WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Jupiter Investment Management Group Limited v. N/A, Robert Johnson Case No. D2010-0260 1. The Parties
1.1 The Complainant is Jupiter Investment Management Group Limited of London, United Kingdom of Great Britain and Northern Ireland, represented by Nabarro LLP, United Kingdom of Great Britain and Northern Ireland.
1.2 The identity of the Respondent is uncertain. The recorded WhoIs details for the disputed domain name are N/A, Robert Johnson of London, United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
2.1 The disputed domain name (the “Domain Name”) is registered with Tucows Inc. (the “Registrar”). 3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 19, 2010. On February 22, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 22, 2010, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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”).
3.2 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 February 24, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 16, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 17, 2010.
3.3 The Center appointed Matthew S. Harris as the sole panelist in this matter on March 29, 2010. 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
4.1 The Complainant is a company registered in England and Wales and is the parent company of the “Jupiter” fund management group. The Complainant and its predecessors in business have conducted business under the “Jupiter” name since 1985.
4.2 The Complainant as at December 31, 2009 had more than £21 billion worth of assets under its management and it audited accounts for the year ended December 31, 2008 recorded net assets of the company to be £103 million. The Complainant provides services to approximately 290,000 customers.
4.3 The Complainant is the owner of various trade marks around the world that comprise or incorporate the “Jupiter” name. These trade marks include Community Trade mark No 641712 filed on September 25, 1997 in classes 35 and 36 for the word JUPITER.
4.4 The Complainant operates a number of websites. These include the website operating from the domain name .
4.5 The Domain Name was registered in March 8, 2009.
4.6 According to the WhoIs details for the Domain Name, the Domain Name is, somewhat surprisingly, not registered in the name of any person or company. The WhoIs details record the registrant as “N/A” and then gives an address that purports to be in the New Cross area of London. However, the administrative and technical details for the Domain Name purport to record a Robert Johnson at that address.
4.7 At least recently (and possibly from the date of registration) the coding of the webpage operating from the Domain Name has been set up so that it automatically displays the webpage operating from the Complainant's “www.” website. It is essentially set up to operate as a “mirror” site that replicates the Complainant's site in its entirety.
4.8 On November 11, 2009 the Complainant's solicitors sent a letter by email and post to “Mr. Johnson”, alleging that his actions involved trade mark infringement, copyright infringement and were contrary to the Policy. It demanded undertakings and the transfer of the Domain Name. A follow up letter was sent by email and post on November 16, 2009. No response was received to this letter. 5. Parties' Contentions A. Complainant
5.1 The Complainant contends that its JUPITER trade mark is well-known and enjoys a high degree of consumer and industry recognition. It appears to contend that since the Domain Name incorporates the JUPITER mark in full, it necessarily follows that the Domain Name is confusingly similar to that mark citing Volvo Trademark Holding AB v. Peter Lambe WIPO Case No. D2001-1292.
5.2 The Complainant also refers to the content of the website operating from the Domain Name which is said to support a finding of confusing similarity.
5.3 The Complainant confirms that the Respondent is not connected with the Complainant and has not licensed the Respondent to use the JUPITER mark. It contends that the Respondent selected the Domain Name solely in order to attract Internet users to the Respondent's website by trading on the fame of the Complainant's JUPITER trade mark and to fool Internet users into believing that the website displayed from the Domain Name is authorised by the Complainant. This, it claims, is not a bona fide offering of services.
5.4 The Complainant also alleges that the website operating from the Domain Name infringes its copyright and that this cannot constitute a legitimate noncommercial or fair use of the Domain Name. In the circumstances, it contends that the Respondent has no right or legitimate interest in the Domain Name.
5.5 The Complainant claims that by using the Domain Name, the Respondent has intentionally attempted to attract Internet users to his website by creating a likelihood of confusion with the Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the website and of the products and services advertised on the website. It also claims that it is clear that the Respondent knew of the Complainant's mark when it registered the Domain Name.
