Piper Jaffray & Co. v. Peter Jaffray
Claim Number: FA1606001677562
Complainant is Piper Jaffray & Co. (“Complainant”), represented by Felicia J. Boyd of Barnes & Thornburg LLP, Minnesota, United States. Respondent is Peter Jaffray (“Respondent”), Spain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <piperjaffrayuk.com>, registered with NameSilo, 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 June 2, 2016; the Forum received payment on June 3, 2016.
On June 2, 2016, NameSilo, LLC confirmed by e-mail to the Forum that the <piperjaffrayuk.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 9, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 29, 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@piperjaffrayuk.com. Also on June 9, 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 July 6, 2016, 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 uses the PIPER JAFFRAY mark in connection with its business of providing investment banking and asset management services. Complainant has registered the PIPER JAFFRAY mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,098,959, registered Sept. 23, 1993; Reg. No. 2,973,848, registered July 19, 2005), which establishes rights in the mark.
2. Respondent’s <piperjaffrayuk.com> domain name is confusingly similar to the PIPER JAFFRAY mark as it incorporates the mark in its entirety, while adding the letters “uk” and the generic top-level domain “.com.”
3. Respondent has no rights or legitimate interests in the <piperjaffrayuk.com> domain name. Respondent is not commonly known by the domain name, nor has Complainant authorized Respondent to use the PIPER JAFFRAY mark.
4. Further, Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the <piperjaffrayuk.com> domain name. Rather, the domain name resolves to an inactive website.
5. Respondent is using the <piperjaffrayuk.com> domain name in bad faith. Respondent had actual and/or constructive notice of Complainant’s mark and the rights therein due to the mark’s numerous trademark jurisdictions and distinctiveness. Further, the domain name does not resolve to an active website.
6. Lastly, Respondent used a privacy service to conceal its identity when the domain name was registered.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the PIPER JAFFRAY mark. Respondent’s domain name is confusingly similar to Complainant’s PIPER JAFFRAY mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <piperjaffrayuk.com> domain name, and that Respondent registered and uses the domain name 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.
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.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <piperjaffrayuk.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent has no rights or legitimate interests in the <piperjaffrayuk.com> domain name. Complainant asserts that Respondent is not commonly known by the domain name, nor has Complainant licensed Respondent to use the PIPER JAFFRAY mark. Therefore, based upon the record, there is no basis to find Respondent commonly known by the <piperjaffrayuk.com> domain name per Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
Further, Complainant argues that Respondent is making neither a bona fide offer of goods or services, nor a legitimate noncommercial or fair use of the <piperjaffrayuk.com> domain name. Rather, Complainant has shown that the domain name resolves to an inactive website. Such inactive use by a respondent consists of neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Hewlett-Packard Co. v. Shemesh, FA 434145 (Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). Therefore, Respondent’s <piperjaffrayuk.com> domain name constitutes neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent had actual knowledge of Complainant's rights in the PIPER JAFFRAY mark. Complainant argues that due to the distinctiveness of the mark, and numerous trademark registration it is improbable that Respondent did not have actual knowledge of Complainant's mark and rights. The Panel agrees and therefore determines that Respondent registered the <piperjaffrayuk.com> domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Further, Complainant contends that Respondent’s failure to make any active use of the domain name is further evidence of bad faith. Inactive holding of a domain name in which a complaining party has rights may constitute bad faith registration and use under Policy ¶ 4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith). The Panel agrees.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <piperjaffrayuk.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: July 11, 2016
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