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JPMorgan Chase & Co. v. Byeong Deog Im [2005] GENDND 1273 (26 July 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

JPMorgan Chase & Co. v. Byeong Deog Im

Case No. D2005-0543

1. The Parties

Complainant is JPMorgan Chase & Co. (“Complainant”), New York, United States of America.

Respondent is Byeong Deog Im (“Respondent”), Gyeongsangbukdo, Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <jpmorganchase.net> (the “Domain Name”) is registered with Tucows Inc., Canada (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 20, 2005 by e-mail and on May 23, 2005, in hard copy. On May 23, 2005, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the Domain Name. On May 24, 2005, the Registrar transmitted by e-mail 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.

On May 30, 2005, 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”) and in accordance with the Rules, paragraphs 2(a) and 4(a), formally notified the Respondent of the Complaint. As required by the Rules, paragraph 5(a), the due date for a Response was set as per June 19, 2005. Respondent did not submit any response within the said deadline. Accordingly, the Center notified the Parties of Respondent’s default on June 21, 2005.

On July 18, 2005, the Center asked Tobias Zuberbühler to serve as sole panelist in this matter. After submitting the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7, the undersigned was properly appointed on July 19, 2005.

4. Factual Background

Complainant is a bank holding corporation organized and existing under the laws of the state of Delaware with its world headquarters in New York, New York. Suffice it to say that Complainant, with a physical presence in over 50 countries, is one of the big global players in the banking and financial services industry worldwide. Chase National Bank, founded in 1877, and J.P. Morgan & Co., founded in 1861, two predecessors of Complainant have used “Chase” and “JPMorgan” as part of their trade names since their respective incorporation. CHASE (USPTO Reg. No. 1,521,765) and J.P.MORGAN (USPTO Reg. No. 1,572,322) are registered service marks and trademarks for use in association with various banking and financial services and publications since 1989. Complainant is the owner of said trademarks. An application for a trademark specifically identifying the combined denomination “JPMORGANCHASE” is currently pending.

Complainant, to market its products and services, is also present on the World Wide Web under the domain names <jpmorganchase.com>, <chase.com>, and <jpmorgan.com>, among others.

Respondent is an individual with his domicile in the Republic of Korea. As AT&T Corp. v. Byeong Deog Im, WIPO Case No. D2004-0026, suggests, Respondent has engaged in cybersquatting activities before.

5. Parties’ Contentions

A. Complainant

Complainant contends that the Domain Name is identical or at least confusingly similar to its aforementioned marks, that Respondent has no rights or legitimate interests in respect of the Domain Name, and that the Domain Name was registered and is being used in bad faith. Hence, it requests the transfer of the Domain Name.

Additional contentions, if relevant to the dispute’s decision, are included in the following discussions and findings.

B. Respondent

Respondent was duly notified of the administrative proceedings as stipulated under paragraph 2(a) of the Rules, but did not reply to Complainant’s contentions. Complainant’s contentions are thus deemed unchallenged (See, e.g., Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).

6. Discussion and Findings

Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:

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

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

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

A. Identical or Confusingly Similar

Complainant contends that the Domain Name registered by Respondent is identical to the combination of its trademarks J.P.MORGAN and CHASE. As there is currently no registered mark for the combination of the above denominations, Complainant as such contends the Domain Name to be confusingly similar to either J.P.MORGAN or CHASE. As the Domain Name is <jpmorganchase.net>, the only distinguishing element between the two marks and the Domain Name remains the generic top-level domain “.net”.

UDRP case law has established in a long series of precedents that in determining identity or confusing similarity under the Policy any generic top-level domain is excluded from consideration (See, e.g., Ruby’s Diner, Inc. v. Joseph W. Popow, WIPO Case No. D2001-0868). As the Domain Name is but a combination of two famous marks of one and the same owner, it is clearly confusingly similar to both of Complainant’s marks.

Thus, Complainant has met the burden of proof as set forth under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

According to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, inter alia, by showing any of the following elements:

(i) before any notice of the dispute, Respondent’s 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 and services; or

(ii) Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or

(iii) Respondent is 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.

Complainant asserts that Respondent is not a licensee of, nor is it otherwise associated with Complainant or any of its predecessors or subsidiaries. Consequently, Complainant had sent two cease and desist letters to Respondent informing him of its marks and demanding its immediate transfer.

Respondent, on the other hand, has not provided the Panel with any information that would suggest his use, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services, or a non-commercial or fair use of the Domain Name. Furthermore, Respondent failed to demonstrate that it was commonly known under the Domain Name.

Indeed, quite to the contrary, Respondent’s conduct indicates that it has registered and used the Domain Name for the sole purpose of taking advantage of Complainant’s famous marks and well-known trade name.

Therefore, the requirements of paragraph 4(a)(ii) of the Policy have been met as well.

C. Registered and Used in Bad Faith

Paragraph 4(b) states the following four non-exclusive circumstances which, if found present by the Panel, are deemed to provide evidence of bad faith on the part of the Respondent in registering and using the Domain Name:

(i) circumstances indicating that Respondent has registered or acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark, or to a competitor of Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or

(ii) Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or its location.

It is inconceivable to the Panel that Respondent, at the time of the Domain Name’s registration on April 10, 2002, could not have been aware of Complainant’s trade name and corresponding marks. The registration of a domain name incorporating the two marks, J.P.MORGAN and CHASE, and Complainant’s trade name, JPMorgan Chase & Co., as such indicates that Respondent knew of these denominations.

As Respondent’s website displays a collection of thumbnail photographs of flowers with no clear commercial use, however, a finding of bad faith registration and use of the Domain Name as set out under 4(b)(iv) of the Policy cannot be made.

The Panel cannot perceive, however, how the said content of Respondent’s website under the Domain Name could amount to any legitimate use of the Domain Name. The website’s non-sensical content clearly demonstrates that Respondent’s sole intention was and is to passively hold the Domain Name and thereby prevent Complainant from reflecting its marks in a corresponding domain name under the generic top level domain “.net”. The Panel, therefore, is convinced that said photographs are for the sole purpose of concealing the illegitimate intentions of Respondent behind his registration and use of the Domain Name. Therefore, bad faith registration and use as set forth under paragraph 4(b)(ii) of the Policy is established.

In addition, the incorporation of a world-famous trade name and of two very well-known marks of one of the largest financial institutions worldwide into a domain name, considering the totality of Respondent’s behavior and its previous engagement in cybersquatting with an identical pattern, must as such already lead to a finding of bad faith registration and use of the Domain Name (See, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

7. Decision

In consideration of the above, the Panel holds that the Domain Name is confusingly similar to two registered marks of Complainant, that Respondent has no rights or legitimate interests in respect of the Domain Name, and that the Domain Name has been registered and is used in bad faith.

Therefore, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <jpmorganchase.net>, be transferred to Complainant.

Tobias Zuberbühler
Sole Panelist

Dated: July 26, 2005