 20, 2002; the Forum received a hard copy of the Complaint on May 23, 2002.
On June 27, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 17, 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”).
A timely Response was received and determined to be complete on July 15, 2002.
On August 1, 2002, pursuant to STOP Rule 6(b), the Forum appointed Tyrus R. Atkinson, Jr., as the single Panelist.
Transfer of the domain name from Respondent to Complainant.
Complainant is Jane Peterer Music Corporation located in Burlington, Vermont.
Complainant has used the mark JPMC since early 1996.
Complainant acquired the domain name, <jpmc.com>, in May of 1996, and has been using it as one of its principal marketing and sales tools for books, music, publishing, distribution and sound clips.
Complainant filed an application with the United States Patent and Trademark Office for the mark, JPMC, on January 14, 1997.
Respondent is an agent of J.P. Morgan Chase,
Australia. J.P. MorganChase Australia is a subsidiary or branch of the recently created J.P. MorganChase and Co., a U.S. based corporation. It is Complainant’s belief that J.P. MorganChase and Co. is attempting to take possession of the domain name <jpmc.biz> by pursuing a backdoor route, cognizant of the fact that it would have no chance of success in the country of its legal domicile.
In the past two years, J.P. MorganChase and Co. has attempted several times to acquire the domain name, jpmc.com by bombing it with email “spam.”
Complainant believes that J.P. MorganChase and Co. would like to acquire <jpmc.biz> speculatively as an asset in case it creates cross company products.
The use of <jpmc.biz> by J.P. MorganChase and Co. would compromise the business of Complainant.
Respondent is an applications director residing in Texas. He is a private citizen with no relationship with the J.P. MorganChase and Co. organization.
Respondent is not a competitor of Complainant.
Respondent registered <jpmc.biz> in good faith, and has paid registrations fees giving Respondent ownership and interest in the domain name.
Respondent does not own the trademark for JPMC. However, there is no reason and no law that says a person cannot register an available domain name in good faith. Respondent has never attempted to profit from his ownership of <jpmc.biz>, and the domain name is currently parked.
Complainant claims that if <jpmc.biz> were being used by J.P. MorganChase and Co., it would compromise the business of Complainant. However, the domain name is not owned by J.P. MorganChase and Co. It is owned by a private citizen with no relationship with J.P. MorganChase and Co.
Complainant proves no bad faith on the part of the Respondent. All allegations of bad faith are addressed to the actions of J.P. MorganChase and Co., not to Respondent.
Complainant has committed Reverse Domain Name Hijacking.
1. Complainant is a corporation located in Vermont that is engaged in the business of books, music publishing, distribution and sound clips. The exact nature of the business is not explained.
2. Complainant has used the letters, JPMC, to identify its products since 1996.
3. Complainant has operated the domain name, <JPMC.COM> since May 1996 in the marketing and sales of its products.
4. Entities named “JPMC Books-JPMC Music-JPMC Distribution, ETC” of “580 East 76th Street, Suite 26H, New York, Ny” filed an Application with the United States Patent and Trademark Office for the mark, JPMC, bearing Serial Number 75/134,599, in 1997. It is inferred for the purposes of this proceeding that Complainant is the beneficiary of this Application.
5. The mark in which Complainant contends that it has rights is identical to the domain name at issue.
6. Complainant has rights in JPMC.
7. Respondent has no rights or interests in JMPC.
8. Complainant fails to prove bad faith registration or use on the part of Respondent.
9. Complainant has not committed Reverse Domain Name Hijacking.
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.”
Paragraph 4(a) of the STOP Policy requires that the 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 the Complainant has rights; and
(2) the 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 the 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 (IP) 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.
A Complainant has a right to challenge a domain name which exactly matches a trade or service mark string in which Complainant has rights. see Start-up Trademark Opposition Policy, ¶1, 4. In STOP proceedings, the generic top-level domain (gTLDs) .biz is irrelevant when determining whether a domain name and mark are identical, just as gTLDs such as “.com” and “.net” are disregarded in UDRP cases. See Princeton Linear Assoc., Inc. v. Copland o/h/o LAN Solutions, Inc., FA102811 (Nat. Arb. Forum Feb. 8, 2002). Complainant’s mark, JPMC, is identical to <JPMC.BIZ>.
The next question is whether Complainant has rights in the mark.
Complainant has shown no registered trade or service mark for JPMC. Complainant supplies a trademark application for JPMC, filed in 1997. Complainant seems to believe that the Application gives it rights in the mark. That alone is insufficient.
The case of PRGRS, Inc. v. Pak, D2002-0077 (WIPO Apr. 24, 2002) stated the principle as follows: “The Complainant apparently assumes that filing a service mark application for “PRG Schultz” gives it rights in the mark. The Panel knows of no authority supporting this position and the Complainant does not supply any. Contrary to what Complainant is proposing, the Panel finds the broad consensus under the Policy is that a trademark application alone is not sufficient evidence of mark rights in a disputed domain name.”
The Complainant may establish rights in its mark at common law. See Crazy Creek Prods, Inc. v. Siemen’s Bus. Servs., FA 102795 (Nat. Arb. Forum Feb. 12, 2002). Common law rights come into existence when a party can establish goodwill or reputation in and to a name. see New York Stock Exchange v. Lemmel, DBIZ2001-00044 (WIPO Mar. 26, 2002). Common law rights can be proved by extensive and longstanding use of a mark, as well as advertising efforts and expenditures made in promotion of the mark. see Milbank, Tweed, Hadley & McCloy, LLP v. Zissau, D2000-0894 (WIPO Sept. 13, 2001).
