The Complainant is JPMorgan Chase & Co. of New York, New York, United States of America (“United States”), represented by Simpson Thacher & Bartlett, United States.
The Respondent is The Shashamane Ethiopia Federal Agents Association of New York, New York, United States, represented internally. 2. The Domain Name and Registrar
The disputed domain name is registered with FastDomain, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 23, 2015. On April 24, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 24, 2015, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on April 29, 2015.
The Center verified that the amended Complaint (referred to as the Complaint in this Decision) 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 the Respondent of the Complaint, and the proceedings commenced on April 30, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 20, 2015. The Center received a pre-commencement communication from the Respondent on April 24, 2015. The Response was filed with the Center on May 7, 2015.
The Center appointed Richard G. Lyon as the sole panelist in this matter on May 28, 2015. The Panel finds that it was properly constituted and has jurisdiction to decide this administrative proceeding. The Panel has submitted his 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 a prominent international bank, based in the United States. Its name reflects two of its predecessors, each a well-known financial institution with a long history in the United States: J. P. Morgan, founded by the financier of that name in the nineteenth century, and The Chase National Bank, also founded in the nineteenth century and named after a Chief Justice of the United States. A third predecessor, The Manhattan Company, dates back to the eighteenth century. The Complainant holds many trademarks for financial services, duly registered with appropriate trademark authorities in the United States and other countries around the world, that incorporate “J. P. Morgan” or “Chase” or both. In the financial world it is fair to describe the Complainant’s name as a famous mark.
The Respondent registered the disputed domain name on March 29, 2015. At one point the disputed domain name resolved to a webpage that showed the following heading:
“JPMORGAN Chase BK, National Association Co
JPMORGAN CHASE BANK, N.A.”
Below this was a photograph of Ethiopian currency and the words “Foreign Financial Institution” and “Special Purpose Entity.”
A screen capture of the disputed domain name on April 30, 2015, showed a single page with several listings of the Complainant’s companies.
When the Panel attempted to access the disputed domain name on June 1, 2015, he received a page with the following:
“Site Not Published
The site you are looking for has not been published
If you are the owner of the site, you can fix this message by publishing your site to this address.”
Little about the identity or nature of the Respondent can be found in the record. The WhoIs record indicates an address in New York, New York, United States. A record of the United States Patent & Trademark Office (USPTO) gives an address in California, United States. The Respondent has submitted a document similar in nature to a corporate charter but without identification of the jurisdiction of incorporation, stating that the entity is a non-profit organization under the laws of the United States.
On March 4, 2015, an entity named “JPMORGAN CHASE BANK NATIONAL ASSOCIATION SPECIAL
PURPOSE ENTITY”, chartered in New Jersey, United States, filed an application with the USPTO to register JPMORGAN CHASE BANK NATIONAL ASSOCIATION as a trademark. The individual who submitted this application is the same as the individual who submitted the Response in this proceeding.
On April 15, 2015, the Complainant’s counsel sent the Respondent a cease-and-desist letter, to which no response was received.
In April 2015 the Respondent filed Uniform Commercial Code (UCC) financing statements1 against the Complainant, several affiliated entities, and two attorneys who have acted for the Complainant in several states of the United States, listing the Respondent as creditor. 5. Parties’ Contentions A. Complainant
The Panel summarizes the Complainant’s contentions as follows:
1. The disputed domain name is identical or “virtually identical” to the Complainant’s many registered trademarks, all of which the Complainant has used in commerce continuously for many years.
2. The Complainant has never authorized the Respondent to use any of its marks. “Upon information and belief, Respondent is not commonly known by the [disputed domain name] as part of its legal name, corporate name, or any commonly-known identifier, in the banking and financial services sector or otherwise.” The uses to which the disputed domain name has been put (described in section 4 above) are not bona fide under the Policy as they make use of the renown of the Complainant’s marks to divert Internet users to the Respondent.
