Piper Jaffray & Co. v. George White
Claim Number: FA1605001677149
Complainant is Piper Jaffray & Co. (“Complainant”), represented by Felicia J. Boyd of Barnes & Thornburg LLP, Minnesota, USA. Respondent is George White (“Respondent”), Spain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <piper-jaffray.com> (the “Domain Name”), registered with Domain.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.
Dawn Osborne of Palmer Biggs Legal as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 31, 2016; the Forum received payment on June 1, 2016.
On May 31, 2016, Domain.com, LLC confirmed by e-mail to the Forum that the <piper-jaffray.com> Domain Name is registered with Domain.com, LLC and that Respondent is the current registrant of the name. Domain.com, LLC has verified that Respondent is bound by the Domain.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 June 1, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 21, 2016 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@piper-jaffray.com. Also on June 1, 2016, 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 June 27, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs Legal 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
The Complainant is a leading full service international investment bank and asset management firm which has provided these services for over a hundred years. It holds valid registered trademarks for PIPER JAFFRAY, inter alia, in the US and the European Union where the Respondent is based. It has provided services to customers under this mark at <piperjaffray.com> since 1995.
The Domain Name is identical and confusingly similar to the Complainant's trade mark merely replacing the space between the two elements of the Complainant’s mark with a hyphen and adding the gTLD .com. These changes are de minimis.
Respondent has no intellectual property rights in the name 'piperjaffrey' and has not been licensed by the Complainant. The web site attached to the Domain Name directs Internet users to generic landing pages featuring third party advertising links to providers of various bank related products and services competing with the Complainant. Such use is not bona fide offering of goods and services. The Respondent is not commonly known by the Domain Name.
The Domain Name registered in 2016 was used and registered in bad faith to attract Internet users by creating a likelihood of confusion with the Complainant’s PIPER JAFFREY mark for financial gain.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is an international investment bank and asset management firm with registered trademarks for PIPER JAFFRAY, inter alia, in the US and the European Union where the Respondent is based with first use in commerce recorded as 1992.
The Domain Name registered in 2016 directs Internet users to generic landing pages featuring third party advertising links to providers of various bank related products and services competing with the Complainant.
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.”).
Identical or Confusingly Similar
The Domain Name consists of the Complainant's PIPER JAFFRAY registered mark, a hyphen and the gTLD “.com.”
As a general rule the addition of punctuation related alterations can never distinguish the domain name from the mark at issue. See Teradyne Inc. v. 4Tel Tech, D2000-0026 (WIPO May 9, 2000) (Finding that the addition of a hyphen to the registered mark is an insubstantial change. Both the mark and the domain name would be pronounced identically by eliminating the hyphen.).
The gTLD .com does not serve to distinguish the Domain Name from the PIPER JAFFRAY mark, which is the distinctive component of the Domain Name. See Red Hat Inc. v. Haecke FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Name is confusingly similar for the purposes of the Policy with a mark in which the Complainant has rights.
As such the Panel holds that Paragraph 4(a)(i) of the Policy has been satisfied.
Respondent has not responded and given any reasons for its registration and use of the Domain Name. Respondent does not appear to be commonly known by the Domain Name or the name PIPER JAFFRAY. Complainant has not authorised the use of its mark and the Respondent does not appear to be connected with the Complainant in any way. PIPER JAFFRAY does not appear to have any obvious meaning apart from the Complainant and its trade marks.
The Domain Name has been used for a pay-per-click website linking to other third party commercial web sites including banking and financial services. The Panel notes that pursuant to United Servs. Auto Ass'n v. Savchenko, FA 1105728 (Forum Dec. 12, 2007), the disputed domain name currently resolves to a website displaying Complainant's marks and contains links to the Complainant's competitors. The Panel finds this to be neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).
The Panel thus concludes that there are no rights or legitimate interests in the Domain Name under the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <piper-jaffray.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: June 28, 2016
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