Commission Junction, Inc. v. Events Multimedia Pvt Ltd / Domain Service / Events Computer Design / Pratheesh
Claim Number: FA1202001428729
Complainant is Commission Junction, Inc. (“Complainant”), represented by Lawrence G. Townsend of Owen, Wickersham & Erickson, P.C., California, USA. Respondent is Events Multimedia Pvt Ltd / Domain Service / Events Computer Design / Pratheesh (“Respondent”), represented by Rakesh Prabhu of ALMT Legal, India.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <cjonlinemedia.com> and <cjppcnetwork.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a publicdomainregistry.com.
The undersigned, Daniel B. Banks, Jr., as Panelist, 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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 8, 2012; the National Arbitration Forum received payment on February 8, 2012.
On February 9, 2012, Directi Internet Solutions Pvt. Ltd. d/b/a publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum that the <cjonlinemedia.com> and <cjppcnetwork.com> domain names are registered with Directi Internet Solutions Pvt. Ltd. d/b/a publicdomainregistry.com and that Respondent is the current registrant of the names. Directi Internet Solutions Pvt. Ltd. d/b/a publicdomainregistry.com has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a publicdomainregistry.com 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 February 22, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 13, 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@cjonlinemedia.com and postmaster@cjppcnetwork.com. Also on February 22, 2012, the Written Notice of the Complaint, notifying Respondent of the email 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.
Respondent’s Response was received and determined to be complete on March 12, 2012.
Complainant’s Additional Submission was received on March 16, 2012 and deemed compliant with Supplemental Rule 7.
Respondent's Additional Submission was received on March 25, 2012 and deemed compliant with Supplemental Rule7.
On February 22, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Daniel B. Banks, Jr., 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant alleges:
1. Respondent, Events Multimedia Pvt Ltd/Domain Service, and Respondent, Events Computer Design/Pratheesh, are the same entity.
2. Complainant formerly owned trademark registrations for its CJ.COM mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,443,948 registered April 17, 2001) before allowing them to lapse.
3. Complainant is an online advertising company that operates in the affiliate marketing industry.
4. Complainant was founded in 1998.
5. Respondent registered the disputed domain names no earlier than March 5, 2010.
6. Respondent’s disputed domain names are confusingly similar to Complainant’s CJ.COM mark.
7. Respondent uses the disputed domain names to offer competing affiliate marketing services.
8. Respondent is not affiliated or connected with Complainant and does not have a license or authorization to use Complainant’s CJ.COM mark.
9. Respondent offered to sell the disputed domain names to Complainant for “$1-2mm US.”
10. Respondent disrupts Complainant’s business with its registration and use of the disputed domain names.
11. Respondent is attempting to commercially gain from Internet users’ confusion as to Complainant’s affiliation with the disputed domain names.
12. Respondent had actual or constructive knowledge of Complainant’s rights in the CJ.COM mark.
B. Respondent alleges:
1. Respondent is the owner of both of the disputed domain names.
2. Respondent uses “CJ” in the domain names because “CJ” relates to Respondent’s family names.
3. Respondent does compete with Complainant’s business, but Respondent’s and Complainant’s customers are extremely educated and Internet-savvy and will not be confused between Respondent’s websites and Complainant’s websites.
4. Respondent’s offer to sell the disputed domain name was designed to be an “‘astronomical’ amount” that would stop Complainant from continuing to negotiate with Respondent.
5. Respondent registered and uses the disputed domain names in good faith for its online advertising business.
C. Complainant, in its Additional Submission, alleges:
1. Respondent is the correct owner of both of the disputed domain names.
2. Respondent failed to address Complainant’s rights in its CJ.COM mark.
3. CJ are not Respondent’s initials and the fact that Respondent’s family uses the initials does not make Respondent commonly known by the disputed domain names.
4. Respondent’s offer to sell the disputed domain names was not “spur-of-the-moment” because Respondent offered to sell the domain names for “10mm USD” on October 15, 2011 and again offered to sell the domain names for “$1mm - $2mm” on October 16, 2011.
D. Respondent, in its Additional Submission, restates:
1. The initials CJ are associated with the family of Respondent.
2. Respondent quoted an astronomical amount to Complainant for the purchase of the domains to discontinue any further dialogue.
1 - The disputed domain names are confusingly similar to a trademark or service mark in which Complainant has rights.
