Joint Juice, Inc. v. C P Ng
Claim Number: FA1009001346195
Complainant is Joint Juice, Inc. ("Complainant"), represented by Elizabeth E. Powers, California, USA. Respondent is C P Ng ("Respondent"), Malaysia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <jointjuice.org>, registered with eNom, Inc. (R39-LROR).
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 14, 2010; the National Arbitration Forum received payment on September 14, 2010.
On September 14, 2010, eNom, Inc. (R39-LROR) confirmed by e-mail to the National Arbitration Forum that the <jointjuice.org> domain name is registered with eNom, Inc. (R39-LROR) and that Respondent is the current registrant of the names. eNom, Inc. (R39-LROR) has verified that Respondent is bound by the eNom, Inc. (R39-LROR) registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 15, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 5, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@jointjuice.org. Also on September 15, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 20, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant has trademark registrations for its JOINT JUICE mark with the United States Patent and Trademark Office (“USPTO”) (including Reg. No. 2,625,534, issued September 24, 2002) in connection with its glucosamine containing beverage and nutritional supplement products.
Respondent registered the disputed domain name on August 30, 2010.
The disputed domain name resolves to a website displaying a negative review of Complainant’s products and links to websites featuring products that compete with the business of Complainant.
Respondent’s <jointjuice.org> domain name is substantively identical to Complainant’s JOINT JUICE mark.
Respondent does not have any rights to or legitimate interests in the <jointjuice.org> domain name.
Respondent registered and uses the <jointjuice.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is substantively identical similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
Paragraph 15(a) of the 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 Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also 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.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant’s registration of its JOINT JUICE trademark with the USPTO is sufficient evidence of Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i), even where Respondent resides or operates in another jurisdiction. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007):
As … [complainant’s]… mark is registered with the USPTO, … complainant has met the requirements of Policy ¶ 4(a)(i).
See also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether a complainant has registered its trademark in the country in which a respondent resides, only that it can establish rights in the mark in some jurisdiction).
Respondent’s <jointjuice.org> domain name is substantively identical to Complainant’s JOINT JUICE trademark. The domain name merely eliminates the space between the terms in Complainant’s mark and adds the generic top-level domain (“gTLD”) “.org.” These minor alterations do nothing to distinguish the disputed domain name from Complainant’s mark. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding the domain name <hannoverre.com> to be identical to the mark HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from a complainant’s mark under Policy ¶ 4(a)(i)).
Therefore, the Panel finds that Respondent’s <jointjuice.org> domain name is identical to Complainant’s JOINT JUICE mark under Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights and legitimate interests in the disputed domain name. Complainant must first make out a prima facie case in support of its allegations on this point. Then the burden shifts to Respondent to prove that it has rights to or legitimate interests in the disputed domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), finding that:
complainant must first make a prima facie case that respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.
Complainant has established the requisite prima facie case under this head of the Complaint, and the burden has therefore shifted to Respondent. Respondent has failed to provide a Response to these proceedings, thereby allowing the Panel to infer that Complainant’s allegations are true. See also Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000):
Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.
Nonetheless, we will examine the record before us, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name.
We begin by observing that Complainant alleges, and Respondent does not deny, that Respondent’s domain name Respondent’s resolving website contains links to the websites of Complainant’s business competitors. In the circumstances here presented, we are comfortable in presuming that Respondent receives revenues in the form of click-through or similar fees for the visits of Internet users to the websites resolving from these links. Respondent’s use of the disputed domain name in the manner alleged is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that a respondent was not using the <tesco-finance.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by maintaining a web page with misleading links to a complainant’s competitors in the financial services industry); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (holding that using a contested domain name to earn click-through fees via sponsored links to a complainant’s commercial competitors does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
We also note that Complainant asserts, without objection from Respondent, that the disputed domain name resolves to a website displaying a negative review of Complainant’s products. While criticism of Complainant’s products may be protected by Respondent’s right of free speech, that right does not extend to the use of a domain name identical to complainant’s trademark to accomplish its critical purpose. Therefore, we conclude that Respondent’s use of the contested domain name to operate a complaint site is evidence of Respondent’s lack of rights to or legitimate interests in the disputed domain under Policy ¶ 4(a)(ii). See E. & J. Gallo Winery v. Hanna Law Firm, D2000-0615 (WIPO Aug. 3, 2000) (finding that establishing a legitimate free speech/complaint site does not give rights to use a famous mark in its entirety); see also Weekley Homes, L.P. v. Fix My House Or Else?, FA 96609 (Nat. Arb. Forum Apr. 18, 2001) (finding that establishment of a website containing criticism is not a legitimate use of the <davidweekleyhome.com> domain name because the disputed domain name is confusingly similar to a complainant's DAVID WEEKLEY HOMES mark).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s domain name features links that divert Internet users to the websites of Complainant’s commercial competitors. This constitutes disruption of Complainant’s business and is evidence of bad faith registration and use of the contested domain name pursuant to Policy ¶ 4(b)(iii). See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that a respondent registered and used a disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because that respondent used the domain to advertise goods and services of a complainant’s competitors, thereby disrupting that complainant’s business); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that a respondent registered and used the domain name <eebay.com> in bad faith where that respondent used the domain name to promote competing auction sites).
Further, Respondent uses the <jointjuice.org> domain name to attract Internet users to its website by using a domain name that is substantively identical to Complainant’s JOINT JUICE trademark. Respondent evidently uses the disputed domain name for commercial gain by receiving advertising revenue from Complainant’s competitors whose website links are featured on Respondent’s website. Respondent has thus demonstrated bad faith under Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that a respondent engaged in bad faith registration and use of a domain name that was confusingly similar to a complainant’s mark by employing it to offer links to third-party websites featuring services similar to those offered by that complainant); see also Maricopa Cmty. Coll. Dist. v. College.com, LLC, FA 536190 (Nat. Arb. Forum Sept. 22, 2005):
The Panel infers that Respondent receives click-through fees for diverting Internet users to a competing website. Because Respondent’s domain name is identical to Complainant’s … mark, Internet users accessing Respondent’s domain name may become confused as to Complainant’s affiliation with the resulting website. Thus, Respondent’s use of the <phoenixcollege.com> domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
Finally, Respondent’s website contains negative information about Complainant’s products. Respondent’s registration and use of the <jointjuice.org> domain name is evidence of Respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(a)(iii). See Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (finding that a respondent registered the <kwasizabantu.com>, <kwasizabantu.org>, and <kwasizabantu.net> domain names in bad faith where that respondent published negative comments regarding a complainant’s organization on the resolving website); see also Diners Club Int’l, Ltd. v. Infotechnics Ltd., FA 169085 (Nat. Arb. Forum Aug. 20, 2003):
Respondent’s registration and use of a domain name nearly identical to Complainant’s mark to criticize Complainant’s business practices is evidence of registration and use of the … domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <jointjuice.org> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: November 3, 2010
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