Complainant is Nicholas Lee Jumblatt, Jumbie, LLC of Louisville, Kentucky, United States of America (“U.S.”), internally represented.
Respondent is SlantMedia of Chicago, Illinois, U.S. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 12, 2012. On May 14, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain name at issue. On May 14, 2012, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
Further to an email communication from the Center, Complainant submitted an amended Complaint on May 17, 2012.
The Center verified that the Complaint together with amended 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”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 21, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 10, 2012. An informal Response was filed with the Center on May 23, 2012.
The Center appointed Lawrence K. Nodine as the sole panelist in this matter on June 13, 2012. 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
Complainant’s business is the creation, production and distribution of poster art and related goods.
Complainant created the Jumbieart brand in 2008 by pioneering the creation of “Spectral Art”.
In 2009 Complainant registered the domain name at issue and launched a web portal where Spectral Art could be experienced and artwork sold.
Complainant has used the JUMBIE trademark in relation to the sale and artistic design of posters and related goods since 2008.
Complainant invested and dedicated a majority of available resources into promoting the “www.” website that involved multiple tours across the nation at trade events promoting the Spectral Art product.
In late 2010 Complainant and Respondent entered into negotiations for Respondent to do Internet marketing and product development for Complainant. The business relationship failed and Respondent moved the hosting and modified the WhoIs information for the domain name at issue to reflect Respondent as the registrant and contact.
Complainant owns U.S. Trademark Registration No. 3,888,484 for the mark JUMBIE in class 16 with respect to posters and artwork registered on December 14, 2010. 5. Parties’ Contentions A. Complainant
With respect to paragraph 4(a)(i) of the Policy, Complainant alleges that:
Complainant owns the JUMBIE U.S. Trademark Registration identified above.
The domain name at issue wholly incorporates Complainant’s JUMBIE trademark.
A domain name that wholly incorporates a registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks.
With respect to paragraph 4(a)(ii) of the Policy, Complainant alleges that:
In April of 2008, Complainant was the registrant for the domain name at issue.
In April of 2011, the domain name registration was modified to reflect Respondent as the registrant and name servers were modified to remove control from Complainant’s hosting access. Since April 2011, Respondent has been the registrant and sole controller of website hosting for the domain name at issue and has been displaying Complainant’s logo on the website.
Respondent does not have any right or legitimate interest in the domain name at issue.
Respondent was not authorized to change, modify, or transfer the domain name at issue and is not licensed or otherwise permitted to use the JUMBIE trademark.
Even in the supposed case where Respondent had been authorized to modify the registration for the domain name at issue, the registration would have been ultimately for Complainant’s use.
Complainant lost control of the website and Respondent’s registration of the domain name at issue deceptively suggests a relationship with Complainant that does not exist. This demonstrates that Respondent could not have a bona fide relationship with Complainant.
With respect to paragraph 4(a)(iii) of the Policy, Complainant alleges that:
When Complainant terminated its relationship with Respondent, Respondent retaliated
by transferring the domain name registration and website hosting to Respondent.
Respondent transferred the domain name registration to itself primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of a trademark or service mark for valuable consideration in excess of documented out-of-pocket cost directly related to the domain name at issue.
Evidence of bad faith registration includes Respondent holding the domain name at issue hostage to enforce an alleged debt. Currently, Respondent is holding the domain name at issue hostage to enforce an alleged debt.
The website for the domain name at issue displays the wording “coming soon.” Respondent is passively holding the domain name at issue which is evidence that the domain name at issue is being used in bad faith. B. Respondent
Respondent alleges that:
“[Complainant] has unpaid bills and is in default of terms of conditions. Therefore until all bills are paid as agreed upon [Respondent] feel[s] we own the rights to the website as agreed upon when we entered into partnership. As to the blank page that has nothing to do with us. I will be glad to forward all correspondence concerning this matter as we are currently working with legal to present a case that [Complainant] acted in bad faith and accepted money and services without fulfilling his agreement in the partnership.” 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall 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 directs that the complainant must prove each of the following:
i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and,
ii) that the respondent has no rights or legitimate interests in respect of the domain name; and,
iii) that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Given Complainant’s use of the JUMBIE trademark and its ownership of a U.S. registration for JUMBIE, the Panel finds that Complainant has trademark rights in the JUMBIE trademark.
