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Generic Top Level Domain Name (gTLD) Decisions |
Jinfonet Software, Inc. v. Internet
Services
Claim Number: FA0409000326227
PARTIES
Complainant
is Jinfonet Software, Inc. (“Complainant”), represented by Marc A.
Bergsman, of Dickinson Wright
PLLC, 1901 L Street N.W., Suite 800, Washington, DC 20036. Respondent is Internet Services (“Respondent”),
represented by Ari Goldberger,
of ESQwire.com Law Firm, 35 Cameo Drive, Cherry Hill, NJ 08003.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <jreport.com>, registered with Enom, Inc.
PANEL
The
undersigned certify that they have acted independently and impartially and to
the best of their knowledge have no known conflict
in serving as Panelists in
this proceeding.
Jeffrey
M. Samuels, Chairman
Sandra
Jo Franklin, Panelist
Steven
L. Schwartz, Panelist
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on September 13, 2004; the Forum
received a hard copy of the
Complaint on September 14, 2004.
On
September 14, 2004, Enom, Inc. confirmed by e-mail to the Forum that the domain
name <jreport.com> is registered with Enom, Inc. and that the
Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom,
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
September 16, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”),
setting a deadline of October 6,
2004 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@<jreport.com> by e-mail.
A
timely Response was received and determined to be complete on October 6, 2004.
Complainant
submitted a timely “additional submission” on October 11, 2004.
Respondent
submitted a timely “additional submission” on October 18, 2004.
On October 19, 2004, pursuant to Complainant’s request
to have the dispute decided by a three-member
Panel, the Forum appointed Jeffrey
M. Samuels, Sandra Jo Franklin, Esq., and Steven L. Schwartz to serve as
Panelists.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
is the owner of the trademark JREPORT, which is used in connection with
computer software for use in data retrieval, data
analysis, report design,
report management, and graphical and textual report delivery for business and
non-business use. Complainant began
using the mark on January 21, 1998, and filed an application to register the
mark with the United States Patent
and Trademark Office on July 22, 2003. The application matured into U.S.
Registration No. 2,860,330 on July 6, 2004.
See Annex 2 to Complaint.
Complainant
alleges that Respondent registered the domain name in dispute on October 15,
1998, nine months after Complainant’s date
of first use of the JREPORT mark,
and notes that Respondent is located only ten miles from Complainant’s offices
in Rockville, Maryland. According to
Complainant, in late 1998 or early 1999, it learned that the domain name <jreport.com>
had been registered by Respondent and resolved to a website displaying sexually
explicit and pornographic material for commercial
gain. Upon demand by Complainant, Respondent
removed this material in 1999, and, since that time, the domain name <jreport.com>
has been passive. Despite the passive
nature of the site, Respondent later renewed the registration. See Declaration of Dr. Bing Yao, the
president and founder of Complainant Jinfonet Software, Inc., attached as
Exhibit 7 to Complaint.
Complainant
maintains that the domain name <jreport.com> is identical to the
JREPORT mark, in which Complainant, through both use and registration, has
rights.
Complainant
further argues that Respondent has no rights or legitimate interests in the
domain name. It contends that
Respondent’s Internet Services is a fictitious company name used by an
unidentified entity, that there is no evidence
that Respondent is commonly
known as JREPORT, that Complainant has not licensed or otherwise permitted
Respondent to use the JREPORT
mark or register the domain name <jreport.com>,
and that Respondent is not making any legitimate noncommercial or fair use of
the mark. In fact, Complainant
emphasizes, Respondent is not making any use of the mark, nor has it for over
four years.
With
respect to the issue of “bad faith” registration and use, Complainant maintains
that, by using a domain name incorporating the
JREPORT mark, Respondent
attracted unsuspecting internet users looking for Complainant’s JREPORT
software products to Respondent’s
web site and, thereby, created a likelihood
of confusion (and in fact actual confusion) as to the source, sponsorship,
affiliation,
or endorsement of Respondent’s porno site.
Complainant
alleges the existence of other evidence of “bad faith,” including Respondent’s
concealment of its true identity by using
the name of an unidentifiable
business entity; Respondent’s failure to provide fax or voice numbers for
itself or its Administrative
Contact, as required by the Registration
Agreement; and Respondent’s “passive” holding of the domain name.
B.
