Generic Top Level Domain Name (gTLD) Decisions

The Complainant is J-B Weld Company , Sulphur Springs, TX, USA ("Complainant") represented by Charles S. Cotropia, Sidley & Austin. The Respondent is Ed Justice Jr. d/b/a Justice Brothers, Duarte, CA, USA ("Respondent").

The domain names at issue are "jbweld.org", "jbweld.com" registered with Network Solutions.

On December 8, 2000, pursuant to Complainant’s request to have the dispute decided by a One Member panel, the Forum appointed James P. Buchele as Panelist. The Panelist certifies that he has acted independently and impartially and to the best of his, has no known conflict in serving as the panelist in this proceeding.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on November 9, 2000; The Forum received a hard copy of the Complaint on November 13, 2000.

On November 13, 2000, Network Solutions confirmed by e-mail to the Forum that the domain names "jbweld.org", "jbweld.com" are registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 5.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

On November 15, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 5, 2000 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@jbweld.org, jbweld.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Uniform 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 Forum’s Supplemental Rules and any rules and principles of law that the panel deems applicable, without the benefit of any Response from the Respondent.

The Complainant requests that the domain names be transferred from the Respondent to the Complainant.

A. Complainant

The Complainant asserts that the domain names in question are identical in spelling, sound, and connotation to Complainant’s registered mark. The only distinction between the domain names in question and the Complainant’s mark is the hyphen has been removed; which makes the domain names confusingly similar to the Complainant’s mark.

Complainant also contends Respondent had no rights or legitimate interests in the domain names in question. In addition, Respondent has demonstrated bad faith by registering domain names for the purpose of disrupting the Complainant’s business. Moreover, the Respondent has exploited the likelihood of confusion between the domain names and Complainant’s mark for its own commercial gain.

Respondent failed to submit a response in this matter.

Mary Louise Bonham owns Complainant, J-B Weld Company. Complainant maintains its principle place of business in Sulphur Springs, Texas. Complainant manufactures and sells adhesive compound and related products for household, automotive and various industrial and recreational uses. Complainant’s mark has been registered with the United States Patent and Trademark Office since April of 1975 and has been used continuously in interstate commerce since January of 1968.

Respondent, Ed Justice, Jr., is the administrative contact for Respondent Justice Brothers, Inc., a corporation having its principal place of business in Duarte, California. Respondent Ed Justice registered the domain names at issue.

On October 3, 2000, Complainant sent Respondent a cease and desist letter. Respondent failed to respond.

Complainant and Respondent have had various disputes since May of 1985.

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("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.

Its registered trademark J-B WELD and its family of marks evidence complainant’s rights. The Respondent’s domain names are identical and confusingly similar to the Complainant’s mark. Policy ¶ 4.a.(i). The only obvious difference between the Respondent’s domain names and the Complainant’s mark is the removal of the hyphen between the letters "J" and "B". See The Ritz-Carlton Hotel Co. v. Club Car Executive Transportation and Dennis Rooney, D2000-0611 (WIPO Sept. 18, 2000) (finding that removing a hyphen in the domain names is not sufficient to differentiate the domain names from the mark).

Respondent has asserted no rights or legitimate interests in the domain names at issue. Respondent is not commonly known by the domain names, nor is the Respondent using the domain names in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Policy ¶ 4.c.(i)-(iii).

Respondent’s failure to show evidence sufficient to refute Complainant’s assertions entitles the Panel to conclude that Respondent has no such rights or legitimate interests in regard to the domain names in question. See Woolworth’s plc. v. David Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that the burden of proof lies with the Respondent to demonstrate that he has rights or legitimate interests).

The Panel finds the Respondent has acted in bad faith by attempting to attract Internet users to its own website, strictly for commercial gain, through a likelihood of confusion with the Complainant’s mark. Policy ¶ 4.b.(iv). See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding bad faith where the Respondent attracted users to a website sponsored by the Respondent and created confusion with the Complainant’s mark as to the source, sponsorship, or affiliation of that website); see also Perot Systems Corporation v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the Complainant’s well known marks, thus creating a likelihood of confusion strictly for commercial gain).

In addition, it appears the Respondent has registered the domain names in question primarily for the purpose of disrupting the Complainant’s business because at the time of registration Respondent was aware of Complainant’s mark via prior interactions. Policy ¶ 4.b.(iii). See Kraft Foods (Norway) v. Wide, D2000-0911 (WIPO Sept. 23, 2000) (finding that the fact "that the Respondent chose to register a well known mark to which he has no connections or rights indicates that he was in bad faith when registering the domain name at issue"); see also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from the Complainant's marks suggests that the Respondent, the Complainant’s competitor, registered the names primarily for the purpose of disrupting the Complainant's business).

Having established all three elements required under the ICANN Policy, the panel concludes that the requested relief shall be granted.

Accordingly, it is ordered that the domain names jbweld.org and jbweld.com be transferred from Respondent to Complainant.

James P. Buchele, Panelist

Dated: December 15, 2000