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J.P. Morgan Chase & Co. v. CPIC Net [2001] GENDND 1006 (22 May 2001)

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Complainant is: J.P. Morgan Chase & Co., a bank holding corporation whose headquarters is at 270 Park Avenue, New York, New York, 10017, U.S.A.

The Respondent is: CPIC NET, an entity whose address is at 15, 5^th Street, Closter, New Jersey 07624, U.S.A.

The eleven (11) domain names in dispute are: <chasemorganbank.com>, <chasemorgancapital.com>, <chasemorgancorp.com>, <chasemorgandirect.com>, <chasemorganmarkets.com>, <chasemorganonline.com>, <labchasemorgan.com>, <jpmorganchasecorp.com>, <morganchasecapital.com>, <morganchasedirect.com> and <chasemorgan.org>.

All the disputed domain names are registered with Network Solutions, Inc. (NSI), 505 Huntmar Park Drive, Herndon, Virginia 20170, U.S.A.

This dispute is to be resolved in accordance with the Uniform Policy for Domain Name Dispute Resolution (the Policy) and Rules for Domain Name Dispute Resolution (the Rules) approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, and the World Intellectual Property Organization Arbitration and Mediation Center's Supplemental Rules for Uniform Domain Name Dispute Resolution (the Center, the Supplemental Rules).

The Complaint was filed on March 16, 2001. On March 22, 2001, the Center requested that the registrar NSI check and report back on the registrant(s) for the eleven (11) disputed domain names supra. On March 28, 2001, NSI apprised the Center that the Respondent CPIC NET was the registrant for all eleven (11) disputed domain names.

On March 29, 2001, the Center forwarded a copy of the Complaint to Respondent by registered mail and by e-mail and this proceeding officially began. The Respondent did not file a response within the twenty (20) day time frame required by Rule 5 of the Rules, and on April 25, 2001, was declared in default.

The Administrative Panel submitted a Declaration of Impartiality and Independence on May 7, 2001, and the Center proceeded to appoint the Panel on May 8, 2001. The Panel finds the Center has adhered to the Policy and the Rules in administering this Case.

This Decision is due by May 22, 2001.

Chase National Bank, a predecessor of the Complainant, J.P. Morgan Chase & Co., was founded in 1877. Currently, the Complainant uses the "Chase" mark to identify its retail banking and financial services.

J.P. Morgan & Co., also a predecessor of the Complainant, was founded in 1861. Currently, J.P. Morgan Chase uses the "J.P. Morgan" mark to identify its wholesale banking and financial services, including investment banking and private banking.

The Complainant has offices in numerous countries all over the world. The Complainant also operates websites at: <jpmorganchase.com>; <chase.com>; and <jpmorgan.com>.

On September 12, 2000, news services reported the imminent merger of Chase and J. P. Morgan banks (Complaint Annex H). Also on September 12, 2000, Respondent registered the following eight (8) disputed domain names: <chasemorganbank.com>, <chasemorgandirect.com>, <chasemorganonline.com>, <chasemorgan.org>, <chasemorgancapital.com>, <chasemorgancorp.com>, <chasemorganmarkets.com>, and <labchasemorgan.com> (Complaint Annex C).

The merger was officially announced on September 13, 2000, (Complaint Annex H). Also on September 13, 2000, the Respondent registered the following three (3) domain names: <jpmorganchasecorp.com>, <morganchasecapital.com> and <morganchasedirect.com> (Complaint Annex C).

The Complainant wrote several letters to the Respondent during September and October 2000, alleging trademark infringement and demanding the Respondent transfer all eleven (11) disputed domain names to the Complainant (Complaint Annex I). The Respondent did not reply. The Complainant now is seeking transfer of the domain names in this proceeding.

5. The Parties' Contentions

Complainant's Contentions:

- Respondent's use of the famous Chase and J.P. Morgan marks is unauthorized.

- The Chase and J.P. Morgan marks are famous.

- The Respondent has parked the eleven (11) domain names and they are not being used in any active website.

- Respondent registered the eleven (11) disputed names in order to keep the Complainant from doing so and the Respondent has engaged in a pattern of this behavior.

The Respondent is in default in this proceeding and thus did not submit any contentions.

