Juno Online Services, Inc. v. Roberto Iza
Claim
Number: FA0403000245960
Complainant is Juno Online Services, Inc. (“Complainant”),
represented by James D. Nguyen, of Foley & Lardner LLP,
2029 Century Park East, 35th Floor, Los Angeles, CA 90067. Respondent is Roberto Iza (“Respondent”), 1096 Briar Way, Fort Lee, NJ 07024.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <my-juno.com>, registered with Melbourne
IT Ltd.
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 (the "Forum")
electronically on March 16, 2004; the Forum received a hard copy of the
Complaint on March 18, 2004.
On
March 17, 2004, Melbourne IT Ltd. confirmed by e-mail to the Forum that the
domain name <my-juno.com> is registered with Melbourne IT Ltd. and
that Respondent is the current registrant of the name. Melbourne IT Ltd. has
verified that Respondent is bound by the Melbourne IT Ltd. registration
agreement and has thereby agreed to resolve domain-name disputes brought by
third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution
Policy (the "Policy").
On
March 22, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
April 12, 2004 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent's registration as technical, administrative and billing
contacts, and to postmaster@my-juno.com by e-mail.
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
April 21, 2004, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the 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 for Uniform Domain Name Dispute Resolution Policy
(the "Rules") "to employ reasonably available means calculated
to achieve actual notice to Respondent."
Therefore, the Panel may issue its decision based on the documents
submitted and in accordance with the ICANN Policy, ICANN 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 <my-juno.com>
domain name is confusingly similar to Complainant’s JUNO mark.
2. Respondent does not have any rights or
legitimate interests in the <my-juno.com> domain name.
3. Respondent registered and used the <my-juno.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant
is engaged in the business of providing Internet access services, electronic
mail services and dissemination of advertising for others via an online
electronic communications network.
Complainant has done business under the name JUNO continuously since
1995 and holds several registrations for the JUNO mark with the U.S. Patent and
Trademark Office (“USPTO”), including Reg. Nos. 2,164,956 and 2,165,016 (both
were registered on June 16, 1998).
Respondent
registered the <my-juno.com> domain name on November 11,
2003. Respondent uses the domain name
in a credit card “phishing” scam, a new and increasingly common type of online
fraud. “Phishing” involves the use of
e-mails, pop-ups or other methods to trick Internet users into revealing credit
card numbers, passwords, social security numbers and other personal information
that may be used for fraudulent purposes.
Respondent used the “service@juno.com” email address to send the
following message to Internet users:
Dear Juno member,
We
recently attempted to bill your account but we seemed to receive an error when
charging your card. This can occur for
a variety of reasons, including card expiration, over-limit, suspicion of
fraud, or several other technical difficulties. Please visit the Juno Billing Center, by clicking the below
hyperlink, and update your information so this issue can be cleared up.
The e-mail was
designed to appear as if it originated from Complainant and it provided a link
to <my-juno.com/billing> where users were directed to provide their
credit card number, credit card personal identification number, social security
number, mother’s maiden name, and other personal information. Respondent’s <my-juno.com> domain
name resolves to a website that provides a hyperlink to the <my-juno.com/billing>
website, which is a replica of Complainant’s billing website.
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.
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 and
is being used in bad faith.
Complainant has
established rights in the JUNO mark through registration with the USPTO. See Men’s Wearhouse, Inc. v. Wick, FA
117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered
marks hold a presumption that they are inherently distinctive and have acquired
secondary meaning.”); see also Janus
Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding
that 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. Respondent has the burden of refuting this
assumption).
Respondent’s <my-juno.com>
domain name is confusingly similar to Complainant’s JUNO mark because the
domain name fully incorporates the mark and merely adds the generic term “my”
and a hyphen. The addition of the
generic word “my” and a hyphen is insufficient to distinguish the domain name
from Complainant’s mark. See Chernow Communications Inc. v. Kimball,
D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation
marks, such as hyphens, does not alter the fact that a name is identical to a mark");
see also Arthur Guinness Son &
Co. (Dublin) Ltd. v. Healy/BOSTH,
D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain
name in dispute contains the identical mark of Complainant combined with a
generic word or term); see also Infospace.com,
Inc. v. Delighters, Inc., D2000-0068 (WIPO May 1, 2000) (finding that the
domain name <myinfospace.com> is confusingly similar to Complainant’s
INFOSPACE mark).