Complainant contends that it has used the mark, JPMC, since 1996 and operates a web site at <JPMC.COM> that has been in operation since 1996. These allegations are undisputed by Respondent. The fact that a Complainant was found to have used a mark in commerce, established an Internet presence through the mark, and filed an Application for a trademark, was sufficient to show rights in the Complainant in the Crazy Creek Prods, Inc v. Siemen’s Bus. Serv., case. The facts of this case are weaker in than those presented in the Crazy Creek case in that the Complainant did not supply the concrete evidence of use customary presented. see PRL USA Holdings, Inc. v. Search Hound, DBIZ2001-00010 (WIPO Feb. 14, 2002). However, the Panel finds that the undisputed but unexplained use of the mark, coupled with the Internet presence at <JPMC.COM>, together with an Application for a trademark for JPMC, makes a case of rights in JPMC for Complainant. see also Ontrack Data Int’l, Inc. v. Drewett, FA 99767 (Nat. Arb. Forum Nov. 2, 2001). Complainant prevails on this issue.
The Complainant must prove that Respondent has no rights or legitimate interests in respect of the domain name. Policy, ¶4. All of Complainant’s allegations regarding this issue are directed to the alleged lack of rights and interests in the entity, J. P. MorganChase and Co. J. P. MorganChase and Co. is not a party to this proceeding. Complainant contends that Respondent is an agent of J. P. MorganChase and Co. but Complainant presents no proof to support that allegation. Respondent strongly denies any connection with J. P. MorganChase and Co. Thus, the allegations regarding whether J. P. MorganChase and Co. has rights or interests are entirely immaterial to this proceeding.
However, Respondent admits that he holds no trademark registrations for the mark, JMPC. Respondent admits that he has never been known as JMPC and admits further that he has made no preparations for the use of the domain name, <jpmc.biz>.
Therefore, Respondent has conceded that he has no rights or interests under the provisions of Policy ¶ 4(c).
Complainant prevails on this point.
The burden is upon Complainant to present evidence of registration or use by Respondent in bad faith. Bad faith can be shown by any of the methods set out in Policy ¶ 4 (b) or by any other convincing method not set out in the Policy, but sufficient to prove bad faith under the facts and circumstances of the particular case.
Complainant contends that bad faith has been shown on the part of J. P. MorganChase and Co. Complainant accuses J. P. MorganChase and Co. with attempting to acquire the domain name, <JPMC.COM> “by bombing it with email ‘spam.’” “Mail bombing”, Complainant continutes, “is illegal, disruptive behavior. Its purpose it to deny service of the jpmc.com mail server. It shows clearly, in our opinion, the bad-faith motives of JP MorganChase and Co.” Complainant goes on to say that it believes that J.P. MorganChase and Co. would like to acquire <JPMC.BIZ> “speculatively as an asset in case they do create cross-company products. At present there is no evidence of any such approach to marketing or sales. Nor is there any history of such an approach.” “However, the use of jpmc.biz by JP MorganChase and Co. would compromise the business of Jane Peterer Music Corporation.” Whether any of these circumstances, if proved, would show bad faith on the part of J. P. MorganChase and Co. is irrelevant to this case. Complainant contends that Respondent is agent of J. P. MorganChase and Co. and contends, in effect, that J. P. MorganChase and Co. is the true party in interest in this domain name dispute. Respondent is simply a cover for the activities of J. P. MorganChase and Co, Complainant contends. This Panel will not accept a proposition of this gravity without evidence in support of the agency. This Panel will not consider such a proposition without the existence of concrete evidence to prove the allegation nor can the Panel entertain such a proposition without proof. See PRL USA Holdings, Inc. v. Search Hound, DBIZ2001-00010 (WIPO Feb. 14, 2002); Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000).
The reasoning of these cases requires documents or third party affidavits to prove Complainant’s allegations. Complainant submitted nothing of the sort.
Complainant makes no contentions nor advances any proof that the Respondent, Martin Reyes, has committed any act of bad faith in reference to the domain name, <JPMC.BIZ> that he registered and owns. Complainant does not address the good faith or bad faith of Respondent, Martin Reyes, at all.
Where Complainant fails to allege and prove bad faith registration or use on the part of the Respondent, the Panel is required to dismiss the Complaint and find for the Respondent. see Policy ¶4 (a).
Reverse Domain Name Hijacking.
Reverse Domain Name Hijacking is defined under the Rules as using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name. Respondent demands a finding of Reverse Domain Name Hijacking in this case. The unusual allegations in the Complaint and a complete failure to present proof of the allegations presents a situation which makes a consideration of bad faith necessary. However, on balance, the Panel is of the opinion that Complainant truly believes that the allegations are true. Had the Complainant, acting without legal representation, had a better understanding of the Policy and Rules, it is possible that a case could have been made against Respondent. Both the Complaint and Response are inadequate. Neither the Complaint nor Response properly confronts the issues in a manner consistent with the Policy and Rules. The Panel is of the opinion that the failures of the Complaint are more consistent with a lack of understanding of the Policy and Rules than an illicit purpose. The Panel does not find bad faith in this domain name dispute. The Panel makes this statement as required by Rule 15(d).
The decision of the Panel is that the Complaint be DISMISSED and the demand to transfer the domain name, <JPMC.BIZ>, from Respondent, Martin Reyes, to Complainant, Jane Peterer Music Corporation, is DENIED. Subsequent challenges SHALL be permitted.
Tyrus R. Atkinson, Jr., Panelist
Dated: August 15, 2002.
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page