In order for the Complainant to prevail and have the disputed domain names transferred to it, Complainant must prove the following (the Policy, paragraph 4(a)(i-iii):

- the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- the Respondent has no rights or legitimate interests in respect of the domain name; and

- the domain name was registered and is being used in bad faith

The Complainant has produced an exemplary copy of its trade- service mark no. 1,521,765, "Chase", for use in connection with its banking and financial services. This Chase mark is registered on the principal register of the United States of America Patent and Trademark Office, dated January 24, 1989, in int. classes 16 and 36 for financial reports and bulletins and for banking services (Complaint Annex E).

On December 19, 1989, the Complainant's predecessor registered the trade- service mark "J.P. Morgan", no. 1, 572, 322, in int. classes 35 and 36 for business management and brokerage services etc. on the principal register of the United States of America Patent and Trademark Office (Annex F). The Complainant has also registered the J.P. Morgan and Chase marks in many other countries all over the world (Complaint, Annex G).

All the eleven (11) disputed domain names contain the Complainants' service marks "Chase" and "J.P. Morgan", either alone or paired with generic terms associated with banks and financial services, particularly in the internet context (e.g., <chasemorganbank.com>, <chasemorganonline.com>, <chasemorgancapital.com>). The pairing of the Complainant's famous marks with generic financial services terms does not create new distinct marks but confusingly similar marks.

The Panel thus finds that the eleven (11) disputed domain names are at best confusingly similar to the Complainant's famous service marks.

The Complainant has stated categorically that the Respondent is an "unauthorized" user of the Complainant's service marks in the disputed domain names (the Complaint p. 10). Being in default, the Respondent has not seen fit to inform the Panel of any legitimate rights or interests it may have in the disputed domain names (the Policy at 4c). Therefore, the Panel finds the Respondent has no legitimate rights or interests in the disputed domain names.

The Complainant essentially makes one argument under the Policy that the Respondent registered and is using the eleven (11) disputed domain names in bad faith. This is that the Respondent registered the domain names to prevent the Complainant from registering them, and that the Respondent has engaged in a pattern of such conduct in contravention of the Policy at 4 b(ii). Certainly, it appears to the Panel that all the disputed domain names would be important to the Complainant in the conduct of its banking and financial businesses. The Respondent systematically chose and registered the domain names with the Complainant's needs in mind, and heedless of the fact that it was infringing famous marks.

In addition, the Respondent also timed its registrations of the domain names it calculated would be important to the Complainant for the very moment the Complainant's predecessors announced their intention to merge Chase Bank and J. P. Morgan to create the Complainant, J.P. Morgan Chase & Co. The merger was bruited for some time before it was formally announced on September 13, 2000, and the Respondent registered all the disputed domain names on September 12 and 13, 2000. (see Vivendi S.A., the Seagram Company Ltd., Universal Studios, Inc., et al. v. CPIC Net, ICANN/WIPO Case No. D2000-0685, September 12, 2000; and A. P. Moller v. Webb Society, ICANN/WIPO Case No. D2000-0135, April 15, 2000, where the Respondent registered a domain name because a merger between Maersk and Sea Land was rumored.)

The very fact that the Respondent registered eleven (11) combinations of the Complainant's service marks is enough to constitute a pattern under the Policy (see Vivendi supra). Moreover, the Complainant also has shown that among the numerous other domain names the Respondent has registered are such famous trademarks as Cadbury, Snapple, and Verizon (Complaint, Annex A). This reinforces the obviousness of the pattern of the Respondent's conduct in violation of the Policy. (And see Yahoo! Inc. v. Eitan Zviely, et al., ICANN/WIPO Case No. D2000-0273, June 14, 2000, where multiple registered variations of the Complainant's mark constituted a pattern under the Policy)

The Panel finds the Respondent has registered and used the disputed domain names in bad faith.

The Panel has found the Respondent registered eleven (11) disputed domain names that are at best confusingly similar to the Complainant's famous service marks Chase and J.P. Morgan. The Panel also has found the Respondent has no legitimate rights or interests in the disputed domain names and registered and was using them in bad faith.

Therefore, in accord with ICANN Policy paragraph 4(i) and Rule 15, the Panel orders that the eleven (11) disputed domain names, <chasemorganbank.com>, <chasemorgancapital.com>, <chasemorgancorp.com>, <chasemorgandirect.com>, <chasemorganmarkets.com>, <chasemorganonline.com>, <labchasemorgan.com>, <jpmorganchasecorp.com>, <morganchasecapital.com>, <morganchasedirect.com>, <chasemorgan.org> be transferred from the Respondent, CPIC NET, to the Complainant, J.P. Morgan Chase & Co.

Dennis A. Foster
Sole Panelist

Dated: May 22, 2001