Jack In The Box Inc. v. Giovanni Laporta
Claim Number: FA1502001603687
Complainant is Jack In The Box Inc. (“Complainant”), represented by Steven M. Levy, Esquire, Pennsylvania, USA. Respondent is Giovanni Laporta (“Respondent”), Michigan, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <jackinthebox.email> and <jackinbox.email>, registered with GoDaddy.com, 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.
M. Kelly Tillery, Esquire as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 6, 2015; the Forum received payment on February 11, 2015.
On February 6, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <jackinthebox.email> and <jackinbox.email> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 February 12, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 4, 2015 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@jackinthebox.email, postmaster@jackinbox.email. Also on February 12, 2015, 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.
A timely Response was received and determined to be complete on March 4, 2015.
On March 12, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed M. Kelly Tillery, Esquire 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant contends that:
1. it owns, promotes, and enforces its’ distinctive and famous JACK IN THE BOX Trademarks and makes extensive use of them such that they have become famous;
2. it was founded in 1951 and operates and franchises one of the leading fast-food hamburger chains in the United States with more than 2,200 locations;
3. it generates significant sales revenue as a result of its development, promotion, use, and sale of JACK IN THE BOX products and services;
4. its JACK IN THE BOX Marks are aggressively protected through registration and enforcement;
5. it owns many trademark registrations around the world for the JACK IN THE BOX Marks;
6. Respondent’s Disputed Domains are confusingly similar, to Complainant’s JACK IN THE BOX Marks;
7. their mere addition of a TLD to a famous trademark does not avoid confusing similarity;
8. Respondent initially attracts internet users by employing identical or nearly identical copies of Complainant’s JACK IN THE BOX Marks followed by the generic top-level domain “.email”;
9. this particular TLD may enhance confusion by making users think they are being linked to a website or service that is licensed or authorized by Complainant and related to its email communications;
10. Respondent has claimed that its domains will never be seen by the public and are only used for internal processing thus eliminating any chance of public confusion, but this defense has been soundly rejected by UDRP Panels and ignores the nature of this first element of ¶4(a);
11. Respondent’s actions are not a bona fide offering of goods or services under Policy ¶4(c)(i) and no preparations it may have made in creating its planned email business change that reality;
12. Respondent has claimed that “because the disputed domain name containing the Complainants' well reputed mark is being used in a back- end, non-public-facing capacity, albeit for a commercial email verification service, that this use is bona fide,” but Respondent has failed to explain why it is/was necessary to register domain names incorporating famous trademarks such as JACK IN THE BOX in the first place;
13. Respondent is not known, commonly or otherwise, by the JACK IN THE BOX Marks or the Disputed Domains, is not licensed to use the Marks and does not own any trademark or service mark rights in such Marks;
14. Respondent’s plans for the Disputed Domains are not a “noncommercial” or “fair use;”
15. Respondent has argued that its business model will only make a nominative fair use of the disputed domains, but, the reality is that the Respondent is not using the various trademarks in a nominative manner to describe his services but rather to create a false impression that the services are somehow associated with the owners of the various trademarks he has copied, such as Complainant and its JACK IN THE BOX Marks;
16. Respondent is using the name JACK IN THE BOX for its trademark significance in the Disputed Domains and is seeking to commercialize such use;
17. Respondent intentionally used the Marks without consent from Complainants and was put on actual notice of Complainant’s rights in its globally famous JACK IN THE BOX Marks through Complainant’s extensive use of such Marks which long predate the creation date of the Disputed Domains, thus, Respondent knowingly and intentionally used the Marks in violation of Complainant’s rights in the Marks and, thus, in bad faith;
18. Respondent has no active website affiliated with the Disputed Domains and has merely passively held the Disputed Domains;
19. Respondent’s bad faith is provided by the pattern of conduct in which Respondent has engaged involving cybersquatted domain names;
B. Respondent contends that:
1. it registered the domain names for a legitimate business purpose, there has been no use of the domains to date, the intended use is not a trademark use, or public use, and there has been no trafficking of the domains;
2. it purchased its domain names lawfully in good faith;
3. it is a legitimate technology business, has invested tremendous time and money to developing a lawful business at http://yoyo.email/beta which is under development and should be launched soon;
4.
Complainant as holder of a matching
trademarks had an exclusive three month opportunity to secure the domain names
at issue during ICANN’s Sunrise Period and did not do so;
5. Respondent has NOT used its domain names to profit from advertising connected to the use of a trademark web service;
6. its’ initial idea is to launch the service as a closed software service which means that users can only send emails via Respondents’ software, so initially the service works as a back end service where all emails are directed and documented internally by name, at which point domain names are not seen by the general public, however domain names may be used to forward emails to the respective company (recipient);
7. the service at some point in the future may be extended so that consumers can send emails via any email client software;
8. Respondent has made demonstrable preparations to use the disputed domain names in connection with a bona fide offering of services providing certification of e-mail services, which will be free for both the
sender and receiver of e-mails;
9. Respondent has also set up offices and engaged staff including hiring an Hon Neil Brown QC and Traverse Legal PLC;
10. by providing the free use of its domains and limiting the use of the domain name to route and capture email meta data it is making a legitimate fair use of its portfolio, with no intent to profit from Complainant and no intent to deceived or attract internet users for commercial gain by “intentionally creating” confusion with Complainant's marks as to the source, sponsorship, affiliation, or endorsement of the Registrant web site or location or of a product or service on the Registrant’s web site or location;
11. its CEO is a respected inventor and businessman who has a proven track record in the developing innovative ideas;
12. the fact that it intends to be a for profit business in general from the use of the many generic domains it has registered, in no way supports the giant leap that it intends to profit from the subject domain or trademark by deceiving internet users.
