Aktieselskabet af 21. November 2001 A/S v. Jack Sun / DomainJet, Inc.
Claim Number: FA1201001423051
Complainant is Aktieselskabet af 21. November 2001 A/S (“Complainant”), represented by Louise Mühlbach of Bech-Bruun Law Firm, Denmark. Respondent is Jack Sun / DomainJet,Inc. (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <jackjones.us>, registered with Dynadot LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 6, 2012; the National Arbitration Forum received a hard copy of the Complaint on January 9, 2012«DateHardCopy».
On January 6, 2012, Dynadot LLC confirmed by e-mail to the National Arbitration Forum that the <jackjones.us> domain name is registered with Dynadot LLC and that Respondent is the current registrant of the names. Dynadot LLC has verified that Respondent is bound by the Dynadot LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On January 12, 2012, the Forum a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 1, 2012 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 3, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) as 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 Rules. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the 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:
1. Respondent’s <jackjones.us> domain name is identical to Complainant’s JACK JONES mark.
2. Respondent does not have any rights or legitimate interests in the <jackjones.us> domain name.
3. Respondent registered or used the <jackjones.us> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Aktieselskabet af 21. November 2001 A/S, is a manufacturer and retailer of clothing and accessories under its JACK JONES mark. Complainant owns a trademark registration for its JACK JONES mark with the European Union’s Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 2,834,208 registered December 1, 2004).
Respondent, Jack Sun / DomainJet, Inc., registered the <jackjones.us> domain name on May 24, 2010. The disputed domain name resolves to a website that contains hyperlinks to Complainant’s competitors in the clothing industry.
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 the 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:
(1) the domain name registered by Respondent is identical or confusingly similar 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.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
The Panel determines that Complainant owns rights in its JACK JONES mark under Policy ¶ 4(a)(i) by virtue of its trademark registration with the OHIM (Reg. No. 2,834,208 registered December 1, 2004), regardless of where Respondent resides or operates. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive."); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the UDRP does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
The Panel also concludes that Respondent’s <jackjones.us> domain name is identical to Complainant’s JACK JONES mark pursuant to Policy ¶ 4(a)(i) because the disputed domain name only removes the space and adds the country-code top-level domain (“ccTLD”) “.us.” See Basic Trademark S.A. v. Antares S.p.A, FA 1130680 (Nat. Arb. Forum Mar. 4, 2008) (“The <robedikappa.us> domain name is identical to the ROBE DI KAPPA mark. The only difference is the omission of the space between the words and the addition of the ccTLD “.us,” which does not significantly distinguish the domain name from the mark.”); see also Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (finding that since the addition of the country-code “.us” fails to add any distinguishing characteristic to the domain name, the <tropar.us> domain name is identical to the complainant’s TROPAR mark).
The Panel deems Policy ¶ 4(a)(i) satisfied.
Complainant has alleged that Respondent does not have any rights or legitimate interests in the <jackjones.us> domain name. The burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii) when the Complainant makes a prima facie case in support of its allegations. The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume Respondent does not have rights or legitimate interests in the disputed domain name. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). See Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”); see also Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the [UDRP].”).
There is no evidence in the record to conclude that Respondent owns any service marks or trademarks that reflect the <jackjones.us> domain name. Therefore the Panel finds that Respondent does not have rights and legitimate interests pursuant to Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002 (finding that there was no evidence that Respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.com> domain name); see also Pepsico, Inc. v. Becky, FA 117014 (Nat. Arb. Forum Sep. 3, 2002) (holding that because Respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
The Panel examined the record and also fails to find any evidence that Respondent is commonly known by the <jackjones.us> domain name. To the contrary, Complainant contends that Respondent is not licensed or otherwise permitted to use Complainant’s JACK JONES mark and the WHOIS information identifies “Jack Sun / DomainJet, Inc.” as the registrant of the domain name. Thus, the Panel holds that Respondent is not commonly known by the <jackjones.us> domain name pursuant to Policy ¶ 4(c)(iii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Respondent’s <jackjones.us> domain name resolves to a website that hosts hyperlinks resolving to Complainant’s competitors in the clothing industry. Complainant claims, and the Panel infers, that Respondent commercially benefits from these hyperlinks by receiving click-through fees. Therefore, the Panel concludes that Respondent makes neither a Policy ¶ 4(c)(ii) bona fide offering of goods or services nor a Policy ¶ 4(c)(iv) legitimate noncommercial or fair use of the <jackjones.us> domain name. See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under UDRP ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to UDRP ¶ 4(c)(iii)); see also Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute a bona fide offering of goods or services under [UDRP] ¶ 4(c)(i), or a legitimate noncommercial or fair use under [UDRP] ¶ 4(c)(iii).”).
The Panel deems Policy ¶ 4(a)(ii) satisfied.
The Panel is reminded that this proceeding is governed by the usTLD Dispute Resolution Policy. While the UDRP requires a complainant to demonstrate that the respondent registered and uses the disputed domain name in bad faith, the usTLD only requires Complainant to prove that the respondent registered or uses the disputed domain name in bad faith. See Educ. Testing Serv. v. Pitchumani, FA 267504 (Nat. Arb. Forum July 6, 2004) (“[U]nlike a proceeding governed by the UDRP, under the policy which governs the instant proceeding, the usTLD Dispute Resolution Policy, the element of “bad faith” may be satisfied through proof of either bad faith registration or use.”); see also Circuit City Stores, Inc. v. Leeds, FA 139662 (Nat. Arb. Forum Feb. 2, 2003) (“The Complaint addresses both registration and use in bad faith, using arguments that indicate a conjunctive “and” instead of the Policy’s disjunctive “or.” Under the usTLD Policy it is only necessary to illustrate and prove bad faith registration or use.”). The Panel will conduct its Policy ¶ 4(a)(iii) analysis accordingly.
Respondent uses the <jackjones.us> domain name to host hyperlinks that resolve to Complainant’s competitors in the clothing industry. As Respondent does not provide any evidence that it registered the disputed domain name for a different purpose, the Panel infers that Respondent intended to host competing hyperlinks at the time of Respondent’s registration of the domain name. The Panel presumes that Complainant’s business is disrupted by Respondent’s use of the disputed domain name as potential customers may be diverted from Complainant to Complainant’s competitors because of Respondent’s registration and use of the <jackjones.us> domain name. Consequently, the Panel finds that Respondent both registered and uses the <jackjones.us> domain name in bad faith under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under UDRP ¶ 4(b)(iii)); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to UDRP ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).
Complainant claims that Respondent commercially benefits from its use of the <jackjones.us> domain name by receiving click-through fees when Internet users click on one of the aforementioned hyperlinks. The Panel determines that Respondent registered the <jackjones.us> domain name because the disputed domain name is identical to Complainant’s mark, which increases the likelihood of creating confusion as to Complainant’s affiliation with the disputed domain name. Based on Respondent’s registration of the identical disputed domain name and Respondent’s use of the domain name to commercially benefit from competing hyperlinks, the Panel concludes that Respondent both registered and uses the <jackjones.us> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to [UDRP] ¶ 4(b)(iv).”); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
The Panel deems Policy ¶ 4(a)(iii) satisfied.
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <jackjones.us> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: February 15, 2012
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