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Generic Top Level Domain Name (gTLD) Decisions |
Jones International Ltd. v. Kotecha Parag
Claim Number: FA0205000114358
PARTIES
Complainant
is Jones International Ltd.,
Englewood, CO, USA (“Complainant”).
Respondent is Parag Kotecha
Profile Accounts, Leicester, UNITED KINGDOM (“Respondent”).
The
domain name at issue is <jones.biz>,
registered with Namescout.com.
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.
Richard
Hill as Panelist.
Complainant
has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint,
as it timely filed the required Intellectual
Property (IP) Claim Form with the
Registry Operator, NeuLevel. As an IP
Claimant, Complainant timely noted its intent to file a STOP Complaint against
Respondent with the Registry Operator, NeuLevel
and with the National
Arbitration Forum (the “Forum”).
Complainant
submitted a Complaint to the Forum electronically on May 20, 2002; the Forum
received a hard copy of the Complaint on
May 20, 2002.
On
June 3, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of June 24,
2002 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent in compliance
with paragraph 2(a) of the Rules for
the Start-up Trademark Opposition Policy (the “STOP Rules”).
A
timely Response was received and determined to be complete on June 21, 2002.
On 17 July 2002, pursuant to STOP Rule 6(b), the Forum
appointed Richard Hill as
the single Panelist.
Transfer
of the domain name from Respondent to Complainant.
A. Complainant
The
Complainant states:
The
Complainant has continuously been in business since 1969. It is the corporate parent of multiple
subsidiaries in the Internet, e-commerce, software, education, entertainment,
radio, and cable
television programming industries. The Jones organization covers a wide range of products and
services, from online learning software and the nation's first fully accredited
100-percent cyber university, to radio and TV programming reaching more than 15
million homes.
In
addition, the Complainant owns the pending U.S. trademark application for
JONES.COM (U.S. Trademark Application No. 75/606,851)
…
…
The
Complainant also owns several U.S. registrations including, but not limited to,
the following:
|
Trademark* |
Registration Number |
|
JONES CYBER
SOLUTIONS |
2,172,408 |
|
JONES DIGITAL
CENTURY |
2,138,175 |
|
JONES
INTERNATIONAL UNIVERISTY |
2,424,662 |
|
JONES INTERNET
CHANNEL |
2,241,425 |
|
JONES
KNOWLEDGE.COM |
2,493,860 |
|
JONES RADIO
NETWORK |
2,400,376 |
|
JONES TELECOMMUNICATIONS
& MULTIMEDIA ENCYCLOPEDIA |
2,276,980 |
|
THE JONES
GROUP, LTD. |
1,158,372 |
The
Complainant also owns several U.S. pending applications including, but not
limited to, the following:
|
Trademark* |
Application Number |
|
JONES
CYBERSCHOOLS |
75/154,711 |
|
JONES
INSTITUTE |
76/159,984 |
|
JONES
INTERNATIONAL NETWORKS |
76/162,797 |
|
JONES
KNOWLEDGE GROUP |
76/020,073 |
The Complainant is very concerned that
the use of JONES.BIZ by the Respondent is likely to confuse consumers and to
cause mistake
or deception as to source, sponsorship, affiliation or
association, in violation of state and federal trademark and unfair competition
laws with Complaints mark and web portal, JONES.COM, and its other marks listed
above. Also, the use of JONES.BIZ by
the Respondent is likely to dilute the strength of, and blur and tarnish the
mark, JONES.COM, as well
as the other Jones marks in violation of state unfair
competition laws and similarly violates Section 43(a) of the Trademark Act,
15
U.S.C. §1125(a), as constituting a “false designation of origin,” and in
violation of the Federal Trademark Dilution Act of 1995.
…
The Complainant was unable to find any public information on
the Respondent and the type of business it conducts or the name of any
of its
products. Accordingly, the Complainant
is unable to determine how the Respondent may use JONES.BIZ.
…
As stated above, the Complainant has no
knowledge of the Respondent’s type of business; however, it is very concerned
about the potential
conflicts referred to in STOP Policy paragraphs
4(b)(i)-(iv).
B.
Respondent
The
Respondent states:
The complainant is not claiming in their complaint
that I have registered the name JONES.BIZ in bad faith and have not submitted
any
evidence to this effect.
