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JCM Germany GmbH v. John C. McClatchey Jr. [2004] GENDND 1211 (17 September 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

JCM Germany GmbH v. John C. McClatchey Jr.

Case No. D2004-0538

1. The Parties

The Complainant is JCM Germany GmbH, of Dusseldorf, Germany (the “Complainant”) represented by Heyms & Dr Bahr, Germany.

The Respondent is John C. McClatchey Jr. of Stoystown, Pennsylvania, United States of America (the “Respondent”).

2. The Domain Name and Registrar

The disputed domain name, <jcm.com> (the “Domain Name”), is registered with Network Solutions LLC (“the Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 21, 2004 (email) and August 2, 2004 (hard copy). On July 21, 2004, the Center transmitted by email to the Registrar a request for registrar verification in accordance with the Domain Name. On July 23, 2004, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. Following an email exchange on July 23, 2004, with the Complainant clarifying what documents the Complainant had sent to the Respondent, the Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 3, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was August 23, 2004. The Response was received by the Center on August 23, 2004.

The Center appointed Tony Willoughby as the sole panelist in this matter on September 8, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is a member of an international group of companies headed by Japan Cash Machines Co Limited. References in this decision to “the Complainant” include, where the context allows, all members of the group. The Complainant is a world leader in the manufacture of cash machines and parts for slot machines. The business was founded nearly fifty years ago. The Complainant is the proprietor of a variety of trade mark registrations featuring the letters JCM in a lower case font. The registrations are in Class 9 for cash registers and other similar machines.

The Respondent, John C. McClatchey, acquired the Domain Name in June 1998. From documentation exhibited to the Response it appears clear that for a time the Domain Name was used by the Respondent’s family business, JCM Industries Inc, a company engaged in the supply of hardwood, lumber and palettes. The Domain Name was used both for email and to connect to a website at “www.jcm.com”.

The Respondent’s business is no longer in existence and the Domain Name is available for sale. Over the last two years, at least five people have approached the Respondent with a view to buying it.

In early April 2004, the Complainants inquired of the Respondent by email as to the going price for the Domain Name. The Respondent replied indicating that $5,000 was his target price.

In May 2004, the Complainant offered the Respondent $1,200 for the Domain Name and informed the Respondent that if the offer was rejected the Complainant would launch an UDRP Complaint.

On May 19, 2004, the Respondent replied as follows:-

“Thank you for your offer. I would like to let you know where I stand with jcm.com. This domain was used for a family business that is no longer operating. When I last renewed the registration I did so for ten years because I had plans to use it again in the future. I am unsure of those plans now, but hesitate to sell it because I know that I will never get it back if my plans do work out. I do not need the money and it is costing me nothing to keep the name. Therefore, if I sell this domain name I want to make enough money to justify giving it up forever.

I am sorry but I cannot accept your counter offer.”

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is identical or confusingly similar to the Complainant’s JCM trade mark.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant asserts that the Respondent has made no traceable use of the Domain Name save to connect it to a web page featuring the statement “this site is under construction”. The Complainant cites the examples of what shall constitute respondent’s rights and legitimate interests as set out in paragraph 4(c) of the Policy and contends that none of them are applicable in this case.

The Complainant states that it is known worldwide by the name JCM and that it has not granted any licence to the Respondent to use the name.

The Complainant further contends that the Respondent registered and is using the Domain Name in bad faith. The Complainant relies primarily on the fact that the Respondent is not using the name and is willing to sell it for $5,000. However, the Complainant goes on to add “additionally, using a publicly known trade mark such as JCM misleads Internet users searching for the Complainant. These indications provide strong evidence of use in bad faith.”

B. Respondent

The Respondent accepts that the substance of the Domain Name (ie the letters JCM) is identical to the Complainant’s trade mark. However, the Respondent denies that there has ever been any confusion or indeed any risk of confusion. He points out that it was once used in relation to his family’s lumber business which is very different from the Complainant’s field of activity and that he has also used it personally.

The Respondent points out that there are a large number of individuals and companies making business use of the initials JCM.

The Respondent states that he acquired the Domain Name from a Mr. John C. Musselman for the sum of US$1,200 on June 19, 1998.

He acquired the Domain Name for the benefit of his family business, JCM Industries Inc. In 1998, JCM Industries Inc applied for registration of a service mark in the US Principal Registry being a device mark, a principal element of which is the name JCM Industries. First use was claimed back to June 1988. The mark was registered on July 4, 2000.

He states that the business’ website at “www.jcm.com” was fully operational until the company discontinued operations in December 2001. The Respondent has produced documentation in support of that assertion.

The family business no longer exists, but the Respondent has retained the Domain Name. He says that he may need to use it in the future, but he is prepared to sell it if the price is right.

The Respondent’s email of May 19, 2004, which is set out in full above under the heading of “Factual Background” accurately sets out his position.

The Respondent denies the Domain Name was registered or is being used in bad faith.

