Jesel, Inc. v. James Esel c/o J. Esel TV
Claim Number: FA0610000825924
Complainant is Jesel, Inc. (“Complainant”), represented by Jennifer C. O'Neill of Wolf, Block, Schorr and Solis-Cohen LLP, 1650 Arch Street, 22nd Floor, Philadelphia, PA, 19103-2097. Respondent is James Esel c/o J. Esel TV (“Respondent”), 17089 Lincoln, Eastpointe, MI, 48021.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <jeseltv.com>, registered with Schlund+Partner Ag.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically October 24, 2006; the National Arbitration Forum received a hard copy of the Complaint October 27, 2006.
On October 26, 2006, Schlund+Partner Ag confirmed by e-mail to the National Arbitration Forum that the <jeseltv.com> domain name is registered with Schlund+Partner Ag and that Respondent is the current registrant of the name. Schlund+Partner Ag verified that Respondent is bound by the Schlund+Partner Ag registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On November 1, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 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 postmaster@jeseltv.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 28, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name that Respondent registered, <jeseltv.com>, is confusingly similar to Complainant’s JESEL mark.
2. Respondent has no rights to or legitimate interests in the <jeseltv.com> domain name.
3. Respondent registered and used the <jeseltv.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Jesel, Inc., is a manufacturer and distributor of automobile parts. In connection with the provision of these services, Complainant has been using the JESEL mark since as early as December 31, 1980. Moreover, Complainant has applied for trademark protection with the United States Patent and Trademark Office (“USPTO”) (Serial No. 78,890,576 filed May 23, 2006).
Respondent registered the <jeseltv.com> domain name August 7, 2006. The disputed domain name previously resolved to a commercial website offering products that sought to compete in Complainant’s commercial area but currently resolves to no content.
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 will draw such inferences as the Panel 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 Complainant to 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 asserts rights in the JESEL mark through its continuous and extensive use in connection with the manufacturing and sales of automobile parts since December 31, 1980. Furthermore, Complainant filed a trademark application with the USPTO May 23, 2006. The Panel finds that, while Complainant does not own rights in a registration, it has submitted evidence sufficient to establish common law rights pursuant to Policy ¶ 4(a)(i). See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of [KEPPEL BANK] in connection with its banking business, it has acquired rights under the common law.”); see also Fishtech, Inc. v. Rossiter, FA 92976 (Nat. Arb. Forum Mar. 10, 2000) (finding that the complainant has common law rights in the mark FISHTECH that it has used since 1982).
Complainant contends that Respondent’s <jeseltv.com> domain name is confusingly similar to Complainant’s mark. Respondent’s disputed domain name features Complainant’s entire JESEL mark and the generic term “tv.” The Panel finds that the addition of a generic term to an otherwise identical mark fails to adequately distinguish a domain name from a mark pursuant to Policy ¶ 4(a)(i). See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name incorporates the VIAGRA mark in its entirety, and deviates only by the addition of the word “bomb,” the domain name is rendered confusingly similar to the complainant’s mark); see also Body Shop Int’l PLC v. CPIC NET, D2000-1214 (WIPO Nov. 26, 2000) (finding that the domain name <bodyshopdigital.com> is confusingly similar to the complainant’s THE BODY SHOP trademark).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant established common law rights in this proceeding and contends that Respondent lacks any rights to or legitimate interests in the <jeseltv.com> domain name. Where Complainant makes a prima facie case under Policy ¶ 4(a)(ii), the burden shifts to Respondent to set forth concrete evidence that it does possess rights to or legitimate interests in the disputed domain name. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).
Complainant contends that the disputed domain name, <jeseltv.com>,
currently resolves to a website that contains no content. Without evidence of demonstrable
preparations to use the disputed domain name, the Panel finds that Respondent’s
use is not a bona fide offering of goods or services pursuant to Policy
¶ 4(c)(i) and it is not a legitimate noncommercial or fair use pursuant to
Policy ¶ 4(c)(iii). See Flor-Jon Films, Inc. v. Larson, FA 94974
(Nat. Arb. Forum July 25, 2000) (finding that the respondent’s failure to
develop the site demonstrates a lack of legitimate interest in the domain
name); §ee also AT&T Corp. v.
Domains by Brian Evans, D2000-0790 (WIPO Sept. 27, 2000) (finding no rights
or legitimate interests where the respondent did not provide any documentation
on the existence of its alleged company that might show what the company’s
business was, or how the company’s years of existence, if it ever existed,
might mesh with the complainant’s trademark claims).
Complainant contends that Respondent is neither commonly known by the <jeseltv.com> domain name nor authorized to register domain names featuring Complainant’s JESEL mark in any way. Absent evidence suggesting otherwise, the Panel finds that Respondent has not established rights to or legitimate interests in accordance with Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
The Panel finds that Complainant satisfied Policy ¶
4(a)(ii).
Finally, Complainant alleges that Respondent registered and used the disputed domain name in bad faith. The disputed domain name was first used for products that sought to compete in Complainant’s commercial area but it does not currently resolve to an active website. Respondent presented no evidence of preparations to use the disputed domain name. For these reasons, the Panel finds that Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that such lack of use permits an inference of registration and use in bad faith).
The Panel finds that Complainant 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 <jeseltv.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: December 11, 2006.
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