Jamba Juice Company v. Domain Administrator / Paydues Inc
Claim Number: FA1205001443064
Complainant is Jamba Juice Company (“Complainant”), represented by David M. Kramer of DLA Piper LLP (US), Washington, D.C., USA. Respondent is Domain Administrator / Paydues Inc (“Respondent”), New Mexico, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <jambajuicefranchise.org>, registered with GoDaddy.com, 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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 9, 2012; the National Arbitration Forum received payment on May 10, 2012.
On May 9, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <jambajuicefranchise.org> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 14, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 4, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@jambajuicefranchise.org. Also on May 14, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 6, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 <jambajuicefranchise.org> domain name is confusingly similar to Complainant’s JAMBA JUICE mark.
2. Respondent does not have any rights or legitimate interests in the <jambajuicefranchise.org> domain name.
3. Respondent registered or used the <jambajuicefranchise.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
1. Complainant has rights in the JAMBA JUICE mark, which it uses in connection with a leading food and beverage business specializing in fruit and vegetable-based smoothies;
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."
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.
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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant argues that it uses the JAMBA JUICE mark in connection with a food and beverage business that specializes in smoothies made from fruits and vegetables. Complainant alleges that it has rights in the mark. Complainant claims that it owns USPTO trademark registrations for the JAMBA JUICE mark (e.g., Reg. No. 2,097,875 registered November 5, 2006). Panels have found that the registration of a mark with a federal trademark authority is evidence of a complainant’s rights in a mark. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations). Therefore, the Panel finds that Complainant has rights in the JAMBA JUICE mark pursuant to Policy ¶ 4(a)(i).
Complainant asserts that Respondent’s <jambajuicefranchise.org> domain name is confusingly similar to the JAMBA JUICE mark. Complainant asserts that Respondent simply adds the descriptive term “franchise,” removes the spaces between words, and adds the generic top-level domain (“gTLD”) “.org” to the JAMBA JUICE mark in order to create the <jambajuicefranchise.org> domain name. The Panel finds that the addition of a descriptive term does not differentiate the <jambajuicefranchise.org> domain name from the JAMBA JUICE mark. See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business). Additionally, the Panel finds that the deletion of spaces and the addition of a gTLD does not negate a finding of confusing similarity. See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”). Therefore, the Panel finds that the <jambajuicefranchise.org> domain name is confusingly similar to the JAMBA JUICE mark pursuant to Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant contends that Respondent does not have rights or legitimate interests in the <jambajuicefranchise.org> domain name. Panels have held that one way to demonstrate rights or legitimate interests in a disputed domain name is to provide evidence of being commonly known by the domain name, but past panels has also found that a respondent who cannot demonstrate this will be found to not be commonly known by the disputed domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Complainant contends that Respondent and Complainant do not have a business relationship and that Respondent has not been licensed or otherwise authorized to use the JAMBA JUICE mark. Additionally, the Panel has on the record the WHOIS record for the <jambajuicefranchise.org> domain name in which “Domain Administrator / Paydues Inc” is listed as the domain name registrant. Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the <jambajuicefranchise.org> domain name as the Panel finds that Respondent is not commonly known by the <jambajuicefranchise.org> domain name under Policy ¶ 4(c)(ii).
Complainant asserts that Respondent uses the <jambajuicefranchise.org> domain name to operate a phishing scheme. Complainant argues that the <jambajuicefranchise.org> domain name resolves to a website that purports to offer information on franchising opportunities with Complainant but requires Internet use to provide personally identifiable information, such as an e-mail address and phone number in order to access the information. The panel in Allianz of Am. Corp. v. Bond, FA 690796 (Nat. Arb. Forum June 12, 2006), found that the operation of a phishing scheme on a disputed domain name is evidence of a lack of rights and legitimate interests. Therefore, the Panel finds that Respondent does not have rights or legitimate interests in the <jambajuicefranchise.org> domain name pursuant to Policy ¶ 4(a)(ii).