2 - Respondent has no rights or legitimate interests in respect of the domain names.
3 - The domain names were registered and are being used 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."
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.
(4) 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."
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder. Complainant contends that Respondent, Events Multimedia Pvt Ltd/Domain Service, and Respondent, Events Computer Design/Pratheesh, are the same entity and are both controlled by Sajan James. Complainant claims that the website of Respondent, Events Computer Design, states that it is a subsidiary of Respondent, Events Multimedia Pvt Ltd. Complainant also alleges that the WHOIS information lists the same e-mail address for both disputed domain names. The Panel notes that Respondent admits that the disputed domain names are both controlled by Respondent, Sajan James.
The Panel finds that Complainant has presented sufficient evidence that the disputed domain names are controlled by the same entity and thus chooses to proceed with the instant proceedings.
Complainant provides evidence of two USPTO trademark registrations that Complainant formerly owned for its CJ.COM mark:
Reg. No. 2,443,948 registered April 17, 2001 & cancelled January 19, 2008; &
Reg. No. 2,454,639 registered May 29, 2001 & cancelled December 30, 2011.
As these trademark registrations with the USPTO were cancelled, the Panel finds that Complainant does not currently own any trademark registrations with a national trademark authority for its CJ.COM mark. However, the Panel determines that Complainant is not required to own national trademark registrations if Complainant can demonstrate common law rights in its CJ.COM mark under Policy ¶ 4(a)(i). See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
Complainant alleges that it was founded in 1998 and began offering affiliate marketing services under its CJ.COM mark. Complainant claims that it registered the <cj.com> domain name in 1999 and has continuously used the domain name to host its official website since that time. Complainant argues that it uses Twitter, Facebook, and YouTube to promote its CJ.COM website and that Complainant has been featured in articles discussing its services. See Complainant’s Annexes G-J. Complainant asserts that it was named a Rising Star in the 2002 Technology Fast 500 and that it has been selected as the Affiliate Provider of Choice in the Internet Retailer Top 500 Guide for the past six years. The Panel notes that the above cancelled USPTO trademark registrations were both registered in 2001. Complainant asserts that it has continued to develop and protect its CJ.COM mark in connection with its affiliate marketing services. Based on this evidence, the Panel concludes that Complainant owns common law rights in its CJ.COM under Policy ¶ 4(a)(i). See Ass’n of Tex. Prof’l Educators, Inc. v. Salvia Corp., FA 685104 (Nat. Arb. Forum May 31, 2006) (holding that the complainant had demonstrated common law rights in the ATPE mark through continuous use of the mark in connection with educational services for over twenty-five years); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (finding that the complainant had common law rights in the JERRY DAMSON ACURA mark because it provided sufficient evidence of its continuous use of the mark since 1989 in connection with a car dealership).
Complainant contends that Respondent’s <cjonlinemedia.com> and <cjppcnetwork.com> domain names are confusingly similar to Complainant’s CJ.COM mark. Complainant claims that the disputed domain names combine Complainant’s mark with the descriptive terms “online,” “media,” “ppc,” and/or “network.” The Panel determines that the addition of these descriptive terms fails to adequately distinguish the disputed domain name from Complainant’s mark, and finds that Respondent’s <cjonlinemedia.com> and <cjppcnetwork.com> domain names are confusingly similar to Complainant’s CJ.COM mark according to Policy ¶ 4(a)(i). See Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”); see also 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).
It is noted that Respondent made no contentions with regards to Policy ¶ 4(a)(i).
The Panel finds that Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). 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 argues that Respondent is not commonly known by the <cjonlinemedia.com> and <cjppcnetwork.com> domain names. Complainant contends that Respondent is not affiliated with Complainant and that Respondent is not licensed or permitted to use Complainant’s CJ.COM mark. While Respondent argues that the “CJ” portion of the domain names relates to Respondent’s family initials, Complainant contends in its Additional Submission that Respondent does not have the same initials and does not conduct business under the initials. The Panel examined the WHOIS information and determined that there is no nominal relationship between the disputed domain names and the registrant information. Therefore, the Panel finds that Respondent is not commonly known by the <cjonlinemedia.com> and <cjppcnetwork.com> domain names under Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
According to Complainant, Respondent’s <cjonlinemedia.com> and <cjppcnetwork.com> domain names resolve to websites that offer competing affiliate marketing services. Complainant contends that Respondent is a direct competitor of Complainant and offers nearly identical services, such as “online advertising,” “traffic optimization,” “real-time statistics that permit you to fine-tune your ad,” and “optimizing online [advertising] campaigns.” Complainant argues that Respondent profits from offering these services. The Panel finds that Respondent’s competing use of the disputed domain names is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <cjonlinemedia.com> and <cjppcnetwork.com> domain names. See Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).
