national arbitration forum

 

DECISION

 

j2 Cloud Services, Inc. v. Jack Miller

Claim Number: FA1501001598217

PARTIES

Complainant is j2 Cloud Services, Inc. (“Complainant”), represented by Robert W. Zelnick of McDermott Will & Emery LLP, District of Columbia, USA.  Respondent is Jack Miller (“Respondent”), Gibraltar.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <jfax.org>, registered with Tucows Inc. (R11-LROR).

 

PANEL

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.

 

Anne M. Wallace, Q.C. as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on January 5, 2015; the National Arbitration Forum received payment on January 5, 2015.

 

On January 6, 2015, Tucows Inc. (R11-LROR) confirmed by e-mail to the National Arbitration Forum that the <jfax.org> domain name is registered with Tucows Inc. (R11-LROR) and that Respondent is the current registrant of the name.  Tucows Inc. (R11-LROR) has verified that Respondent is bound by the Tucows Inc. (R11-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 January 7, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 27, 2015 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@jfax.org.  Also on January 7, 2015, the Written Notice of the Complaint, notifying Respondent of the e-mail 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.

 

A timely Response was received and determined to be complete on January 27, 2015.

 

Complainant submitted an Additional Submission which was received in a compliant manner on January 31, 2015.

 

On February 5, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Anne M. Wallace, Q.C.  as Panelist.

 

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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant claims:

• Complainant uses JFAX to identify its telecommunication solutions services that are offered variously around the world. The mark’s use was global for a time, and now is predominately in the United Kingdom. The disputed domain name, <jfax.org>, is identical to the JFAX mark in that it only adds a gTLD.

 

• Respondent has no rights or legitimate interests in the <jfax.org> domain name. There is no indication Respondent has ever been commonly known by the name—his name being “Jack Miller.” Complainant has not afforded Respondent any license or authority to use the JFAX mark in Internet domain names.

 

• Respondent presents damning accusations about Complainant’s business through the <jfax.org> domain name’s website. Respondent’s freedom of speech cannot extend to using this domain name—which stands identical to Complainant’s trademark—to carry out such a mission.

 

• Respondent registered and is using the <jfax.org> domain name in bad faith. There is disruptive conduct on part of Respondent.  The use of the disputed domain name to promote a website that disparages Complainant’s operations is not protectable free speech when the forum for such speech is an identical Internet domain name.

 

B. Respondent

Respondent submits:

• The JFAX trademark registrations with the USPTO were all cancelled between 2004 and 2008, yet Complainant willfully withheld this information from the Panel. Complainant acknowledges JFAX has not been used in trade since 2000.

 

• Respondent’s use of the disputed domain name is protected by the First Amendment to the United States Constitution. Complainant is partaking in an endeavor of SLAPP litigation, seeking to quell otherwise lawful speech through threats of legal reprisal in hopes of convincing Respondent to abandon its free speech activities for threat of an ultimately unenforceable—though highly intimidating—legal claim.

 

• Complainant cannot show that Respondent acted in bad faith. The evidence available to Respondent illustrated that JFAX has been a long-forgotten term that was only a former trademark. Respondent had no reason to know that there could remain any enforceable trademark interest in a mark that had been cancelled as far back as 2008, and which had not been used extensively since the turn of the millennium. Respondent derives no revenue from this domain name, does not use it for a competitive advantage, is not attempting to confuse Internet users as to an association between the domain name and Complainant, and Respondent is not a competitor of Complainant. There is a disclaimer on every single page of the domain name’s website indicating that Complainant is not associated with the domain name’s content.

 

C. Additional Submissions

Complainant’s Additional Submission

Complainant claims:

·      JFAX is still used in some countries even if not protected by USPTO registrations. Complainant does business through <jfax.com>. The JFAX remains in use in the United Kingdom and thus the rights in this mark are not in fact extinguished.

 

·      Respondent’s disclaimer is not sufficient to give consumers notice and thus bad faith remains prevalent. Respondent’s website does not take the form of the ordinary criticism website but instead uses the disputed domain name’s content in a manner that might deceive Internet users into believing they are viewing legitimate content.

 

FINDINGS

1.    Complainant has failed to provide evidence to establish, on a balance of probabilities, that Complainant has rights in a mark that is identical to or confusingly similar to the disputed domain name.

2.    In light of this finding, it is not necessary for the Panel to consider the other elements of the complaint. 

 

DISCUSSION

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."

 

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.

 

Identical and/or Confusingly Similar

To be successful under this element, Complainant must establish it has rights in the JFAX mark. On the evidence before the Panel, Complainant has failed to establish such rights. In support of Complainant’s contention of rights, Complainant provided copies of USPTO trademark registrations for the JFAX mark, but conveniently withheld the fact those registrations were all cancelled between 2004 and 2008. Complainant cannot rely on cancelled trademark registrations as evidence of rights in the JFAX mark.

 

Complainant says it rebranded from JFAX to J2® in the year 2000 but then says it continues to use the JFAX mark in commerce in the United Kingdom. As evidence of this use, Complainant submits one item only—a screen shot of one web page which when accessed does not provide any actual link to the product advertised. Complainant provides no cogent evidence to describe the goods and services it currently or in the recent past has provided using the JFAX mark. There is no evidence before the Panel with respect to sales, expenditures or advertising connected to the JFAX mark. Complainant’s evidence about its business relates to the EFAX® and J2® marks, not the JFAX mark. There is simply no cogent evidence to show Complainant has been using the JFAX mark in commerce at any time in recent history.

 

In light of the foregoing, Complainant has failed to establish registered or common law rights in the JFAX mark — trademark registrations for years past do not in themselves show trademark rights in the absence of continuous use. See, e.g., Mega Shoes, Inc. v. Ostrick, FA 1362894 (Nat. Arb. Forum Feb. 1, 2011) (finding the complainant’s unsworn assertion that it has been using the MEGA SHOES mark since 1994 failed to establish the MEGA SHOES mark had acquired secondary meaning where there was very minimal evidence in the record to support this claim).

 

Rights or Legitimate Interests and Registration and Use in Bad Faith

 

In light of the finding with respect to the first element, the Panel declines to analyze these elements. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).

 

DECISION

Complainant having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is Ordered that the <jfax.org> domain name REMAIN WITH the Respondent.

 

 

Anne M. Wallace, Q.C. Panelist

Dated:  February 6, 2015