3. For similar reasons the Respondent registered and has used the disputed domain name in bad faith. Given the renown of the Complainant’s marks “it is impossible to imagine a circumstance in which Respondent could make legitimate use of the [disputed domain name] in connection with banking or financial services. In fact, it is impossible to imagine a circumstance in which Respondent could have been unaware of Complainant’s rights when it registered the [disputed] domain name.”
The gist of the Complainant’s charge is that the Respondent “appears to be engaged in a broad fraudulent campaign that has targeted Complainant and its affiliates” or “a greater scheme to commit a fraud upon the public.”
In support of its allegations the Complainant furnishes documentary evidence and an affidavit from an executive officer for its factual allegations.2 B. Respondent
Because the Panel has difficulty understanding the Respondent’s contentions, he includes them in full:
“In formal response, Libelous Discrimination and Defamation of Character have been exemplified by the registrant.
We clearly are an International Organization, and not cybersquatters. the Complainant Complaint are bizarre and full of caveats that judgements against the organization, are valid and based upon her and affiliates opinions and scrutinies.
JPMORGAN CHASE & CO. is a fraudulent institution, both locally, nationally and Internationally. Practices which include Money Laundering; Conspiracy; and Racketeering through fraudulent Mortgages, Deeds, Loans, Credits, and Robo-Signing.
Furthermore; Criminal and Civil Charges will be filed ‘with prejudice’ after this response today to (WIPO) World Intellectual Property Organization on the Behalf of Shashamane Ethiopia Federal Agents Association (The) and JPMorgan Chase BK, National Association Co and its affiliates. Against attorney for record: Lori E. Lesser; Amy C. Scalise; Michael H. Joshi; JPMORGAN CHASE & co.; and DOES 1 to 50 inclusive. For Conspiracy, Unfair Business Practices, Libelous Discrimination, Defamation of Character, Racketeering, Money laundering, Punitive Damages.
Shashamane Ethiopia Federal Agents Association (The) Within regard to Section B-7 of the complaint, Our organization has no such email address as[email]@GMAILCOM.
The email address belongs to JPMorgan Chase BK, National Association Co; a Private Company. After it was verified by Google Inc., the BlueHost, Inc Technical support told us the Shashamane Ethiopia Federal Agents Association (The) account was hacked by Google Inc., on voice recording claiming ‘Phishing’ throughout the content of the website, which is clearly, Incorrect…
Accusations and Ignorance of the Law, is No excuse.
JPMorgan Chase BK, National Association Co is a Legal Entity, Registered to do Business as a Special Purpose Entity; Federal Agency, Administration; Foreign Financial Institution; a Private Company and strictly for the benefit of its Internal Members and affiliates such as; JPMorgan Chase Bank National Association; Trademark Serial Number: 86552748 Filing Date: 03/04/2015.
JPMORGAN CHASE & CO. Legal Representatives is claiming ‘CYBERSQUATTING’, passing judgement and clearly attempting to damage the Reputation and Integrity, of Our Organizations whole purpose of existence.
A Uniform Commercial Lien is Not ‘CYBERSQUATTING’.
Furthermore; No one is above the Law. The Uniform Commercial Code are the Law. We, Embrace the Law, Enforce the Law, not break the Law.
According to Uniform Commercial Code: JPMORGAN CHASE & CO.; and its Legal Representatives, DEBTOR’s should not be allowed to conduct any business until all UCC Liens is settled.
There are several active Federal Liens against ALL DEBTOR’s, included within the content of the complaint.
A receipt of our Hosting and Registrar is attached. Moreover, we are oblivious to the company ‘Fastdomain, Inc.’ We had no business dealings or relations with them and became and Internal Switch, after 4 years of doing business with BlueHost, Inc.
As well, you can find the domain registrar.
Shashamane Ethiopia Federal Agents Association (The), Do not do ANY BUSINESS with Fastdomain, Inc.
The Administrations judgement towards the Registrants, should be revoked and denied.” 6. Discussion and Findings A. Scope of the Policy
The charges and countercharges of intentional torts such as fraud and defamation lead the Panel to consider whether this proceeding raises issues that should be resolved in court rather than this limited administrative proceeding.
