Jesel, Inc. v. Hosting Services, Inc. c/o Hosting Services
Claim Number: FA0802001142778
Complainant is Jesel, Inc. (“Complainant”), represented by Peter
T. Wakiyama, of Wolf, Block, Schorr and Solis-Cohen LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <jesel-online.com>, registered with Enom, Inc.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 6, 2008; the National Arbitration Forum received a hard copy of the Complaint on February 7, 2008.
On February 7, 2008, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <jesel-online.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. 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 February 12, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 3, 2008 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@jesel-online.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 7, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant is a leader in the automotive racing parts industry, and has used the JESEL mark since 1980 in connection with automobile parts, including rocker arms, roller lifters, and belt driven camshaft drives, and is currently the preeminent supplier for teams competing in the NASCAR and NHRA racing circuits.
Complainant owns a trademark registration for the JESEL trademark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,244,465, issued May 22, 2007), and also owns the <jesel.com> and <jeselonline.com> domain names.
Complainant also asserts that it has not licensed or otherwise authorized Respondent to use its JESEL mark.
Respondent registered the <jesel-online.com> domain name on August 13, 2007.
The disputed domain name resolves to a website that advertises Respondent’s “money tree” business opportunity.
Respondent’s <jesel-online.com> domain name is confusingly similar to Complainant’s JESEL mark.
Respondent does not have any rights to or legitimate interests in the <jesel-online.com> domain name.
Respondent registered and uses the <jesel-online.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark 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 was registered and is being used by Respondent in bad faith.
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. 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 a 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.”
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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant asserts rights in the JESEL mark through its registration of the mark with the USPTO. This registration is sufficient to establish Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004): “Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”
Respondent’s <jesel-online.com>
domain name incorporates Complainant’s entire JESEL mark, and merely adds a
hyphen and the generic term “online.” Neither
of these additions to Complainant’s mark renders the disputed domain name
distinct from the mark. Thus the <jesel-online.com> domain name is
confusingly similar to Complainant’s JESEL mark under Policy ¶ 4(a)(i). See Health Devices Corp. v.
[T]he addition of punctuation marks such as hyphens is irrelevant in
the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).
See also Broadcom Corp. v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001) (finding the <broadcomonline.com> domain name is confusingly similar to a complainant’s BROADCOM mark).
Moreover, Respondent’s inclusion of the generic top-level domain “.com” is irrelevant to our inquiry, because a top-level domain is required of all domain names. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003):
The addition of a top-level domain is irrelevant when establishing
whether or not a mark is identical or confusingly similar, because top-level
domains are a required element of every domain name.
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Under Policy ¶ 4(a)(ii), after Complainant has made out a prima facie showing that Respondent lacks rights to or legitimate interests in the disputed domain name, the burden shifts to Respondent to refute that showing. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once a complainant asserts that a respondent has no rights to or legitimate interests with respect to a domain, the burden shifts to that respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under appropriate circumstances, the assertion by a complainant that a respondent has no right to or legitimate interest in a contested domain name is sufficient to shift the burden of proof to that respondent to demonstrate that such a right or legitimate interest exists).
In the present case, Complainant has established a prima facie showing under the Policy.
And, based on Respondent’s failure to answer the Complaint, we may presume that Respondent lacks rights to and legitimate interests in the <jesel-online.com> domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence); see also Eroski, So. Coop. v. Getdomains Ishowflat Ltd., D2003-0209 (WIPO July 28, 2003):
It
can be inferred that by defaulting Respondent showed nothing else but an
absolute lack of interest on the domain name.
Nevertheless, we will examine the record to determine if there is any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name as contemplated by Policy ¶ 4(c).
We begin by observing that Complainant asserts that
Respondent’s <jesel-online.com> domain
name resolves to a website offering a “money tree” business opportunity. Respondent does not deny this allegation, and
we may presume that Respondent benefits financially by means of click-through
fees when Internet users take advantage of this opportunity. This use of the domain name constitutes
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). See MSNBC
Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights
or legitimate interests in the famous MSNBC mark where a respondent attempted
to profit by using a complainant’s mark to redirect Internet traffic to its own
website); see also Bank of Am. Corp. v. Nw. Free
Cmty. Access, FA 180704 (Nat.
Arb. Forum Sept. 30, 2003):
Respondent's demonstrated intent to divert Internet users
seeking Complainant's website to a website of Respondent and for Respondent's
benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use
under Policy ¶ 4(c)(iii).
Moreover, Respondent’s WHOIS information indicates that
Respondent is “Hosting Services Inc.,” and there is no other evidence in the
record to suggest that Respondent is commonly known by the <jesel-online.com> domain name. Complainant also asserts that it has not
licensed or otherwise authorized Respondent to use its JESEL mark. Again, Respondent does not deny this
allegation. Accordingly, we conclude
that Respondent is not commonly known by the <jesel-online.com> domain name, and thus lacks rights and
legitimate interests under Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003): “Respondent has registered the domain name
under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration
information, Respondent is not commonly known by the [<awvacations.com>]
domain name.” See also Compagnie de Saint
Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no
rights or legitimate interests where a respondent was not commonly known by the
mark there in issue and never applied for a license or permission from a
complainant to use a trademarked name).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
As earlier mentioned above, we presume that Respondent profits when Internet users take advantage of the “money tree” business opportunity offered on the website that resolves from the <jesel-online.com> domain name. We thus conclude that Respondent is attempting to capitalize on the goodwill associated with Complainant’s JESEL mark by attracting Internet users who may be confused as to the source of the disputed domain name, which is confusingly similar to Complainant’s mark. Such use indicates that Respondent registered and is using the <jesel-online.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that a respondent registered and used a domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because that respondent used a domain name confusingly similar to a competing mark to attract Internet users to its commercial website); see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if a respondent profits from its diversionary use of a complainant's mark when a domain name resolves to a commercial website and that respondent fails to contest a complaint, it may be concluded that that respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <jesel-online.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: March 18, 2008
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