The Association of Junior Leagues International Inc. v. This Domain Name My Be For Sale c/o Legend .name
Claim Number: FA0611000857581
Complainant is The Association of Junior Leagues International Inc. (“Complainant”), represented by Bruce A. McDonald, of Schnader Harrison Segal & Lewis LLP, 1600 Market Street, Suite 3600, Philadelphia, PA 19103-7213. Respondent is This Domain Name My Be For Sale c/o Legend .name (“Respondent”), 81, Blk B, Tmn Muda, Kuala Lumpur, KL 56100, MY.
The domain name at issue is <jl.org>, registered with eNom, Inc.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 30, 2006; the National Arbitration Forum received a hard copy of the Complaint on November 30, 2006.
On November 30, 2006, eNom, Inc confirmed by e-mail to the National Arbitration Forum that the <jl.org> domain name is registered with eNom, Inc and that the Respondent is the current registrant of the name. eNom, Inc has verified that Respondent is bound by the eNom, Inc 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 December 1, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 21, 2006 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 email@example.com by e-mail.
A timely Response was received in electronic copy on December 11, 2006 but determined to be deficient according to Supplemental Rule 7, as it was not received in hard copy.
On December 15, 2006, the National Arbitration Forum received an Additional Submission from Complainant and determined it to be timely and complete pursuant to Supplemental Rule 7.
On December 21, 2006, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <jl.org> domain name is confusingly similar to Complainant’s registered JL mark.
2. Respondent does not have any rights or legitimate interests in the <jl.org> domain name.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent’s Response was defective in that no hard copy was furnished and the Response did not contain any certification that the Response was, to the best knowledge of Respondent, complete and accurate. Nonetheless, the Response was considered for all purposes in this proceeding.
1. Respondent claims that the domain name at issue is not identical or confusingly similar to Complainant’s mark because there are many organizations, concepts and famous persons with the initials “JL.”
2. Respondent claims that he has rights in the domain name at issue by virtue of purchase “for thousands” one month prior to this proceeding.
3. Respondent states that he has not acted in bad faith in registering or trying to sell the domain name at issue to Complainant.
C. Additional Submissions: Each of the parties filed Additional Submissions which were considered by the Panel for all purposes.
Complainant is a non-profit organization with headquarters in New York City whose predecessors first used the service mark “JL” in 1901. Complainant holds U.S. Reg. No. 2,821,004 for “JL”, registered March 9, 2004. Complainant uses its “JL” service mark in multiple contexts, most often appearing in the form of a design logo. Complainant’s mark is used by most or all of the member leagues that comprise the association. In addition, many or most of Complainant’s member leagues use the acronym “JL” to signify “Junior League” in their website addresses. Complainant and its “JL” service mark are well known and “famous.” Further, Complainant denies that Respondent has any rights or legitimate interests in the domain name at issue and that use of the site for “click through” revenues is not a legitimate interest, at least in this case. Finally, since Respondent tried to contact Complainant to sell the domain name at issue, it is clear that Respondent was aware of Complainant’s famous mark and is using it now to just park the name for sale.
Respondent’s arguments that the JL mark is generic and descriptive of many things “JL” would be of more weight had the USPTO not seen fit to register the mark after more than a century of use and had not Respondent set about to sell the mark to Complainant within one month of registration.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
Even though the WHOIS information for the domain name at issue lists the registration date for the domain name at issue as April 19, 1997, Respondent claims that it obtained the disputed domain name registration only a month ago. In Christensen Firm v. Chameleon Data Corp., 2006 WL 3158246 (W.D. Wash. 2006), an Anti-Cybersquatting Protection Act (“ACPA”) case, the court held that under the ACPA, each act of transfer was a new “registration” for the purposes of ACPA analysis. Therefore, one only needs to trace the registration date back to the most recent transfer instead of the original registration. Even though this is not an ACPA case, it is persuasive evidence that the registration date in this case is in 2006, when Respondent alleges it obtained the <jl.org> domain name registration, instead of 1997 as listed in the WHOIS information.
Complainant has registered the JL mark with the United States Patent and Trademark Office (Reg. No. 2,821,004 issued March 9, 2004) and, through its predecessors in interest, has continuously used the JL mark in connection with local community associations since 1901. Complainant’s valid trademark registration for the JL mark predates Respondent’s registration of the <jl.org> domain name and, as a result, Complainant has established rights in the JL mark pursuant to Policy ¶ 4(a)(i). See Miller Prods. Co. v. Grozinger, FA 823231 (Nat. Arb. Forum Dec. 5, 2006) (“Rights in a trademark can be shown in several ways, including by way of a U.S. trademark registration. A trademark registration constitutes prima facie evidence of its ownership and validity of the mark.”); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Complainant asserts that it has been continuously using the JL mark in connection with local community associations working toward bettering the community since 1901. As a result of its continuous use of the JL mark for over one hundred years, the JL mark has acquired secondary meaning and Complainant has established common law rights in the mark pursuant to Policy ¶ 4(a)(i). See Ass’n of Tex. Prof’l Educators, Inc. v. Salvia Corp., FA 685104 (Nat. Arb. Forum May 31, 2006) (holding that the complainant had demonstrated common law rights in the ATPE mark through continuous use of the mark in connection with educational services for over twenty-five years); see also Quality Custom Cabinetry, Inc. v. Cabinet Wholesalers, Inc., FA 115349 (Nat. Arb. Forum Sept. 7, 2002) (finding that the complainant established common law rights in the mark through continuous use of the mark since 1995 for the purpose of Policy ¶ 4(a)(i)).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant contends that Respondent is not commonly known by the disputed domain name, because Respondent registered the <jl.org> domain name as “This Domain Name My Be For Sale c/o Legend .name,” and there is no other evidence in the record suggesting that Respondent is commonly known by the disputed domain name. Complainant also asserts that it has not authorized or licensed Respondent to register or use a domain name incorporating its JL mark. The Panel finds that Respondent is not commonly known by the <jl.org> domain name, and that Respondent does not have rights or legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii). See Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected); see also The 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).
Moreover, <jl.org> resolves to a commercial web directory displaying links to various content unrelated to Complainant. Respondent’s use of the domain name for commercial gain, presumably by earning click-through fees for diverting Internet users seeking information on Complainant to other websites, is not 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). See WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy); see also Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds that Respondent is using the <jl.org> domain name to maintain a commercial web directory with links to various content unrelated to Complainant. Respondent is receiving click-through fees for each consumer it diverts to other websites and Respondent’s registration and use of the disputed domain name in order to profit from the goodwill associated with the mark indicates bad faith pursuant to Policy ¶ 4(b)(iv). See State Fair of Tex. v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the respondent registered the domain name <bigtex.net> to infringe on the complainant’s goodwill and attract Internet users to the respondent’s website); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <jl.org> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: January 4, 2007
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