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Generic Top Level Domain Name (gTLD) Decisions |
J&P Cycles, Inc. v. JackPot Bicycle
Outlet UK
Claim
Number: FA0411000368458
Complainant is J&P Cycles, Inc. (“Complainant”), PO Box 138, Anamosa,
IA 52205. Respondent is JackPot Bicycle Outlet UK (“Respondent”),
39 IV. Franko St., Odessa, Odessa 65020, UA.
The
domain name at issue is <jpcycle.com>, registered with Bulkregister,
Llc.
The
undersigned certifies that he or she has acted independently and impartially and
to the best of his or her knowledge has no known
conflict in serving as
Panelist in this proceeding.
James
A. Crary as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on November
22, 2004; the National Arbitration
Forum received a hard copy of the Complaint
on November 22, 2004.
On
November 23, 2004, Bulkregister, Llc. confirmed by e-mail to the National
Arbitration Forum that the domain name <jpcycle.com> is registered
with Bulkregister, Llc. and that Respondent is the current registrant of the
name. Bulkregister, Llc. has verified
that Respondent is bound by the Bulkregister,
Llc. 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
November 24, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"),
setting
a deadline of December 14, 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@jpcycle.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification,
the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
December 22, 2004, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration
Forum appointed
James A. Crary as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration Forum
has discharged its
responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (the "Rules")
"to employ reasonably
available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision
based on the documents submitted and in accordance with the ICANN Policy, ICANN
Rules,
the National Arbitration Forum's Supplemental Rules and any rules and
principles of law that the Panel deems applicable, without
the benefit of any
Response from Respondent.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <jpcycle.com>
domain name is confusingly similar to Complainant’s J&P CYCLES mark.
2. Respondent does not have any rights or
legitimate interests in the <jpcycle.com> domain name.
3. Respondent registered and used the <jpcycle.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant
operates a retail store and retail mail order catalog featuring motorcycles,
motorcycle parts and motorcycle accessories.
Complainant has registered its J&P CYCLES mark with the United
States Patent and Trademark Office (“USPTO”) (Reg. No. 2,027,275,
issued
December 31, 1996). Complainant has
also operated a commercial website at the <jpcycles.com> domain name for
over six years.
Respondent
registered the <jpcylce.com> domain name on January 8, 2001. Respondent’s domain name resolves to a
search engine website featuring links to competing motorcycle and
motorcycle-related companies.
Paragraph 15(a)
of 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."
In view of
Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of Complainant's
undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate
pursuant to paragraph 14(b) of
the Rules.
Paragraph 4(a)
of the Policy requires that 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; and
(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.
Complainant has
established rights in the J&P CYCLES mark through registration with the
USPTO. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5,
2002) (finding that Panel decisions have held that 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.”).
Respondent’s <jpcycle.com>
domain name is confusingly similar to Complainant’s J&P CYCLES mark. Respondent’s domain name incorporates
Complainant’s mark in its entirety and merely deletes the ampersand and the
letter “s.” Such minor alterations are
not sufficient to overcome a finding of confusing similarity pursuant to Policy
¶ 4(a)(i). See McKinsey Holdings, Inc. v. Indidom,
D2000-1616 (WIPO Jan. 31, 2001) (finding that the removal of the ampersand from
“McKinsey & Company” does not affect the user’s
understanding of the domain
name, and therefore the domain name <mckinseycompany.com> is identical
and/or confusingly similar
to the mark “McKinsey & Company”); see also Universal City Studios, Inc. v.
HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the
letter “s” from Complainant’s UNIVERSAL STUDIOS STORE mark did not change
the
overall impression of the mark and thus made the disputed domain name confusingly
similar to it); see also Nat’l
Geographic Soc’y v. Stoneybrook Invs., FA 96263 (Nat. Arb. Forum Jan. 11,
2001) (finding that the domain name <nationalgeographics.com> was
confusingly similar to
Complainant’s “National Geographic” mark).
Additionally,
Respondent’s addition of the generic top-level domain “.com” to Complainant’s
mark does not negate the confusing similarity
between Respondent’s domain name
and the mark pursuant to Policy ¶ 4(a)(i).
See Pomellato S.p.A v.
Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com>
identical to Complainant’s mark because the generic top-level domain
(gTLD)
“.com” after the name POMELLATO is not relevant); see also Rollerblade, Inc. v. McCrady, D2000-0429
(WIPO June 25, 2000) (finding that the top-level of the domain name such as
“.net” or “.com” does not affect the domain
name for the purpose of determining
whether it is identical or confusingly similar).
Furthermore, the
omission of the space between the terms in Complainant’s J&P CYCLES mark is
insufficient to distinguish the domain
name from the mark. See
Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan.