The complainant is not claiming in their complaint
that I have no rights or legitimate interest in respect of the domain name and
have not submitted any evidence to this effect.
Though the complainant has listed several trademarks
containing the word ‘Jones’ the complainant is not claiming to have an
identical
trademark.
I have been running a business consultancy for the
last 13 years (commenced 1 July 1989) incorporating businesses and providing a
wide range of bookkeeping, payroll and accountancy service. In just the last
couple of months alone we have set up 18 limited companies. I am a member of the association of taxation
technicians (since May 1998).
When I applied to register Jones.biz I had not heard
of Jones International, Ltd. This company is hardly known, if at all, in the
United Kingdom, which is where I am hoping to draw most of my new business
from.
I applied to register Jones.biz because ‘Jones’ is
the second most popular surname in the UK. The 1996 census shows there are
402,489
people in the UK with the surname ‘Jones’. I am looking to use
Jones.biz as a vehicle to market my business services to this community.
Since registering the name I have at no time
contacted Jones International, Ltd. or any of their competitors, and in
particular have
never attempted to sell, lease the name or in anyway interfere
with their business.
I have never previously been subjected to
arbitration procedure under ICANN nor had any form of court proceedings
regarding domains
or trademark abuse.
It should be noted that Jones.net, Jones.org, Jones.co.uk
and Jones.info have all been legitimately registered by people other than
Jones
International, Ltd.
There is no evidence to say that this has affected
Jones.com
This Panel finds that the Complainant has
not proven that it has a trademark for JONES.
Paragraph 15(a) of the STOP 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 STOP Policy requires that the Complainant must prove each of the
following three elements to obtain an order
that a domain name should be
transferred:
(1) the domain name is identical to a
trademark or service mark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in respect of the
domain name; and
(3)
the domain name has been registered or is being used in bad faith.
Due
to the common authority of the ICANN policy governing both the Uniform Domain
Name Dispute Resolution Policy (“UDRP”) and these
STOP proceedings, the Panel
will exercise its discretion to rely on relevant UDRP precedent where
applicable.
Under
the STOP proceedings, a STOP Complaint may only be filed when the domain name
in dispute is identical to a trademark or service
mark for which a Complainant
has registered an Intellectual Property (IP) claim form. Therefore, every STOP proceeding necessarily
involves a disputed domain name that is identical to a trademark or service
mark in which
a Complainant asserts rights.
The existence of the “.biz” generic top-level domain (gTLD) in the
disputed domain name is not a factor for purposes of determining
that a
disputed domain name is not identical to the mark in which the Complainant
asserts rights.
Unlike
domain name disputes brought under the UDRP, STOP claims require that the
disputed domain name be identical to a trademark or service mark in
which the Complainant holds rights. A
domain name that is merely confusingly similar to a mark cannot be
transferred through a STOP claim (although the holder of a non-identical but
similar mark could bring a UDRP
complaint when the domain name eventually
clears any other pending STOP complaints).
See Commonwealth Bank v. Rauch, FA 102729 (Nat. Arb. Forum Feb.
23, 2002) (finding that the Complainant failed to establish rights in
<cominvest.biz> pursuant
to STOP Policy ¶ 4(a)(i) because its COMMINVEST
mark was not identical to “cominvest” or <cominvest.biz>).
In
STOP proceedings, the generic top-level domain (“gTLD”) “.biz” is irrelevant
when determining whether a domain name and mark are
identical, just as gTLDs
such as “.com” and “.net” are disregarded in UDRP cases. See Princeton Linear Assoc., Inc. v.
Copland o/b/o LAN Solutions Inc., FA 102811 (Nat. Arb. Forum Feb. 8, 2001)
(finding that the “.biz” gTLD in a disputed domain name is not a factor, and
hence to be
ignored, when determining whether the domain name is identical to a
mark in which the Complainant has asserted rights).
In
determining whether a domain name and mark are identical, STOP Panels have
disregarded characters and symbols that are impermissible
in domain names, such
as apostrophes, ampersands, and other punctuation. See Commercial Investors Realty v. Bank of New York, FA
103040 (Nat. Arb. Forum Feb. 18, 2002) (finding the Complainant’s THE
INVESTOR’S CHOICE! mark to be identical to the <investorschoice.biz>
domain name). This Panel also noted
that the omission of the word “the” is “inconsequential when determining
whether or not a domain name is identical.”
Id.