5.6 The Complainant further contends that the alleged infringement of its copyright constitutes bad faith; citing TPI Holdings Inc. v. JB DesignsWIPO Case No. D2000-0216. B. Respondent
5.7 The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
6.1 The Panel is of the view that there are no exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response.
6.2 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects under paragraph 4(a) of the Policy. Namely the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
6.3 However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”. A. Identical or Confusingly Similar
6.4 The Panel accepts that the Domain Name is confusing similar to the Complainant's JUPITER trade mark (and, in particular, the Community Trade Mark identified).
6.5 The Complainant refers to the content of the website operating from the Domain Name, but this is irrelevant for the purposes of this assessment (see paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions).
6.6 For the reasons that are set out in greater detail in Research in Motion Limited v. One Star Global LLC,WIPO Case No. D2009-0227 this Panel does not accept that it necessarily and inevitably follows from the fact that a domain name incorporates a trade mark in its entirety that a domain name must be confusingly similar to that mark. Each case must be judged on its own facts, and the assessment will always depend on the specific mark and the specific domain name in question. The Panel does not consider that the decision in Volvo supra cited by the Complainant suggests otherwise.
6.7 However as is also explained in the Research in Motion case, paragraph 4(a)(i) of the Policy imposes a “threshold” or “standing” requirement. As a consequence in most cases where a domain name incorporates an entire mark that requirement will be satisfied. The Panel accepts that as a matter of fact this requirement has been satisfied with ease in this particular case. The word “Jupiter” provides the dominant element of the Domain Name and the addition of the word descriptive terms “online” and “uk” does not so detract from or alter the perception of that word so as prevent a finding of confusing similarity (as that term is understood under the Policy) with the JUPITER mark.
6.8 The Complainant has therefore made out the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests and Registered and Used in Bad Faith
6.9 This is a case where it is convenient to consider the issues of rights or legitimate interests and bad faith together.
6.10 The identity of the Respondent is not certain. However, it is clear that the registrant of the Domain Name has embarked on a process of deliberately impersonating the Complainant when he has no authority to do so. The adoption and use of a Domain Name that incorporates the JUPITER mark and is obviously similar to domain name used by the Complainant, is only part of that process. It extends to copying the Complainant's site in its entirety.
6.11 The adoption and use of a domain mame for the purposes of such impersonation does not provide a right or legitimate interest under the Policy. It also involves registration and use in bad faith. The Panel accepts the Complainant's contentions in this respect that the Respondent has intentionally attempted to attract Internet users to the Website by creating a likelihood of confusion with the Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the Website and of the products and services advertised on the Website. Why the Respondent has done this is not certain. However, it is difficult to conceive of any legitimate reason for this activity.
6.12 The Complainant claims that the Respondent has infringed its copyright. That seems probable. However, the Panel is unconvinced that copyright infringement per se necessarily leads to a finding of bad faith. In cases where there is full scale reproduction of another's site there may well be both copyright infringement and bad faith but it is the unauthorised, unjustified and wholesale impersonation that justifies the bad faith finding.
6.13 To bring in an assessment of whether a registrant's activities are an infringement of some national intellectual property right is in the view of this Panel both unnecessary and undesirable (see for example similar comments in Delta Air Transport NV (trading as SN Brussels Airlines) v. Theodule de Souza,WIPO Case No. D2003-0372 in relation to the question of trade mark infringement and High Tech Computer Corporation v. LCD Electronic Systems SRL, WIPO Case No. DRO2008-0011 in relation to both copyright infringement and trade mark infringement). The Panel accepts that the decision in TPI Holdings Inc. v JB Designs,WIPO Case No. D2000-0216 seems to suggest otherwise. Insofar as this is what the panellist intended in the TPI case, then the Panel respectfully disagrees with that assessment. The Panel also notes that the finding of copyright infringement in the TPI case was not necessary in order for the panel to come to a finding of bad faith in that case.
6.14 The Complainant has, nevertheless, more than adequately made out the requirements of paragraphs 4(a)(ii) and 4(a)(iii) of the Policy. 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.
Matthew S. Harris
Sole Panelist
Dated: April 12, 2010
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