WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Aktieselskabet af 21. November 2001 v. Domains By Proxy, Inc./John Fox
Case No. D2007-1623
1. The Parties
The Complainant is Aktieselskabet af 21. November 2001, Brande, Denmark, represented by DAHL Herning A/S, Denmark.
The Respondent is Domains By Proxy, Inc./John Fox, Blessington Wicklow, Ireland.
2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 2, 2007. On November 5, 2007, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the domain name at issue. On November 5, 2007, GoD, Inc. transmitted by email to the Center its verification response stating that the Respondent Domains By Proxy, Inc. is not listed as the registrant but that John Fox is. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on November 22, 2007. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 22, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was December 12, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 17, 2007.
The Center appointed Michael Treis as the sole panelist in this matter on December 27, 2007. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is the owner of the Community Trademark Registration No. 001107747 JACK&JONES, which was registered on June 14, 2000 for goods of Classes 3, 18 and 25, and of the Community Trademark Registration No. 002834204 JACKJONES (figurative), which was registered on August 22, 2004 for goods of Classes 9, 14, 18 and 25. The Complainant uses the trademark JACK&JONES for fashion clothing and for certain accessories. The Complainant operates a website under the domain name , which is registered in the Complainant's name and on which pictures of the clothing sold under the trademark JACK&JONES are displayed.
5. Parties’ Contentions
A. Complainant
The Complainant asserts that the domain name is confusingly similar if not identical to the Complainant's registered trademarks. It contends that the Respondent has no rights or legitimate interest in respect of the domain name, as there is no relation between the Complainant and the Respondent. In particular, no license or other right has been granted to the Respondent. There is no evidence of legal use by the Respondent of the domain name, or of demonstrable preparations to that use. The Respondent has no rights or legitimate interest in respect of the domain name, as it is being used for a commercial purpose with the sole intent to profit from misleading or diverting consumers or by tarnishing the Complainant's trademark. The domain name should be considered as a case of typo-squatting, where the Respondent uses a slight alphabetic variation from the Complainant's registered trademarks.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4 (a) of the Policy lists three tests which the Complainant must satisfy in order to prevail. Complainant must satisfy that,
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainants has rights; and
(ii) the Respondent has no rights or legitimate interest in respect of such domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The domain name is clearly confusingly similar to the trademark JACK&JONES in which the Complainant has rights in the European Community. The Panel considers the first criterion proved.
B. No Rights or Legitimate Interests in the Domain Name
The Panel has considered the allegation by the Complainant as to the lack of rights or legitimate interest of the Respondent in respect of the domain name at issue. These allegations are highly plausible. Paragraph 4 (c) of the Policy sets out matters which a Respondent is entitled to raise which, if found by the Panel to be proved based on an evaluation of all evidence presented, could demonstrate a Respondent’s rights or legitimate interest to a domain name. However, the Respondent is in default with its response to the Complaint, and there are therefore no indications whatsoever as to any rights or legitimate interests of the Respondent in the domain name. The two names jack and jones are common, but their combination as jackandjones is not, and nor is their use for fashion goods. Also, the references to the Complainant's trademark on the website operate under the domain name and the link to other websites offering clothing bearing the Complainant's trademark show that the Respondent is aware of the Complainant's trademark. Consequently, the use of the name jackandjones by the Respondent is not a coincidence, but refers to the Complainant's trademark. The second criterion is therefore proved.
C. The Registration and Use of Domain Name in Bad Faith
As to bad faith registration in use, the Panel considers this criterion proved for the reasons set out in the Complainant’s submissions, which the Panel accepts. The link of the domain name to another website allowing users to make Internet searches for websites displaying other fashion brands is evidence that the Respondent tries to create a risk of confusion with the Complainant’s trademark and website. It shows that the Respondent uses the domain name for the purpose of attracting web traffic intended for the website of the Complainant, but directing such web traffic to websites offering fashion goods of third parties and other content. This is a practice which unduly exploits the good-will related to the Complainant’s trademark for the Respondent’s own commercial interests. By doing so, the Respondent also tends to associate the Complainant’s trademark with an Internet search service aiming at website. For this reason, the Respondent’s use of a confusingly similar trademark is liable to exploit the Complainant's trademark JACK&JONES. The Panel therefore agrees with the Complainant’s assertions that this is a case of cyber squatting.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, , be transferred to the Complainant.
Michael Treis
Sole Panelist
Dated: February 4, 2008
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