Jireh Industries Ltd. v. DVLPMNT MARKETING, INC. / Domain Administrator
Claim Number: FA1703001719671
Complainant is Jireh Industries Ltd. (“Complainant”), represented by Daniel J. Block, Colorado, USA. Respondent is DVLPMNT MARKETING, INC. / Domain Administrator (“Respondent”), Saint Kitts and Nevis.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <jireh.com>, registered with Wild West Domains, LLC.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 1, 2017; the Forum received payment on March 1, 2017.
On March 2, 2017, Wild West Domains, LLC confirmed by e-mail to the Forum that the <jireh.com> domain name is registered with Wild West Domains, LLC and that Respondent is the current registrant of the name. Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, 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 March 2, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 22, 2017 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@jireh.com. Also on March 2, 2017, 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 Forum transmitted to the parties a Notification of Respondent Default.
On April 5, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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
1. Complainant states it has been using its JIREH mark initially on food processing equipment and later on oilfield equipment since 1983 and on nondestructive testing equipment for industrial applications since 2002, and therefore has common law rights in the mark under Policy ¶ 4(a)(i). Complainant’s mark JIREH is also pending trademark registration under Canadian trademark application number 1,812,148 and is pending under U.S. trademark application, serial number 87,253,650.
2. Respondent’s <jireh.com> domain name[1] is confusingly similar to Complainant’s mark because it merely appends the generic top-level domain (“gTLD”) “.com” to the fully incorporated JIREH mark.
3. Respondent has no rights or legitimate interests in the domain name. Complainant has not licensed or otherwise authorized Respondent to use its JIREH mark in any fashion, and Respondent is not commonly known by the domain name.
4. Further, Respondent has used the domain name to resolve to a website displaying generic links to third-party sites. Such hyperlinks include “Jireh Motorcycle Parts,” “Jehovah Jireh,” and “Free Automotive Software”. Such use cannot be construed as a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
5. Respondent has registered and is using the <jireh.com> domain name in bad faith. Respondent attempts to disrupt the business of Complainant by including competitors’ links on the resolving webpage.
6. Respondent is attempting to attract Internet traffic and commercially benefit from the goodwill of the JIREH mark by creating confusion as to the source, sponsorship, affiliation, or endorsement of its website by using the marks of Complainant. Respondent attempts to disrupt the business of Complainant under Policy ¶ 4(b)(iv).
B. Respondent
Respondent failed to submit a Response in this proceeding.
The record in this proceeding does not contain evidence that Complainant has rights in the JIREH mark within the meaning of Policy ¶ 4(a)(i).
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(f), 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 (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 has pending applications with both Canada and the U.S. for trademarks on their JIREH mark. Pending trademark applications do not confer rights under Policy ¶ 4(a)(i). See ValueVapor LLC v. Vicki Oxman, FA 1542157 (Forum Mar. 20, 2014) (denying Complainant’s rights under Policy ¶ 4(a)(i) as “[t]here is no evidence of a registered trademark and it has long been held that a pending application for registration is not sufficient to prove trademark rights.”). A complainant is not required to register a trademark for the purposes of this proceeding if the complainant can show common law rights in a mark. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark). Therefore, the Panel will address Complainant’s potential common law rights.
Common law rights arise where a complainant provides evidence that supports a secondary meaning, which may include evidence of sales under a mark, length of use of a mark, advertising expenditures, etc. See Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA 1625750 (Forum July 17, 2015) (holding, “Complainant has provided evidence of secondary meaning by providing evidence of length of use in the mark; evidence of holding an identical domain name; media recognition; and promotional material/advertising (including letterhead and business cards).
However, Complainant has failed to provide any evidence of the kind that would satisfy its burden of proving common law rights. Complainant’s evidence is limited merely to the statements that it has been using its JIREH mark initially on food processing equipment and later on oilfield equipment since 1983 and on nondestructive testing equipment for industrial applications since 2002. Such assertions alone, without facts to support a claim of common law rights, are insufficient to satify the requirements of the Policy. Accordingly, the Panel finds that Complainant has not supported its allegations of use of the JIREH mark since 1983, or provided other sufficient evidence, necessary to establish common law rights.
Complainant, having failed to establish that it has rights under Policy ¶ 4(a)(i) in the JIREH mark, the Panel concludes that relief shall be DENIED without prejudice.
Accordingly, it is Ordered that the <jireh.com> domain name REMAIN WITH Respondent.
Bruce E. Meyerson, Panelist
Dated: April 14, 2017
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