Juno Online Services, Inc. v. Standard Tactics LLC
Claim Number: FA0611000832372
Complainant is Juno Online Services, Inc. (“Complainant”), represented by James D. Nguyen, of Foley & Lardner LLP, 2029 Century Park East, Suite 3500, Los Angeles, CA 90067. Respondent is Standard Tactics LLC (“Respondent”), 433 Paseo de Peralta, Santa Fe, NM 87501.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <junodsl.com>, registered with Go Daddy Software, 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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 3, 2006; the National Arbitration Forum received a hard copy of the Complaint on November 3, 2006.
On November 3, 2006, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <junodsl.com> domain name is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 November 8, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 28, 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@junodsl.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 1, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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." 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:
Complainant is a well-known Internet service provider.
Complainant holds a United States Patent and Trademark Office registration for the JUNO mark (Reg. No. 2,164,956 issued October 8, 1996).
Complainant utilizes the JUNO mark in connection with its business and has registered the <juno.com> domain name to allow Internet users to find its services online at its website.
Respondent has no affiliation or relationship with Compainant and no authorization to use Complainant’s trademark in a domain name.
Respondent registered the <junodsl.com> domain name on March 18, 2005.
Respondent uses the disputed domain name to redirect Internet users to Respondent’s website featuring links to third-party websites.
Many of the linked websites offer Internet services in direct competition with the business of Complainant, including those of “BellSouth DSL,” “Roadrunner DSL” and “DSL Verizon.”
Respondent’s <junodsl.com> domain name is confusingly similar to Complainant’s JUNO mark.
Respondent has no rights or legitimate interests in the <junodsl.com> domain name.
Respondent registered and uses the <junodsl.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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. 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 a 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 that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a
trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has established rights to the JUNO mark through its registration with the USPTO. That registration establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See, for example, Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003): “Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”
Moreover, it is undisputed on this record that Respondent’s <junodsl.com> domain name is confusingly similar to Complainant’s JUNO mark. In particular, Respondent’s domain name incorporates Complainant’s mark in its entirety, and merely adds the generic descriptive term “dsl.” The term “dsl” is descriptive of Complainant’s business as an Internet service provider and does not serve to distinguish the disputed domain name from Complainant’s mark. Such minor additions to a registered mark result in a confusingly similar domain name pursuant to Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where a domain name contains the identical mark of a complainant combined with a generic word or term); see also Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001): “[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks.”
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant’s allegation that Respondent does not have rights or legitimate interests in the <junodsl.com> domain name constitutes a prima facie case for purposes of this proceeding. Once Complainant makes a prima facie case the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Respondent’s failure to respond creates a presumption that it does not have rights or legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002):
Because
Complainant’s Submission constitutes a prima
facie case under the Policy, the burden effectively shifts to
Respondent. Respondent’s failure to respond means that Respondent has not
presented any circumstances that would promote its rights or legitimate
interests in the subject domain name under Policy ¶ 4(a)(ii).
See also Desotec N.V. v. Jacobi Carbons AB,
D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a
presumption that a complainant’s allegations are true unless clearly
contradicted by the evidence).
Despite the presumption created in the absence of a Response, this Panel will evaluate whether the available evidence suggests that Respondent may have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).
In this connection, we first note that there is no dispute
that, as Complainant asserts, Respondent uses the <junodsl.com> domain
name to redirect Internet users to Respondent’s website, which features links
to websites offering competing Internet services. Respondent presumably receives a fee from these referral
links. Respondent’s use of a domain
name that is confusingly similar to Complainant’s JUNO mark to redirect
Internet users to Respondent’s website is neither a bona fide offering
of goods or services pusuant to Policy ¶ 4(c)(i), nor a legitimate
noncommercial or fair use of the domain name pursuant to Policy ¶
4(c)(iii). See Wells Fargo & Co. v. Lin Shun
Shing, FA 205699 (Nat. Arb. Forum
Dec. 8, 2003) (finding that using a domain name to direct Internet traffic to a
website featuring pop-up advertisements and links to various third-party
websites is neither a bona fide offering of goods or services under
Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶
4(c)(iii) where the registrant presumably receives compensation for each
misdirected Internet user); see
also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb.
Forum Dec. 31, 2002) (finding that a respondent’s diversionary use of a
complainant’s marks to send Internet users to a website displaying a series of
links, some of which linked to that complainant’s competitors, was not a bona
fide offering of goods or services).
Likewise, there is no evidence in the record before us to suggest that Respondent is commonly known by the <junodsl.com> domain name, either individaully or as a business. Complainant asserts, and Respondent does not deny, that Respondent has no affiliation or relationship with Compainant and no authorization to use Complainant’s trademark in a domain name. Additionally, Respondent’s WHOIS information identifies Respondent as “Standard Tactics LLC,” a name with no obvious relationship to the disputed domain name. Thus, Respondent has failed to establish rights or legitimate interests in the disputed domain name under 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 a respondent was not commonly known by the mark there in question and never applied for a license or permission from a complainant to use the trademarked name); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is a factor in determining that Policy ¶ 4(c)(ii) does not apply).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent uses the <junodsl.com> domain name,
which is confusingly similar to Complainant’s JUNO mark, to divert Internet
users to Respondent’s website. That website features links to competing
third-party websites. Internet users
finding themselves at Respondent’s website instead of at Complainant’s genuine
website may do business with Complainant’s competitors instead of with
Complainant. Such diversionary use is
evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See
Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003):
Respondent registered a domain name
confusingly similar to Complainant's mark to divert Internet users to a
competitor's website. It is a reasonable inference that Respondent's purpose of
registration and use was to either disrupt or create confusion for Complainant's
business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).
See also S. Exposure v.
S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that a
respondent acted in bad faith by attracting Internet users to a website that competed
with a complainant’s business).
Because it may safely be inferred
that Respondent attracts Internet users to its website for commercial gain by
collecting pay-per-click fees from its links to third-party websites, such use
also constitutes bad faith registration and use pursuant to Policy ¶
4(b)(iv). See Associated Newspapers Ltd. v. Domain
Manager, FA 201976 (Nat. Arb. Forum
Nov. 19, 2003):
Respondent's prior use of the …[subject]…
domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the
domain name provided links to Complainant's competitors and Respondent
presumably commercially benefited from the misleading domain name by receiving
‘click-through-fees.’
See also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where a respondent’s domain name took advantage of Internet users’ mistakes by resolving to a website offering links to third-party websites that provided services similar to a complainant’s.
Finally under this head, it is evident that Respondent
registered the contested domain name with either actual or constructive
knowledge of Complainant’s rights in the JUNO mark by virtue of Complainant’s
prior registration of that mark with the United States Patent and Trademark
Office. Registration of a confusingly
similar domain name despite such actual or constructive knowledge evidences bad
faith registration and use of the domain name pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506
(Nat. Arb. Forum Oct. 24, 2002); see
also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct.
4, 2002).
For all of these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <junodsl.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: December 15, 2006
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