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Jones International Ltd. v. Kotecha Parag [2002] GENDND 1199 (18 July 2002)


National Arbitration Forum

START-UP TRADEMARK OPPOSITION POLICY

DECISION

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”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <jones.biz>, registered with Namescout.com.

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.

Richard Hill as Panelist.

PROCEDURAL HISTORY

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.

RELIEF SOUGHT

Transfer of the domain name from Respondent to Complainant.

PARTIES’ CONTENTIONS

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

FINDINGS

This Panel finds that the Complainant has not proven that it has a trademark for JONES.

DISCUSSION

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.

Complainant’s Rights in the Mark

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.

Respondent’s Rights or Legitimate Interests

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.

Registration or Use in Bad Faith

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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