Respondent
Respondent
contends that it registered the domain name in dispute on October 18,
1996. In support of this contention,
Respondent submitted a printout of the original Whois report from Internic
which indicates that the
domain name <jreport.com> was registered
in the name of J Report Internet Services on October 18, 1996. See Appendix 1 to Response.
Respondent
asserts that the “uncontradicted and irrefutable“ evidence is that Respondent
registered the domain name without any knowledge
of Complainant or its
mark. The fact that the parties reside
within ten miles of each other in the same county is of no consequence,
Respondent urges, given the
size and population of the county and the fact that
Complainant does not market its products locally.
In
response to Complainant’s contention that Respondent has taken deliberate steps
to conceal its true identity, Respondent argues
that “[c]ompanies do that all
the time but that does not mean they are doing anything wrong.” According to Respondent, Internet Services
is a bona fide d/b/a operated by Respondent.
Moreover, Respondent adds, the evidence indicates that Complainant has
been able to contact Respondent.
Focusing
on the relevant UDRP policy, Respondent first contends that Complainant’s
alleged mark provides no enforceable rights since
Complainant did not begin to
use the JREPORT mark until after Respondent first registered the domain name in
October 1996.
Respondent
next maintains that it has rights or legitimate interests in the domain
name. It argues that the display of
pornographic material on its web site constitutes a bona fide offering of goods
and services. Respondent further urges
that, given that it “voluntary[ily] removed the pornographic material, it would
be “unfair” to conclude that
Respondent lacks a legitimate interest due to
passive holding.
Finally,
Respondent indicates that it cannot be found to have registered the domain name
in bad faith since it had no knowledge of
Complainant or of the JREPORT mark
when it registered the domain name in 1996.
Even if the October 1998 date is used as the date of registration,
Respondent urges, bad faith registration still could not be established
since
there is no evidence that the domain name was registered with Complainant’s
mark in mind. According to Complainant,
“[i]t should also be noted that Respondent’s mere knowledge of Complainant’s
mark when it renewed (or re-registered)
the Disputed Domain Name does not mean
the renewals were done in bad faith.
Once a domain name is registered in good faith, the Respondent is
entitled to renew it based on the original good faith reason the
domain name
was initially registered.”
Respondent
further argues that its willingness to remove the “adult content” of its web
site is an indication of its “good faith”
and that it is “an unabashed display
of chutzpah” for Complainant to now argue that the passive holding of the site
– resulting from
the removal of the adult material – is evidence of bad
faith. Further, Respondent adds, “[i]n
order to establish bad faith registration based on passive holding, the
trademark owner must have
rights predating the domain name registration and the
respondent must have had actual or imputed knowledge of those rights, which
is
not the case here.”
Respondent
urges the Panel to find that this is a case of “reverse domain name
hijacking.” According to Respondent,
Complainant knew or should have known at the time it filed the complaint that
it could not establish the
requisite bad faith given that the domain name
registration predates the filing date of the application to register JREPORT by
at
least five years.
C.
Additional Submissions
In
its “additional submission,” Complainant notes that the domain name <jreport.com>
was registered in October 1996 by an entity other than Respondent, i.e., J
Report Internet Services, of Kensington, Maryland. Thus, Complainant asserts, it is clear that the disputed domain name
was not registered until October 1998, after Complainant’s first
use of its
JREPORT mark.
With
respect to the issue of Respondent’s knowledge of Complainant’s mark,
Complainant emphasizes that, while the county in which
the parties reside
comprises 500 square miles with a population of over 1 million, the parties are
within ten miles of each other.
On
the issue of “bad faith” registration, Complainant cites evidence indicating
Respondent‘s pattern of registering third-party marks
as domain names, as well
as “typo-squatting.” Attached as Exhibits 15-22 are printouts of other
registrations owned by Respondent
for names such as <justler.com> and
<gidelity.com>. With the
exception of one site, none of the other names resolve to an actual site and
none of the sites are being used to provide
bona fide services.
Complainant
also contests Respondent’s assertion that it has a legitimate interest in the
domain name because it once operated a porno
site at <jreport.com>. Complainant asserts that there is no indication
that any services were rendered at such site.
In
its “additional submission,” Respondent contends that while the 1996
registration was done in the name of J Report Internet Services,
such entity is
the same as Respondent Internet Services.