The Panel also finds that the domain name at issue is nearly identical to Complainant’s JUMBIE mark. The domain name at issue incorporates Complainant’s entire trademark and then adds the descriptive word “art” along with the “.com” generic top level domain (gTLD). Panelists have consistently held that the mere addition of descriptive wording to well-known marks, or confusingly similar derivatives thereof, does not avert a finding that the disputed domain name is confusingly similar. Busy Body, Inc. v. Fitness Outlet Inc.,WIPO Case No. D2000-0127 (“the addition of the generic top-level domain (gTLD) name ‘.com’ is […] without legal significance since use of a gTLD is required of domain name registrants”). The descriptive or generic wording (in this case the addition of “art”) to a trademark owned by a complainant to create a domain name consisting of multiple words that implies a relationship between the words can and in this case does actually increase rather than decrease the likelihood of confusion. See, e.g., Fairmont Hotel Management L.P. v. Puts,WIPO Case No. D2001-0431 (“given that the added words describe the business services for which the Complainant’s trademark is registered and used by the Complain[an]t, the additions merely compound the confusion created by the incorporation of the Complainant’s trademark”); and Yahoo! Inc. and Overture Services, Inc. v. Registrant (187640), a/k/a Gary Lam, a/k/a Birgit Klosterman, a/k/a XC2, a/k/a Robert Chua, a/k/a Registrant,WIPO Case No. D2004-0896 (“if the addition is a term associated with the business of the Complainant […] it can even add to the similarity between the domain name and the trademark in question”).
Therefore, the Panel finds that the domain name at issue is identical or confusingly similar to a trademark in which Complainant has rights. B. Rights or Legitimate Interests
There is a dispute between the parties about whether Respondent has legitimate interests in respect of the domain name at issue. Respondent asserts that it was authorized under agreements between the parties to transfer the domain name at issue to itself. Neither side introduces evidence on this point, but, as Complainant has the burden, the Panel finds that Complainant has failed to prove that Respondent has no rights or legitimate interests in the domain name at issue. Policy, paragraph 4(a). C. Registered and Used in Bad Faith
In situations such as the present case, where the parties have entered into a contractual relationship, panels tend to impose on the complainant a heavier burden of proof for bad faith registration (Schneider Electronics GmbH v. Schneider UK Ltd.,WIPO Case No. D2006-1039).
Complainant alleges, and Respondent does not dispute, that ownership of the domain name at issue was transferred to Respondent on April 12, 2011. The issue is whether the transfer constitutes bad faith registration. The Panel notes that per paragraph 4(b)(i) of the Policy, acquisitions are to be treated the same as registration for the purposes of supporting a finding of bad faith registration.
There is a dispute between the parties about whether Respondent was authorized under the terms of their agreement to transfer ownership of the domain name at issue. Complainant alleges that “[Complainant] found that [Respondent] had used information he knew from working with the company to move ’s hosting and modify the domain registration for the website.” Respondent responds that it “own[s] the rights to the website as agreed upon when we entered into partnership.”
Complainant has not introduced any evidence in the record to refute Respondent’s claim that it had authority under the parties’ agreement to make the challenged transfer. In essence the parties are merely trading accusations without supporting evidence on the key point: whether Respondent was within its rights to transfer the domain name at issue to itself. Consequently, bearing in mind the limited evidentiary record put forward by Complainant the Panel is unable to conclude that the disputed domain name was registered in bad faith.
The Panel takes into account that the Policy was designed to deal with a certain limited category of abusive registration of domain names, but not as a means of litigating all disputes involving domain names. Particularly in cases such as the present where there would appear to be a history of contractual dealings between Respondent and Complainant and where there would appear to this Panel to go beyond the limited scope of the UDRP. Parties may instead consider their options via a court of competent jurisdiction.
The Panel need not, then, reach the question of whether the disputed domain name is being used in bad faith. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Lawrence K. Nodine
Sole Panelist
Dated: June 28, 2012
Full & Egal Universal Law Academy