Complainant argues that Respondent has developed a pattern of registering disputed domain names in bad faith. Complainant asserts that Respondent was a party to multiple cases where the panel found bad faith and ordered the disputed domain names to be transferred from Respondent to the respective complainants. See PFIP, LLC v. Paydues Inc, FA 1411907 (Nat. Arb. Forum Nov. 25, 2011); see also Batteries Plus, LLC v. Jason Rager/ Paydues Inc., FA 1418065 (Nat. Arb. Forum Jan. 10, 2012); see also Famous Dave’s of Am., Inc. v. Paydues Inc., FA 1420191 (Nat. Arb. Forum Jan 23, 2012); see also Luby’s Fuddruckers Rests., LLC v. Paydues Inc., FA 1421339 (Nat. Arb. Forum Feb. 7, 2012). Panels have found that, where a respondent has been a party to multiple UDRP disputes in which the disputed domain name was ordered to be transferred to the complainant, a pattern of bad faith exists, thus allowing an inference of bad faith in future cases. See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants). Therefore, the Panel finds that Respondent registered and uses the <jambajuicefranchise.org> domain name in bad faith under Policy ¶ 4(b)(ii).
Complainant argues that Respondent registered and is using the disputed domain name in bad faith. Complainant contends that Respondent’s use of the <jambajuicefranchise.org> domain name, to operate a phishing scheme by falsely alleging to offer information on franchise opportunities with Complainant, is disruptive. Complainant contends that Respondent is a competitor of Complainant and that its use of the <jambajuicefranchise.org> domain name and Complainant’s marks is disruptive. Therefore, the Panel finds that Respondent’s registration and use of the <jambajuicefranchise.org> domain name is disruptive under Policy ¶ 4(b)(iii) and thus that Respondent registered and is using the <jambajuicefranchise.org> domain name in bad faith. See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between the complainant and the respondent, the respondent likely registered the contested domain name with the intent to disrupt the complainant's business and create user confusion).
Complainant asserts that Respondent’s bad faith is further evidenced by the fact that Respondent registered and is using the <jambajuicefranchise.org> domain name in order to confuse Internet users as to the source of the <jambajuicefranchise.org> domain name and to take commercial advantage of mistakes made as a result of this confusion. Complainant contends that Respondent bad faith registration is demonstrated by the confusingly similar nature of the <jambajuicefranchise.org> domain name because it is sure to cause confusion as to whether the <jambajuicefranchise.org> domain name is affiliated with Complainant. Complainant also claims that Respondent’s use of the <jambajuicefranchise.org> domain name is certainly a product of bad faith given that Respondent uses Complainant’s marks and logo and holds itself out to be associated with Complainant in order to operate a fraudulent scheme of obtaining personal information from Internet users for commercial gain. Therefore, the Panel finds that Respondent registered and is using the <jambajuicefranchise.org> domain name in bad faith because of Respondent’s intent to attract, for commercial gain, Internet users to the <jambajuicefranchise.org> domain name by creating a likelihood of confusion as to the source of the disputed domain name under Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
Complainant further argues that Respondent demonstrates the bad faith component to its registration and use of the <jambajuicefranchise.org> domain name by operating a phishing scheme at the <jambajuicefranchise.org> domain name’s resolving website. Complainant asserts that the <jambajuicefranchise.org> domain name resolves to a website purporting to offer information about potential franchise opportunities. However, Complainant contends that, prior to receiving the promised information, Internet users must supply personal information such as their name and address. Panels have held that phishing schemes are clear evidence of bad faith. See Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (“The domain name <billing-juno.com> was registered and used in bad faith by using the name for fraudulent purposes.”). As such, the Panel finds that Respondent registered and is using the <jambajuicefranchise.org> domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant argues that Respondent had actual and/or constructive knowledge of Complainant's rights in the NORGREN mark. Complainant argues that the confusingly similar nature of the <jambajuicefranchise.org> domain name, Respondent's use of Complainant’s mark and logo, and Respondent’s references to Complainant on the <jambajuicefranchise.org> domain name’s resolving website indicates that Respondent had actual knowledge of Complainant's mark and rights. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <jambajuicefranchise.org> domain name be TRANSFERRED from Respondent to Complaint.
John J. Upchurch, Panelist
Dated: June 19, 2012
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