Some
Panels have found that the inclusion of a character, even when it is
technically permissible in a domain name, does not defeat
a claim that the name
is identical to a mark. See
Efutures.com, LLC v. Canon Trading Co., FA 103056 (Nat. Arb. Forum Feb. 27, 2002) (finding that <e-futures.com> and
<efutures.com> were both identical to the mark EFUTURES, although ruling
Complainant
did not have rights in the mark on unrelated grounds).
None of the Complainant's trademarks consist of the word
JONES alone. The trademark mentioned
first in the Complaint, namely JONES.COM, would result in the domain name
<jonescom.biz> when the impermissible
period is removed.
The
challenged domain name is <jones.biz>, the operative part of
which, namely jones, is not identical to the operative part of the
domain name derived from the trademark, namely <jonescom>.
Therefore
the Panel holds that the Complainant has not proven that it has rights in a
trademark which is identical to the disputed
domain name.
Under STOP Policy ¶ 4(c), the Respondent may demonstrate
its rights or interests by proving:
i.
The
Respondent is the owner or beneficiary of a trade or service mark that is
identical to the domain name; or
ii.
Before any
notice to the Respondent of the dispute, its use of, or demonstrable
preparations to use, the domain name or a name corresponding
to the domain name
in connection with a bona fide offering of goods or services; or
iii.
The
Respondent (as an individual, business, or other organization) has been
commonly known by the domain name, even though it has
acquired no trademark or
service mark rights.
The Respondent states:
I applied to
register Jones.biz because ‘Jones’ is the second most popular surname in the
UK. The 1996 census shows there are 402,489
people in the UK with the surname
‘Jones’. I am looking to use Jones.biz as a vehicle to market my business
services to this community.
However, he does not provide any
evidence of any actual business plans or preparations to offer services.
Therefore, the Panel holds that the
Respondent has not demonstrated its rights or interests in the disputed domain
name.
With respect to bad faith, the
Complainant merely states:
As
stated above, the Complainant has no knowledge of the Respondent’s type of
business; however, it is very concerned about the potential
conflicts referred
to in STOP Policy paragraphs 4(b)(i)-(iv).
Paragraph 4(b) of STOP states:
Evidence of Registration or Use in Bad Faith. For
the purposes of Paragraph 4(a)(iii), the following circumstances, in particular
but without limitation, if found by the Panel
to be present, shall be
considered evidence of the registration or use of a domain name in bad faith:
i.
Circumstances indicating that you have registered the domain name
primarily for the purpose of selling, renting, or otherwise transferring
the
domain name registration to the Complainant or to a competitor of the
Complainant, for valuable consideration in excess of your
documented
out-of-pocket costs directly related to the domain name; or
ii.
You have registered the domain name in order to prevent the
Complainant from reflecting the mark in a corresponding domain name; or
iii.
You have registered the domain name primarily for the purpose of
disrupting the business of a competitor; or
iv.
By using
the domain name, you have intentionally attempted to attract, for commercial
gain, Internet users to your web site or other
on-line location, by creating a
likelihood of confusion with the Complainant's mark as to the source,
sponsorship, affiliation, or
endorsement of your web site or location or of a
product or service on your web site or location.
The Complainant has not convincingly
argued any of those circumstances, much less provided proof.
The Complainant has argued:
The Complainant is very concerned that
the use of JONES.BIZ by the Respondent is likely to confuse consumers and to
cause mistake
or deception as to source, sponsorship, affiliation or
association, in violation of state and federal trademark and unfair competition
laws with Complaints mark and web portal, JONES.COM, and its other marks listed
above. Also, the use of JONES.BIZ by
the Respondent is likely to dilute the strength of, and blur and tarnish the
mark, JONES.COM, as well
as the other Jones marks in violation of state unfair
competition laws and similarly violates Section 43(a) of the Trademark Act,
15
U.S.C. §1125(a), as constituting a “false designation of origin,” and in
violation of the Federal Trademark Dilution Act of 1995.
However, it has not provided any evidence
to support its arguments.
Therefore, the Panel holds that the
Complainant has not proven that the Respondent acted in bad faith.
DECISION
The Complaint is dismissed. Subsequent challenges under STOP Policy
against this domain name shall be permitted. Such challenges under STOP, however, may not be brought by the
same Complainant.
Richard Hill, Panelist
Dated: 18 July 2002
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