The declaration of Jay Rose, the individual who registered the domain
name <jreport.com> in October 1996, indicates that J Report
Internet Services and Internet Services “are one and the same.” See Exhibit 1 to Additional
Submission.
Respondent
further argues that, even accepting that Respondent did not register the domain
name until after Complainant first used
the JREPORT mark, there is no evidence
that Respondent had knowledge of the mark in 1998, and, thus, there is no
evidence of the
requisite “bad faith.”
Respondent also urges the Panel to disregard the evidence regarding
Respondent’s registration of names incorporating misspellings
of marks, given
that Respondent did not have knowledge of Complainant’s mark.
Finally,
with regard to Complainant’s contention that Respondent never provided any
services at the <jreport.com> site, Respondent states that, while
it is not in the pornography business, it did generate revenue from the adult
content promoted
at its site and that such activity constitutes a bona fide
offering of services.
FINDINGS
The Panel finds that: (1) the domain name
<jreport.com> is identical or confusingly similar to a mark, i.e.,
JREPORT, in which Complainant has rights; (2) Respondent has no rights or
legitimate
interests in the domain name; but (3) the domain name was not
registered and used in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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.”
Paragraph
4(a) of the 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 Respondent is identical or confusingly similar to a
trademark or service mark in which Complainant has
rights;
(2)
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.
The Panel concludes that the <jreport.com>
domain name is, for all intents and purposes, identical to Complainant’s
JREPORT mark. The addition of the
generic top-level domain “.com” in the domain name is irrelevant in determining
whether the domain name is identical
to Complainant’s mark. See Busy Body, Inc. v. Fitness Outlet Inc., Case No. D2000-0127 (WIPO
Apr. 22, 2000) (finding that “the addition of the generic top-level domain
(gTLD) name `com’ is … without
legal significance since use of a gTLD is
required of domain name registrants”).
The Panel further concludes that
Complainant, through its ownership of a federal registration and use of the
JREPORT mark since 1998,
has rights in the mark.
The evidence indicates that the <jreport.com>
site currently is a “passive” one. As
such, the Panel finds that the evidence does not support a determination that
the domain name is being used in connection with
a bona fide offering of goods
or services or that Respondent is making a legitimate noncommercial or fair use
of the name. There is also no evidence
that Respondent has been commonly known by the domain name.
As noted above, Respondent, at one point,
prior to notice of the dispute, operated a pornographic site at <jreport.com>. The Panel concludes, however, that, under
the facts of this case, such use does not constitute a bona fide offering of goods
and services
under the applicable policy.
See Isleworth Land Co. v.
Lost In Space, FA, Case 117330 (Nat. Arb. Forum, Sept. 27, 2002) (finding
that respondent’s use of its domain name to link to adult-oriented web site
did
not constitute bona fide offering of goods or services). Respondent acknowledged in its “additional
submission” that it is not in the pornography business.
The Panel concludes that Complainant has
not sustained its burden of proof relating to establishing that the domain name
was registered
in bad faith. Based on
its review of all the evidence, the Panel finds that the owner of the 1996
registration for the <jreport.com> domain name is, for all intents
and purposes, the same entity as the instant Respondent. Since such registration predates any use of
the JREPORT mark by Complainant, the Panel finds that the 1996 registration was
not in
“bad faith.” Further, even if the
evidence established that Respondent knew of Complainant’s mark at the time the
domain name was re-registered
by Respondent in 1998, the Panel concludes that
it was not the intent of the UDRP to extend the definition of “abusive
registration”
to domain names originally registered in good faith. See PAA Laboratories GmbH v. Printing Arts America, Case No. D2004-0338
(WIPO July 13, 2004). See also Telaxis Communications Corp. v. William E.
Minkle, Case No. D2000-0005 (WIPO March 5, 2000).
The
Panel declines to find that the filing of the complaint in this case
constitutes “reverse domain name hijacking.” Given the fact
that the 1996
registration for the <jreport.com> domain name was in the name of
an entity other than Respondent, it may not be held that the proceeding was
instituted in bad faith.
DECISION
Having
failed to establish all three elements required under the ICANN Policy, the
Panel concludes that relief shall be DENIED.
.
Jeffrey M. Samuels, Chairman
Sandra Jo Franklin, Panelist
Steven L. Schwartz, Panelist
Dated: November 2, 2004
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