DECISION

Juno Online Services, Inc. v. Carl Nelson

Claim Number: FA0402000241972

PARTIES

Complainant is Juno Online Services, Inc. (“Complainant”), New York, NY represented by James D. Nguyen, of Foley & Lardner, 2029 Century Park East, 35th Floor, Los Angeles, CA 90067.  Respondent is Carl Nelson (“Respondent”), P.O. Box 12183, Ogden, UT 84412.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <billing-juno.com>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.

PANEL

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.

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on February 25, 2004; the Forum received a hard copy of the Complaint on February 26, 2004.

On February 26, 2004, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the Forum that the domain name <billing-juno.com> is registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that the Respondent is the current registrant of the name.  Melbourne It, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names Worldwide 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 March 3, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 23, 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@billing-juno.com by e-mail.

A timely Response was received and determined to be complete on March 12, 2004.

On March 21, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

            A.  Complainant makes the following assertions:

1. Respondent’s <billing-juno.com> domain name is confusingly similar to Complainant’s JUNO marks.

2. Respondent does not have any rights or legitimate interests in the <billing-juno.com> domain name.

3. Respondent registered and used the <billing-juno.com> domain name in bad faith.

B. Respondent

Respondent contends that he has never owned or used the domain name <billing-juno.com>. 

FINDINGS

Complainant, Juno Online Services, Inc., operates the popular “Juno” online service.  Complainant brings this action as part of its efforts to stop a deceptive, fraudulent and unlawful “phishing” scam.  Complainant contends that Respondent impersonated Complainant’s billing web site and sent e-mails disguised as originating from Complainant’s Juno service, in order to direct Juno users to Complainant’s infringing web site, which unlawfully used Complainant’s JUNO trademark as part of the domain name.  The goal of this scheme was to deceive Juno users into providing their credit card and personal information to the perpetrators.

The website at <billing-juno.com> is used for a credit card “phishing” scam, a new and increasing type of online fraud.  “Phishing” involves the use of e-mails, pop-ups or other methods to trick Internet users into revealing credit cards, passwords, social security numbers and other personal information to the “phishers” who intend to use such information for fraudulent purposes.

Respondent contends that an unknown perpetrator stole his identity and registered the disputed domain name for purposes of the fraudulent scheme alleged by Complainant.  A letter from the Fraud Department of Respondent’s credit card company dated January 8, 2004, substantiates the claim that Respondent’s credit card was fraudulently used in order to register the domain name. 

Complainant is engaged in the business of providing Internet access service, electronic mail services and dissemination of advertising for others via an online electronic communications network.  Complainant is the owner of the following U.S. Trademarks:  No. 2,164,956 for JUNO, registered as a trademark and service mark; No. 2,165,016 for a JUNO design mark, registered as a trademark and service mark, for use in connection with providing multi-user access to a global computer information network, and software therefor; No. 2,232,490 for a JUNO design mark, registered as a trademark and service mark; and No. 2,233,188 for JUNO.COM, registered as a service mark.  The three JUNO marks are used in connection with providing multi-user access to a global computer information network, and software therefor; the JUNO.COM mark is used in connection with providing information services via a global computer network, namely, providing electronic mail services.  Complainant also owns other common law state and federal trademark rights in the JUNO marks by consistent use in commerce over time.  Complainant has used the JUNO marks in commerce as a business name and/or as a trademark and service mark since at least 1995.

Complainant has acquired and enjoys substantial goodwill and a valuable reputation through the JUNO marks.  Complainant has expended and continues to expense a significant amount of time and money to advertise, offer for sale, and promote Complainant’s services and goods through its JUNO marks.

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 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.

Identical and/or Confusingly Similar

Complainant alleges rights in the JUNO and JUNO.COM marks through multiple registrations with the United States Patent and Trademark Office.  The JUNO marks have been used in commerce since at least 1995.  Complainant has established rights in the JUNO marks pursuant to Policy ¶ 4(a)(i). See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that the registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption); see also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”).

The disputed domain name <billing-juno.com> is confusingly similar to Complainant’s JUNO marks because the name fully incorporates Complainant’s JUNO mark. See Oki Data Americas, Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001) (“The fact that a domain name incorporates a Complainant’s registered mark is sufficient to establish identical or confusing similarity for purposes of the Policy.”); see also Nikon, Inc. v. Technilab, Inc., D2000-1774 (WIPO Feb. 26, 2000) (holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name). 

Respondent has merely added a generic term and a hyphen to Complainant’s mark, which fails to distinguish the domain name from the mark under Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd.  v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of Complainant combined with a generic word or term); see also Westfield Corp., Inc. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element); see also Teradyne Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000) (“[The] addition of a hyphen to the registered mark is an insubstantial change.").

Accordingly, the Panel finds that the <billing-juno.com> domain name is confusingly similar to Complainant’s JUNO marks under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

The disputed domain name is not being used in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) because the domain name is used in a fraudulent scheme to deceive Juno users into providing their credit card and personal information. See Amer. Int’l Group, Inc. v. Busby d/b/a AIG Mergers and Acquisitions, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that as Respondent attempted to pass itself off as Complainant online, through wholesale copying of Complainant’s website, Respondent had no rights or legitimate interests in the disputed domain name); see also Vivendi Universal Games & Davidson & Associates, Inc. v. Ballard, FA 146621 (Nat. Arb. Forum March 13, 2002) (stating that where Respondent copied Complainant’s website in order to steal account information from Complainant’s customers, that Respondent’s “exploitation of the goodwill and consumer trust surrounding the BLIZZARD NORTH mark to aid in its illegal activities is prima facie evidence of a lack of rights and legitimate interests in the disputed domain name”).

Respondent has not been commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (finding that the WHOIS information, and its failure to imply that Respondent is commonly known by the disputed domain name, is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark).

Furthermore, Respondent’s assertions of identity theft in the Response show that Respondent lacks rights and legitimate interests in the disputed domain name. See Goldfinger Bullion Reserve Corp. v. No c/o Deyoung, FA 155893 (Nat. Arb. Forum June 12, 2003) (“Respondent . . . avers that it was the victim of identity theft and the disputed domain name was registered without its consent . . . The Panel finds that this is evidence that Respondent lacks rights or legitimate interests in the disputed domain name.”).

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <billing-juno.com> domain name under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

The domain name <billing-juno.com> was registered and used in bad faith by using the name for fraudulent purposes. See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that Respondent's use of <monsantos.com> to misrepresent itself as Complainant and to provide misleading information to the public supported a finding of bad faith); see also Vivendi Universal Games & Davidson & Associates, Inc. v. Ballard, FA 146621 (Nat. Arb. Forum March 13, 2002) (finding that where Complainant’s mark was appropriated at registration, and a copy of Complainant’s website was used at the domain name in order to facilitate the interception of Complainant’s customer’s account information, Respondent’s behavior evidenced bad faith use and registration of the domain name).

The disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) by intentionally attempting to attract Internet users to its online location for commercial gain by creating a likelihood of confusion with Complainant’s registered JUNO marks. See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent used the confusingly similar domain name to attract Internet users to its commercial website); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the disputed domain name was obviously connected with Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).

The Panel thus finds that Respondent registered and used the <billing-juno.com>  domain name in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <billing-juno.com> domain name be TRANSFERRED from Respondent to Complainant.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: March 29, 2004

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