LongTail Ad Solutions, Inc. v. Thinesh Kumar
Claim Number: FA1501001599169
Complainant is LongTail Ad Solutions, Inc. (“Complainant”), represented by Adam E. Schwartz of Schwartz Intellectual Property Law, PLLC, New York, USA. Respondent is Thinesh Kumar (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <jwplayer.co> and <jwsolution.net> ('the Domain Names'), registered with 1&1 Internet AG.
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 Panellist in this proceeding.
<<Dawn Osborne>> as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 9, 2015; the National Arbitration Forum received payment on January 9, 2015.
On January 14, 2015, 1&1 Internet AG confirmed by e-mail to the National Arbitration Forum that the <jwplayer.co> and <jwsolution.net> domain names are registered with 1&1 Internet AG and that Respondent is the current registrant of the names. 1&1 Internet AG has verified that Respondent is bound by the 1&1 Internet AG 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 14, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 3, 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@jwplayer.co, postmaster@jwsolution.net. Also on January 14, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 9, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Dawn Osborne 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. 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant's contentions can be summarised as follows:
Complainant is the provider of JW PLAYER, popular Internet software which powers the video capabilities of millions of websites worldwide. The Complainant owns a US registered trade mark for JW PLAYER filed May 26, 2011.
Common law rights are also sufficient basis for a UDRP claim. Complainant's JW mark is inherently distinctive. The Complainant’s JW PLAYER and JW marks have been used since 2004. They are famous among web developers. This fact is acknowledged by the Respondent on its web site located at jwplayer.co which states
'JW Player wordpress. It has been installed in millions of web sites and more web sites are using this video player because it is easy to use and an open source application.'
and
'JW Player is one of the world's popular open-source video players available. JW Player is a product of longtail videos and has been installed in millions of web sites created daily.'
The Domain Names are identical or similar to the Complainant's marks. They directly incorporate those marks and are used in connection with web sites promoting adaptations of the Complainant's software and the Respondent’s commercial services.
A domain name is considered identical where a Respondent merely adds a TLD to the Complainant's mark. The jwplayer.co domain name is thus identical to the Complainant's JW PLAYER registered mark.
The jwsolution.net domain name is confusingly similar to the Complainant's marks. The Complainant's common law trade mark JW is arbitrary and highly descriptive. JW is the dominant element of the jwsolution.net domain name as the first term of a mark is often given greater weight by consumers and the term ‘solution’ is descriptive.
While ‘solution’ is descriptive it appears to have been chosen to strengthen the association with the Complainant as the Complainant’s corporate name is Longtail Ad Solutions, Inc. and it frequently refers to its products as "solutions".
Respondent registered the jwplayer.co domain on June 26, 2013 and jwsolution.net domain on February 13, 2014 after first use and registration of the Complainant's marks.
The Respondent's prior knowledge of the Complainant’s marks prevents him from claiming rights or legitimate interests in the Domain Names.
Respondent is using the Domain Names in connection with the distribution of unlicensed adaptations of Complainant's software marketed under infringing marks in violation of Complainant’s licences. The Domain Names also offer commercial services in connection with these adaptations, itself a prohibited activity under the Complainant’s licenses. Since the Domain Names are being used for financial gain in breach of the Complainant’s intellectual property rights Respondent cannot claim any right or legitimate interest in the Domain Names, nor can he claim fair use.
Respondent is clearly using the Domain Names in bad faith in order to create an association with the Complainant. As such it is using the Domain Names to attract for commercial gain Internet users to the Respondent’s web site by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation or endorsement of the web site or of a product or service thereon so as to fall within section 4(b)(iv) of the Policy. The Respondent's activities are for commercial gain as it offers paid support services for its adaptations.
Respondent has sought to sell the Domain Names to the Complainant for US$15,000, consideration far in excess of its costs. As such it has registered the name primarily for the purpose of selling, renting or transferring the Domain Names to the Complainant who is the owner of the relevant trade or service mark for valuable consideration in excess of Respondent's documented out of pocket costs related to the Domain Names. so as to fall within s 4 (b)(i) of the Policy. Respondent asserted his out of pocket expenses in relation to the Domain Names were US$20,500 in correspondence.
Respondent's registration of domain names containing a famous mark in violation of its registrar's terms of service constitutes bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant owns a US registered trade mark for JW PLAYER for software filed May 26, 2011 with first use recorded as 2004.
The Respondent's web sites record that the Complainant’s product the JW Player has been used on millions of web sites worldwide.
Respondent registered the jwplayer.co domain on June 26, 2013 and jwsolution.net domain on February 13, 2014 after first use and registration of the Complainant's marks.
The Respondent's activities are for commercial gain as it offers paid support services for its unauthorised adaptations of the Complainant's software.
Respondent has sought to sell the Domain Names to the Complainant for US$15,000 asserting its expenses are US$20,500.
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.
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.”).