The Respondent seeks a finding of Reverse Domain Name Hijacking on the basis that the Complainant is using its financial muscle in an attempt to bully the Respondent into giving up the Domain Name. The Respondent complains that, despite the terms of the May 19, 2004 email, the Complainant has made no proper effort to discover how and why the Respondent acquired the Domain Name. The Respondent objects to the fact that the Complainant did not bother to check the position directly with the Respondent.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name the Complainant must prove that

(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interest in respect of the Domain Name; and

(iii) The Domain Name has been registered in bad faith and is being used in bad faith.

If the Complaint fails, the Panel has to have regard to paragraph 15(e) of the Rules and in particular the following sentence namely:

“If after considering the submissions the Panel finds that the Complaint was brought in bad faith, for example in an attempt at reverse domain name hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its Decision that the Complaint was brought in bad faith and constitutes and abuse of the Administrative Proceeding.”

Reverse Domain Name Hijacking is defined in paragraph 1 of the Rules as meaning “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name.”

A. Identical or Confusingly Similar

The Respondent rightly accepts the Domain Name is in substance identical to the Complainant’s trade mark. The fact that there are indeed a large number of other people with trade mark rights in the letters JCM is not important in this case. For the purposes of paragraph 4(a)(i) of the Policy all that the Complainant has to do is to establish that it has relevant trade mark rights and that the Domain Name is identical or confusingly similar to that trade mark which the Complainant has done.

B. Rights or Legitimate Interests

The Respondent has demonstrated to the satisfaction of the Panel that:-

1. his initials are JCM;

2. he acquired the Domain Name for use by his family business JCM Industries Inc;

3. until December 2001 the Domain Name was used for email purposes both by the Complainant and by the business; further, it was used by the business to connect to a website at “www.jcm.com”;

4. the family business applied for and obtained a service mark registration of a device mark, the principal element of which was the name JCM Industries.

Paragraph 4(c) of the Policy sets out examples of what a Respondent may demonstrate to show that it has rights or legitimate interests in respect of a domain name.

“Any of the following circumstances, in particular, but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your 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

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

Sub-paragraphs (i) and (ii) of paragraph 4(c) of the Policy clearly apply, albeit possibly to the Respondent’s family business rather than the Respondent himself. It is the Respondent’s family business which used the Domain Name in connection with a bona fide offering of goods and services and it was the Respondent’s family business which was known by the initials JCM. The Respondent has not suggested that he personally is commonly known by the initials JCM. To the extent that the Respondent has made personal use of the Domain Name it appears to have been in his capacity as a vice president of the business.

Nonetheless, the Panel is inclined to the view that for the purposes of the Policy the Respondent has done enough to establish at the minimum a legitimate interest in respect of the Domain Name. However, in light of the Panel’s finding in relation to bad faith, it is not necessary for the Panel to come to a concluded view on this topic.

C. Registered and Used in Bad Faith

The Panel’s findings of fact set out in the immediately preceding section demonstrate quite clearly that by no stretch of the imagination could the Respondent be said to have acted in bad faith at any stage. He acquired the Domain Name with his business in mind, his family business being JCM Industries Inc. Were it not for the demise of the business no doubt the business would still be using the Domain Name.

To succeed under paragraph 4(a)(iii) of the Policy the Complainant has to prove that the Domain Name was both registered in bad faith and is being used in bad faith. Given that the Domain Name was not registered in bad faith the Complaint must fail.

The Complainant places much reliance on the fact that the Respondent is now willing to sell the Domain Name providing the price is right. Selling domain names at a profit (even a large profit) is not of itself an abusive activity within the meaning of paragraph 4(a)(iii). For such an activity to be an abuse within the meaning of paragraph 4(a)(iii) the Respondent has to have been aware of the Complainant and/or the Complainant’s trade mark and has to have registered the Domain Name with the intent of selling the Domain Name at a profit to the Complainant or to a competitor of the Complainant.

Not only is there no evidence to suggest that the Respondent might have been aware of the Complainant and/or its trade mark when he registered the Domain Name, he has provided ample evidence to suggest a quite different and perfectly justifiable motive for acquiring the Domain Name.

The Panel finds that the Domain Name was registered in good faith and is being used in good faith.

D. Reverse Domain Name Hijacking

While it is true that the Respondent’s email of May 19, 2004 (see the Factual Background above) fully and fairly alerted the Complainant to the possibility of a legitimate reason for his acquisition of the Domain Name and while a very simple search (e.g. a visit to the Wayback Machine at “www.archive.org”) would have demonstrated the manner in which the Domain Name had been used for website purposes and while the Panel fully understands the Respondent’s outrage at having been put to time, trouble and expense in dealing with this Complaint, the Panel is inclined to the view that the Complaint was inspired by ignorance and/or ineptitude rather than a deliberate attempt to make abusive use of the Policy. In the circumstances the Panel declines to make a finding of Reverse Domain Name Hijacking. Had the May 19, 2004 email contained evidence of the use made of the Domain Name (e.g. a link to the Wayback Machine), the Panel would have had no hesitation in making a finding of Reverse Domain Name Hijacking.

7. Decision

For all the foregoing reasons the Complaint is dismissed.

Tony Willoughby
Sole Panelist

Dated: September 17, 2004