7, 2002) (finding <hannoverre.com> to be identical to HANNOVER RE, “as
spaces are impermissible
in domain names and a generic top-level domain such as
‘.com’ or ‘.net’ is required in domain names”); see also Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO
Nov. 16, 2000) (finding that the domain name <wembleystadium.net> is
identical to the WEMBLEY STADIUM mark).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
failed to respond to the Complaint.
Therefore, the Panel accepts all reasonable allegations set forth in the
Complaint as true. See Am.
Online, Inc. v. Clowers, FA 199821 (Nat. Arb. Forum Nov. 14, 2003)
(finding that the failure to challenge a complainant’s allegations allows a
panel to accept
all of complainant’s reasonable allegations and inferences as
true); see also Wells
Fargo & Co. v. Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003)
(finding that the failure to respond to a complaint allows a panel to make
reasonable inferences
in favor of a complainant and accept complainant’s
allegations as true).
In addition, the
Panel construes Respondent’s failure to respond as an admission that Respondent
lacks rights and legitimate interests
in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO
Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as
an admission that they have no
legitimate interest in the domain names); see also Honeywell Int’l Inc. v. Domain Deluxe, FA 269166 (Nat. Arb. Forum June 29,
2004) (“The failure of Respondent to respond to the Complaint functions both as
an implicit
admission that Respondent lacks rights to and legitimate interests
in the domain names, as well as a presumption that Complainant’s
reasonable
allegations are true.”).
Furthermore, a
registrant that uses a domain name, which is identical or confusingly similar
to a third-party mark, to market goods
or services that directly compete with
those offered by the third party under its mark has been found to be neither a bona
fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii). Respondent’s domain name resolves to a website linking to
motorcycle-related goods and products in competition with those produced
by
Complainant. Thus, Respondent’s use of
a domain name confusingly similar to Complainant’s mark is not a use in
connection with a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name
pursuant
to Policy ¶ 4(c)(iii). See Am. Online, Inc. v. Fu, D2000-1374 (WIPO
Dec. 11, 2000) (“[I]t would be unconscionable to find a bona fide offering of
services in a respondent’s operation
of web-site using a domain name which is
confusingly similar to the Complainant’s mark and for the same business”); see
also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan.
11, 2002) (finding that Respondent’s use of the disputed domain name to
redirect Internet users
to a financial services website, which competed with
Complainant, was not a bona fide offering of goods or services).
The Panel finds that Respondent’s name, JackPot Bicycle Outlet UK, is
typographically different from <jpcycle.com> domain name. The Panel further infers that Respondent
neither is nor has ever been commonly known by the <jpcycle.com> domain
name pursuant to Policy ¶ 4(c)(ii). See
Neiman Marcus Group, Inc. v.
Neiman-Marcus, FA
135048 (Nat. Arb. Forum Jan. 13, 2003) (noting that “Complainant has established itself as the sole holder of all rights and
legitimate interests in the NEIMAN MARCUS mark,” in holding
that Respondent was
not commonly known by the <neiman-marcus.net> name, despite naming
itself “Neiman-Marcus” in its WHOIS contact information); see also XO
Communications Inc. v. XO Network Operations Ctr. Inc., FA 150786 (Nat.
Arb. Forum Apr. 28, 2003) (finding that evidence indicating that Respondent was
a serial cybersquatter permitted
the inference that Respondent’s
self-proclaimed identity of “XO Network Operations Center Inc.” was insincere,
and thus that Respondent
was not commonly known by the <xonoc.com> or
<xonoc.net> domain names).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has
registered and used the disputed domain name in bad faith pursuant to Policy ¶
4(b)(iii) by registering a domain name
confusingly similar to Complainant’s
mark and using it to market competing motorcycle products. See EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385
(Nat. Arb. Forum July 7, 2000) (finding
that the minor degree of variation from Complainant's marks suggests that
Respondent, Complainant’s competitor, registered
the names primarily for the
purpose of disrupting Complainant's business); see also S. Exposure v.
S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding
Respondent acted in bad faith by attracting Internet users to a website that
competes with Complainant’s business).
Furthermore,
Respondent is capitalizing on the goodwill of the J&P CYCLES mark by using
the disputed domain name to divert Internet
users to a website linking to
Complainant’s competitors. The Panel
infers that Respondent receives click-through fees for redirecting Internet
users to these competing websites.
Since the disputed domain name contains Complainant’s mark, a consumer
searching for Complainant would become confused as to Complainant’s
affiliation
with the resulting website. Therefore,
Respondent’s opportunistic use of the disputed domain name represents bad faith
registration and use under Policy ¶ 4(b)(iv).
See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22,
2002) (finding that if Respondent profits from its diversionary use of
Complainant's mark when
the domain name resolves to commercial websites and
Respondent fails to contest the Complaint, it may be concluded that Respondent
is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see
also Drs. Foster & Smith, Inc. v.
Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where
Respondent directed Internet users seeking Complainant’s site
to its own
website for commercial gain).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <jpcycle.com> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Crary, Panelist
Dated:
January 5, 2005
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