Furthermore, the
addition of the generic top-level domain “.com” to the mark is irrelevant in
determining whether the <my-juno.com> domain name is confusingly
similar to Complainant’s mark. See Pomellato S.p.A v. Tonetti, D2000-0493
(WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s
mark because the generic top-level domain (gTLD) “.com” after the name
POMELLATO is not relevant); see also 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).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
failed to contest the allegations of the Complaint; therefore, the Panel presumes
that Respondent lacks rights and legitimate interests in the <my-juno.com>
domain name. See Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response,
Respondent has failed to invoke any circumstance which could demonstrate any
rights or legitimate interests in the domain name); see also Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to
respond can be construed as an admission that they have no legitimate interest
in the domain names).
Furthermore,
nothing in the record establishes that Respondent is commonly known by the <my-juno.com>
domain name. Moreover, Respondent
is not licensed or authorized to register or use domain names that incorporate
Complainant’s mark. Therefore, the
Panel concludes that Respondent lacks rights and legitimate interests in the
domain name pursuant to Policy ¶ 4(c)(ii).
See Tercent Inc. v. Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly known by’ the disputed domain
name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests
where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior
rights in the domain name precede Respondent’s registration; (3) Respondent is
not commonly known by the domain name in question).
In addition,
Respondent’s <my-juno.com> domain name is confusingly similar to
Complainant’s mark, redirects Internet users to a website that imitates
Complainant’s billing website, and is used to fraudulently acquire personal
information from Complainant’s clients.
Respondent’s use of the domain name does not constitute 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 Amer. Int’l Group, Inc. v. Busby d/b/a AIG Mergers and Acquisitions,
FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that as Respondent attempted
to pass itself off as Complainant online, through wholesale copying of
Complainant’s website, Respondent had no rights or legitimate interests in the
disputed domain name); see also
Vivendi Universal Games v. Ballard,
FA 146621 (Nat. Arb. Forum March 13, 2002) (stating that where Respondent
copied Complainant’s website in order to steal account information from
Complainant’s customers, that Respondent’s “exploitation of the goodwill and
consumer trust surrounding the BLIZZARD NORTH mark to aid in its illegal
activities is prima facie evidence of
a lack of rights and legitimate interests in the disputed domain name”).
The
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <my-juno.com>
domain name is confusingly similar to Complainant’s mark, redirects
Internet users to a website that imitates Complainant’s billing website, and is
used to fraudulently acquire personal information from Complainant’s
clients. Respondent’s use of the domain
name is evidence of bad faith registration and use pursuant to Policy ¶
4(a)(iii). See Monsanto Co.
v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that
Respondent's use of <monsantos.com> to misrepresent itself as Complainant
and to provide misleading information to the public supported a
finding of bad faith); see also Vivendi Universal Games v. Ballard, FA
146621 (Nat. Arb. Forum March 13, 2002) (finding that where Complainant’s mark
was appropriated at registration, and a copy of Complainant’s website was used
at the domain name in order to facilitate the interception of Complainant’s
customer’s account information, Respondent’s behavior evidenced bad faith use
and registration of the domain name).
Moreover,
Respondent presumably commercially benefits from using a domain name
confusingly similar to Complainant’s mark, which is evidence that Respondent
registered and used the domain name in bad faith pursuant to Policy ¶
4(b)(iv). See H-D Michigan, Inc. v.
Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the
disputed domain name was registered and used in bad faith pursuant to Policy ¶
4(b)(iv) through Respondent’s registration and use of the infringing domain
name to intentionally attempt to attract Internet users to its fraudulent
website by using Complainant’s famous marks and likeness); see also Kmart
v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if
Respondent profits from its diversionary use of Complainant's mark when the
domain name resolves to commercial websites and Respondent fails to contest the
Complaint, it may be concluded that Respondent is using the domain name in bad
faith pursuant to Policy ¶ 4(b)(iv)).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <my-juno.com> domain name be TRANSFERRED
from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated:
May 3, 2004
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