The jwplayer.co domain name consists of a name identical to the Complainant's registered mark JWPLAYER plus the ccTLD designation .co for Columbia. Neither the Complainant nor the Respondent appear to have any connection with the country Columbia, although the .co domain is often used to indicate an abbreviation for the generic word ‘company’ in a commercial context and appears to be intended to perform that function here. The addition of the .co ccTLD does not serve to distinguish the jwplayer.co domain name from the Complainant's JW PLAYER mark for the purposes of the Policy and the Panellist finds that this domain name is identical to a mark in which the Complainant has rights. See ABT Elecs., Inc. v Ricks FA 904239 (Nat Arb Forum Mar 27, 2007) "addition of a top level domain ('gTLD") is irrelevant when conducting a Policy 4 (a)(i) analysis".
The evidence provided by the Complainant proves that it uses the designation JW in commerce, however unfortunately the evidence provided does not really allow the panellist to assess the extent of that use despite the Respondent admitting on its web site that the Complainant’s products have been used on millions of web sites. However, whilst it seems the JW mark may have secondary meaning, it is unnecessary to decide this issue further as it is clear that the Complainant has a registered trade mark for JW PLAYER, with first use recorded back to 2004. The panellist finds that ‘JW’ is the distinctive part of this mark for software allowing video to be played, with 'player' being a descriptive element of mark. Similarly in the Respondent's jwsolution.net domain name, the JW part of the domain name is the distinctive part of the name, 'solution' being a commonly used generic word in the context of software. As such the panellist holds that the domain name jwsolution.net is confusingly similar to a mark JW PLAYER in which the Complainant has registered rights. (See Novell, Inc. v Taeho KIM FA 167964 (Nat Arb. Forum Oct. 24, 2003) (finding that the word ‘solutions’ is descriptive for software)
It is clear from the evidence that the Respondent has used the sites attached to the Domain Names to promote goods and services using the Complainant’s software in competition with licensed goods and services of the Complainant. It is clear from the content of the site that the Respondent was aware of the significance of the name "JW PLAYER" at the time of registration. The usage does not appear to be fair as it does capitalise on the significance of the name "JW PLAYER" as software for playing videos, offering the Respondent's own unlicensed version of the Complainant’s software and commercial services unrelated to the Complainant under the Complainant’s mark or a mark confusingly similar to it, whilst not making it clear that there is no commercial connection with the Complainant. The Panel finds this use is confusing. As such it cannot amount to the bona fide offering of goods and services. See Nike Inc v Dias FA 135016 (Nat Arb. Forum Jan. 7, 2002)(finding no bona fide offering of goods and services where the respondent used the complainant’s mark without authorisation to attract Internet users to its web site which offered both the complainant’s products and those of complainant’s competitors); State Farm Mut. Autos. Ins. Co. v LaFaive, FA 95407 (Nat. Arb. Forum Sept 27, 2000) (“The unauthorised providing of information and services under a mark owned by a third party cannot be said to be bona fide offering of goods and services”.) As such the Panellist finds that the Respondent does not have rights or a legitimate interest in the Domain Names and that the Complainant has satisfied the second limb of the Policy.
Complainant alleges that the Respondent's use of the site is commercial and he is using it to make profit from products and services which compete with the Complainant in a confusing manner. The content of the Respondent’s web site makes it clear that it was aware of the Complainant’s products and rights at the time of registration. However, it is not at all clear whether the Respondent’s sites are associated with the Complainant or not. As such, it seems clear that the use of JW PLAYER or the designation 'JW' would cause people to associate the name with the Complainant’s JW PLAYER software and therefore the business of the Complainant or its predecessors. Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating likelihood of confusion with the Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the web site. See Hewlett-Packard Co. v Ali, FA 353151 (Nat Arb. Forum Dec. 13, 2004)(“Respondent [used HP in its domain name] to benefit from the goodwill associated with Complainant’s HP marks and us[ed] the hpdubai.com domain name, in part, to provide products similar to those of Complainant. Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy 4 (b) (iv)”); Also Compaq Info. Techs. Group LP v Waterlooplein Ltd, FA 109718 (Nat Arb Forum May 29, 2002) (finding that the respondent’s use of the Compaq-broker.com domain name to sell the complainant’s products ‘creates a likelihood of confusion with complainant’s COMPAQ mark as to the source, sponsorship or affiliation of the web site and constitutes bad faith pursuant to Policy 4 (b) (iv).) As such, the Panellist believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy.
Complainant also alleges that the Respondent intended to sell the Domain Name to the Complainant. It appears from the evidence that the Respondent has requested $15,000 for the Domain Names albeit in the context of a submission that he has incurred US$20,500 expenses. As the Respondent has not responded to this Complaint there is no evidence of those expenses before the Panellist. However in light of the finding above that the Domain Name was registered and used in bad faith to cause confusion on the Internet it is unnecessary to consider this issue further.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED
Accordingly, it is Ordered that the <jwplayer.co> and <jwsolution.net> domain names be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: February 11, 2015
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