C. Additional Submissions
Additional Submissions were received and considered redundant of the initial submissions.
1) Complainant has met its burden to prove by a preponderance of the relevant, admissible evidence that Respondent’s Domain Names are identical to trademarks in which Complainant has rights.
2) Complainant has met its burden to prove by a preponderance of the relevant, admissible evidence that Respondent has no rights or legitimate interest in respect of the Domain Names.
3) Complainant has met its burden to prove by a preponderance of the relevant, admissible evidence that Respondent’s Domain Names have been 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.
Complainant uses JACK IN THE BOX to identify its fast-food restaurant. Complainant owns the JACK IN THE BOX marks through trademark registrations around the world, including registrations with the USPTO (e.g., Reg. No. 722,380, registered October 3, 1961). A complainant’s USPTO registration serves as ample evidence of Policy ¶ 4(a)(i) rights in the registered mark. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”). Complainant’s valid USPTO registration for JACK IN THE BOX satisfies the initial requirements of Policy ¶ 4(a)(i).
Complainant claims the <jackinthebox.email> and <jackinbox.email> domain names are identical and/or confusingly similar to the JACK IN THE BOX marks. Complainant urges that the addition of the generic top-level domain (“gTLD”) “.email” may actually serve to enhance confusion given the suggestion of affiliation for e-mail purposes. While panels have traditionally regarded the addition of a gTLD as irrelevant to the confusing similarity analysis, panels have begun considering the relevance of gTLDs with the immergence of new-gTLDs, some of which contain descriptive attributes. See e.g., DD IP Holder LLC v. Manpreet Badhwar, FA 1562029 (Nat. Arb. Forum July 14, 2014) (“because there is a reference to food and restaurants inherent in the new gTLD ‘.menu’, the combination of the ‘dunkin’ element with the ‘.menu’ gTLD extension adds further to the confusing character of the domain in issue in the present case.”). Accordingly, the Panel concludes that the addition of the “.email” extension, if relevant at all, may serve to increase likelihood of confusion.
The disputed domain names differ from the mark only by the omission of spacing, and the <jackinbox.email> domain name also omits the article “the” from the mark. Such omissions are inconsequential to Policy ¶ 4(a)(i). See Antoun v. Truth Squad, FA 114766 (Nat. Arb. Forum Aug. 21, 2002) (the article "the" is "often added only for grammatical purposes, and may be superfluous to the name itself"); Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (elimination of spaces between terms and addition of a gTLD do not establish distinctiveness from complainant’s mark under Policy ¶ 4(a)(i)). Accordingly, the Panel finds the <jackinthebox.email> and <jackinbox.email> domain names are identical and/or confusingly similar to Compainant’s JACK IN THE BOX marks pursuant to Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names 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) (complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to 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 has no rights or legitimate interests in the disputed domain names, that Respondent has no license to use the JACK IN THE BOX mark, and that it is not commonly known by the disputed domain names. The WHOIS information lists “Giovanni Laporta” as the Registrant of record for both domain names at issue. Respondent does not rely on Policy ¶ 4(c)(ii), thus the Panel finds the Respondent is not commonly known by the disputed domain names. See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant also argues that Respondent has failed to use the disputed domain names for a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Complainant argues that Respondent’s purported use of the domain names for a “back-end, non-public-facing email verification service” is not protected by the Policy, as demonstrated by other recent UDRP decisions. Complainant urges Respondent could have registered many other domain names for the claimed “technical” purpose without copying well-known trademarks, and claims that Respondent’s choice to rely on its mark creates a false impression of affiliation, association or sponsorship with Complainant. Complainant adds that Respondent’s endeavor is commercial in nature as the scheme will be monetized in some fashion This Panel is neutral, but does not leave its common sense at the door. It is obvious that the value of the domain names rest in their use of Complainant’s well-known trademarks, and therefore the Panel finds that Respondent’s attempt to generate a commercial business on the unauthorized use of trademarks in Internet domain names is not protected by Policy ¶ 4(a)(ii). See Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the respondent’s use of the complainant’s entire mark in domain names makes it difficult to infer a legitimate use).
Though admittedly clever, Respondent’s sophistry is transparent. His “business method” simply makes no sense unless it is, as is obvious, designed to trade on the well-known and well-established marks of Complainant and others. Respondent seeks ‘to reap where he has not sown” in a manner not permitted by the UDRP.
Complainant claims that Respondent has a history of bad faith registrations as demonstrated by a litany of adverse UDRP cases. Complainant argues that this pattern of bad faith informs the Panel’s present consideration. Prior UDRP decisions adverse to Respondent may be viewed as a pattern pursuant to Policy ¶ 4(b)(ii) suggesting continued bad faith in the instant case. See Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007) (holding prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations).
Complainant also argues that Respondent’s failure to direct the disputed domain names to an active website indicates bad faith. Complainant urges that Respondent has failed to adequately demonstrate why it needs to register domain names incorporating other parties’ trademarks to make the intended service functional and viable, and therefore this inactive holding suggests bad faith. Respondent admits there is no active page for these domain names. These circumstances in totality suggest Respondent has engaged in bad faith pursuant to Policy ¶ 4(a)(iii). See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (“[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”).
Respondent has had actual notice of Complainant’s rights in the JACK IN THE BOX marks at the time of registration and registered the names in spite of such knowledge, which evinces bad faith registration. Respondent registered the disputed domain names with actual knowledge of Complainant, and in fact, clearly, because of this familiarity. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith). Respondent registered these disputed domain names in bad faith pursuant to Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <jackinthebox.email> and <jackinbox.email> domain names be TRANSFERRED from Respondent to Complainant.
M. Kelly Tillery, Esquire, Panelist
Dated: April 3, 2015
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