Complainant also claims that Respondent offered to sell the <cjonlinemedia.com> and <cjppcnetwork.com> domain names to Complainant. In Complainant’s Additional Submission, Complainant asserts that Respondent offered to sell the domain names for “10mm USD” on October 15, 2011 and again offered to sell the domain names for “$1mm - $2mm” on October 16, 2011. The Panel determines that such an offer exceeded Respondent’s out-of-pocket expenses, and finds that Respondent’s offer to sell demonstrates Respondent’s lack of rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“An attempt by a respondent to sell a domain name to a complainant who owns a trademark with which the domain name is confusingly similar for an amount in excess of out-of-pocket costs has been held to demonstrate a lack of legitimate rights or interests.”).
Complainant avers that Respondent offered to sell the <cjonlinemedia.com> and <cjppcnetwork.com> domain names to Complainant. According to Complainant, Respondent offered to sell the domain names for “$1mm - $2mm.” In Complainant’s Additional Submission, Complainant asserts that Respondent previously offered to sell the domain names for “10mm USD.” Complainant argues that the existence of two offers demonstrates that Respondent’s offer to sell was not a “spur-of-the-moment” decision, as Respondent alleges. The Panel agrees with Complainant, and finds Respondent violated Policy ¶ 4(b)(i) by offering the domain names for sale which is indicative of bad faith registration and use of the <cjonlinemedia.com> and <cjppcnetwork.com> domain names. See Cream Pie Club v. Halford, FA 95235 (Nat. Arb. Forum Aug. 17, 2000) (finding that bad faith existed where the respondent offered the domain name for sale to the complainant for $125,000); see also Kabushiki Kaisha Hitachi Seisakusho (Japan Corp.) v. Fortune Int’l Dev. Ent. Co., D2000-0412 (WIPO July 2, 2000) (finding the respondent’s offer to sell the domain name for $100,000 constitutes bad faith).
Complainant also claims that Respondent’s registration and use of the <cjonlinemedia.com> and <cjppcnetwork.com> domain names disrupts Complainant’s business. Complainant argues that Respondent offers directly competing affiliate marketing services at the websites resolving from the disputed domain names. The Panel finds that Respondent’s offering of competing services is evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Marriott Int’l, Inc. v. MCM Tours, Inc., FA 444510 (Nat. Arb. Forum May 6, 2005) (“The Respondent is a travel agency and thus operates in the same business as the Complainant. The parties can therefore be considered as competitors. The Panel thus finds that the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, which constitutes evidence of registration and use in bad faith under Policy 4(b)(iii).”).
Complainant also argues that Respondent is attempting to create confusion as to Complainant’s affiliation with the disputed domain names in order to attract Internet users to its websites. The Panel notes that Respondent registered and uses the confusingly similar <cjonlinemedia.com> and <cjppcnetwork.com> domain names to offer nearly identical services to those that Complainant offers, which is evidence that Respondent attempts to create confusion. Complainant claims that Respondent commercially gains from this confusion. Based on this evidence, the Panel finds that Respondent registered and uses the confusingly similar <cjonlinemedia.com> and <cjppcnetwork.com> domain names in bad faith under Policy ¶ 4(b)(iv). See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site).
Complainant also alleges that Respondent must have had constructive and/or actual notice of Complainant's rights in the CJ.COM mark prior to registration of the domain names because of Complainant's widespread use of the mark and its trademark registrations with the USPTO. While constructive notice is generally regarded as insufficient to support a finding of bad faith and Complainant’s USPTO trademarks are cancelled, the Panel concludes that Respondent had actual notice of Complainant's mark and thus registered the disputed domain names 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 Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cjonlinemedia.com> and <cjppcnetwork.com> domain names be transferred from Respondent to Complainant.
Daniel B. Banks, Jr., Panelist
Dated: April 8, 2012
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