Jane Peterer Music Corporation v. Martin
Reyes
Claim Number: FA0205000114359
PARTIES
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.
A.
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.
B.
Respondent
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).
DECISION
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.
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