The Policy was adopted to address a single issue: a respondent’s entitlement or not to the domain name at issue, a matter to be determined strictly in accordance with the three elements of paragraph 4(a) of the Policy. That is the only matter the Panel in this case is required to determine and – given the abbreviated nature of a Policy proceeding, with no discovery or confrontation – the only matter he is capable of determining. Not at issue are the legality of the Respondent’s business, motivation or impact of the Respondent’s actions (beyond paragraph 4(a)), or determination of civil law issues such as defamation or fraud. If the evaluation under paragraph 4(a) turns on such issues, or if the dispute over the disputed domain name is simply part of a broader dispute between the parties, or if one party or the other seeks merely an advantage in civil litigation, the Panel should leave the parties to the courts.
Although the Complainant certifies, as required by paragraph 3(b)(xi) of the Rules, that there exists no other pending litigation between the parties,3 its charges of fraud and improper UCC filings imply at least the existence of other disagreements. After all, the Respondent has used a name identical to the Complainant in the same industry, financial services, as the Complainant’s counsel points out in her cease-and-desist letter. Additional legal proceedings appear to be likely.
Nevertheless the Panel determines to proceed with a decision in this case, substantially for the reasons given by the panel majority in Yellowstone Mountain Club LLC v. Offshore Limited D and PCI,WIPO Case No. D2013-0097. The Complainant has limited its requested relief to that authorized by the Policy, i.e., transfer of the disputed domain name. As discussed in parts B-D below, the Panel is able to make the required assessment under paragraph 4(a) without having to determine the truth or falsity of the charges of other tortious conduct. No other litigation is pending, a prerequisite of suspension or dismissal under paragraph 18 of the Rules. Post-decision litigation is always a possibility. If dissatisfied with the decision the Respondent is free to pursue this matter in court. B. Identical or Confusingly Similar
As alleged in the Complaint and proven with evidence, the disputed domain name is identical or confusingly similar to the Complainant’s many registered trademarks, all of which the Complainant has used in commerce continuously for many years. C. Rights or Legitimate Interests
The Complainant has established that it has never authorized the Respondent to use its marks. Less obvious is whether the Respondent has been commonly known by the disputed domain name. Policy, paragraph 4(c)(ii). Certainly it has used the disputed domain name as a business name and in its USPTO trademark application. Those facts however do not ipso facto demonstrate a right or legitimate interest. “Commonly known” has been held to mean commonly known independently of the acquisition of the disputed domain name and the initiation of the parties’ dispute – continuous use of a word or phrase for example for a business name before registration of a domain name. Even a respondent’s ownership of a registered trademark does “not necessarily” generate a right or legitimate interest, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.7. And so in the circumstances of this case does the Respondent’s recent USPTO application, which the Complainant will doubtless oppose, constitute nothing more than a transparent effort “primarily to circumvent the application of the UDRP.”Ibid.
No use to which the Respondent has put the disputed domain name qualifies as bona fide under the Policy. Two are textbook examples of cybersquatting. The Complainant has carried its evidentiary burden under paragraph 4(a)(ii) of the Policy D. Registered and Used in Bad Faith
Two of the three examples of the Respondent’s use of the disputed domain name described in Section 4, both of which occurred shortly after registration, suffice to demonstrate both registration and use of the disputed domain name in bad faith. Again the Complaint states things accurately: “it is impossible to imagine a circumstance in which Respondent could make legitimate use of the [disputed domain name] in connection with banking or financial services.” The Respondent plainly used the disputed domain name to take advantage of the Complainant’s well-known marks, or in the words of the Policy, paragraph 4(b)(iv), “by using the domain name, […] intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [its] web site or location or of a product or service on [its] web site or location.” 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Richard G. Lyon
Sole Panelist
Date: June 5, 2015
1 A creditor may file a UCC financing statement to provide public notice of a lien against the entity or individual named as debtor.
2 Indeed the Complaint is a model, including without undue length clear allegations and relevant evidence on the elements of the Policy and not including unnecessary and unsupported invective.
3 Though required by paragraph 5(b)(vi) of the Rules to do so, the Respondent has made no comparable certification.
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