The Complainant is Kenneth Hill of Ohsweken, Ontario, Canada, represented by Inch Hammond Professional Corporation, Canada.
The Respondent is Brandon Friesen, Arbor Records Ltd. of Winnipeg, Manitoba, Canada. 2. The Domain Name and Registrar
The disputed domain name is registered with Sibername Internet and Software Technologies Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 2, 2015. On December 3, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 3, 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.
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").
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 8, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 28, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 29, 2015.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on January 8, 2016. 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 began preparations to establish a music recording studio in late 2007 and early 2008, under the name "Jukasa". Jukasa is a coined word, which is composed of the first two letters of each of the first names of the Complainant's three nieces, Justine, Karen and Sarah. The Complainant hired the Respondent to supervise the physical construction of certain aspects of the Jukasa Studios, and to register the disputed domain on behalf of the Complainant and in the Complainant's name. However, the Respondent registered the disputed domain name in its own name.
In June, 2009, the business relationship between the Complainant and the Respondent ended. At that time, and thereafter, the Complainant operated his business as Jukasa Studios, and actually used the disputed domain name from that point forward in connection with his associated website. The Complaint contains a significant amount of evidence relating to the business operations of the Complainant's studios, and his extensive use of the JUKASA trademarks over the years.
On February 25, 2015, the Complainant discovered that the disputed domain name was not registered in the name of the Complainant, but in fact was registered in the Respondent's name. The Complainant contacted the Respondent on February 25, 2015, seeking transfer of the disputed domain name, and no response was ever received.
The Complainant's attorney, Mr. Violi, contacted the Respondent several times, making numerous requests for the Respondent to contact him regarding this matter without success.
On April 28, 2015, Mr. Violi contacted the Registrar to rectify the ownership of the disputed domain name. Acting on advice from the Registrar, Violi asked for the Respondent's cooperation in changing the ownership particulars. The Respondent refused to correct the disputed domain name registration and demanded (through an intermediary) that the Complainant pay CAD 100,000 for services allegedly provided by the Respondent in connection with the construction of the Jukasa Studios.
The Complainant has filed two Canadian Trademark applications for the mark JUKASA under Serial Nos. 1,728,062 and 1,728,063 filed on May 13, 2015. Those applications are still pending before the Canadian Trademarks Office.
The disputed domain name was registered on June 24, 2008. Since JUKASA Studios began, the disputed domain name has always reverted to the Complainant's website, and was under the control of the Complainant, until the Registrar locked the domain name because of this dispute. At the time the Complaint was filed the disputed domain name reverted to a webpage that featured advertisements of the Complainant's business. 5. Parties' Contentions A. Complainant Confusingly Similar
The Complainant claims that it owns two trademark applications for JUKASA, which are listed in paragraph 4 above, and that it has common law rights in JUKASA and JUKASA STUDIOS dating back to June, 2008.
The Complainant further contends that the disputed domain name is confusingly similar to the Complainant's JUKASA trademark and the trade name Jukasa Studios. Rights and Legitimate Interests
The Complainant submits that the Respondent does not have any rights or legitimate interests in the disputed domain name . The Respondent is not commonly known by the name "Jukasa Studios", and has never been authorized or licensed by the Complainant to use its trademark. The Complainant further contends that the Respondent has not used the disputed domain name in connection with a bona fide offering of goods and services. The disputed domain name reverted for many years to the Complainant's website until the dispute between the Parties arose. The Complainant contends that the Respondent was hired to register the disputed domain name on the Complainant's behalf, but instead without authorization registered the disputed domain name in its own name. The Respondent was aware of the Complainant's rights in the JUKASA trademark because of their prior business relationship, and has no rights or legitimate interests in the disputed name, other than to interfere with the business of the Complainant for purposes of monetary gain. After being contacted by the Complainant seeking correction of the ownership of the disputed domain name, the Respondent sought payment in the amount of CAD 100,000 which far exceeds the Respondent's out-of-pocket expenses associated with the disputed domain name. Registered and Used in Bad Faith
The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith because (i) the Respondent was aware of the Complainant's rights in the JUKASA trademark when the Respondent registered the disputed domain name; (ii) the Respondent without authorization registered the disputed domain name in its own name, after it was hired to register the disputed domain name on behalf of the Complainant and (iii) the Respondent registered and is holding the disputed domain name to prevent the Complainant from registering it and is seeking payment in the amount of CAD 100,000 in excess of the out-of-pocket expenses associated with the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the Complainant has common law rights in JUKASA and the trade name "Jukasa Studios" by virtue of the extensive use and reputation established in the evidence submitted by the Complainant. The disputed domain name is identical to the Complainant's trade name and confusingly similar to the JUKASA trademark.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The Respondent did not file any materials in this proceeding, and the Panel has no reason to doubt the veracity of the assertions made in the Complaint. The Respondent is not commonly known by the name "Jukasa", and was clearly never authorized or licensed by the Complainant to use the Complainant's trademark JUKASA. The Complainant and the Respondent had a business relationship, and as part of that relationship, the Respondent was instructed to register the disputed domain on behalf of the Complainant. The fact that the disputed domain name reverted to the Complainant's website for many years is evidence that the disputed domain name was always intended to be used and owned by the Complainant. The Respondent's conduct in refusing to correct the ownership of the disputed domain name after repeated requests, together with a demand for payment in the amount of CAD 100,000 is not evidence of a right or legitimate interest in the disputed domain name. Based on the evidence filed in this proceeding, the Panel finds that the Respondent does not have any rights or legitimate interests in the disputed domain name .
Accordingly, the Panel finds that the Complainant has satisfied the requirements under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel finds that the Respondent was aware of the Complainant's rights in the mark JUKASA when it registered the disputed domain name on June 6, 2008, and that the Respondent was in fact instructed by the Complainant to register the disputed domain name on behalf of the Complainant, and in the Complainant's name. In the absence of any evidence to the contrary, the Panel concludes that the Respondent acted wrongfully in registering the disputed domain name in its own name, contrary to the Complainant's instructions. The Panel further concludes that the Respondent is now attempting to interfere with the Complainant's business by refusing to correct the ownership of the disputed domain name. In all the circumstances, the Panel finds that the Respondent's conduct in seeking payment in the amount of CAD 100,000 for the disputed domain name, so many years after the fact, is opportunistic and unfounded, and it constitutes further evidence of bad faith under the Policy.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(iii) of the Policy. 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.
Christopher J. Pibus
Sole Panelist
Date: January 20, 2016
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