The Complainant is The Jordan Company L.P., United States of America (“United States”), represented by Mayer Brown LLP, United States.
The Respondent is Tony Josh, United States. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 7, 2019. On August 8, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 8, 2019, 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 August 9, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 29, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 30, 2019.
The Center appointed Lynda M. Braun as the sole panelist in this matter on September 3, 2019. 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 a private equity firm that was founded in 1982. For over 30 years, the Complainant has contributed to the growth of businesses across industries including the healthcare, energy, financial services, industrial, telecommunications, and transportation sectors. The Complainant’s multi-billion dollar deals have been featured in major news outlets for decades.
The Complainant began using the trademark THE JORDAN COMPANY (“TJC Mark”) in connection with its services at least as early as April 15, 1982. The TJC Mark is an unregistered, common law trademark. The Complainant has owned the domain name for over 20 years. The domain name resolves to the Complainant’s official website at “www.thejordancompany” that contains detailed information about the services it offers, and promotional materials about its investments and acquisitions in connection with the TJC Mark.
The Disputed Domain Name was registered on April 18, 2019. The Disputed Domain Name resolves to a landing page that states: “This site can’t be reached. www.’s server IP address could not be found. Try running Windows Network Diagnostics.” The Respondent has apparently configured the Disputed Domain Name for email functions, since it has impersonated the Complainant by contacting high-level executives at the Complainant’s portfolio companies using names and email addresses associated with the Disputed Domain Name. Individuals who had been targeted by the Respondent’s fraudulent email-based phishing scheme were asked to wire funds on behalf of the Complainant and were informed that the Complainant would repay the funds. 5. Parties’ Contentions A. Complainant
The following are the Complainant’s contentions:
- the Disputed Domain Name is confusingly similar to the Complainant’s trademark;
- the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name;
- the Disputed Domain Name was registered and is being used in bad faith; and
- the Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)(i-iii)):
(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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 first issue here is whether the Complainant has protectable rights in the TJC Mark since the Complainant does not own a registered trademark, but rather a common law trademark. The second issue is whether at the time the Disputed Domain Name was registered the TJC Mark had acquired sufficient distinctiveness through use and marketing sufficient to identify the source of the private equity services with the Complainant.
Paragraph 4(a)(i) of the Policy refers merely to a “trademark or service mark” in which a complainant has rights and does not expressly limit the application of the Policy to a registered trademark or service mark. Therefore, the fact that in this case the Complainant does not have a registered trademark or service mark for the TJC Mark does not preclude a finding that it has established trademark or service mark rights. See Imperial College v. Christophe Dessimoz,WIPO Case No. D2004-0322. With respect to the second issue, common law trademark and service mark rights exist when a party demonstrates that there is sufficient goodwill and reputation in a name – and therefore acquired distinctiveness – to establish sufficient association with the party itself and the source of its services. Id.
The Panel concludes that the Complainant has established common law rights in the TJC Mark based on its over 30 years of use before the Respondent registered the Disputed Domain Name. Moreover, the evidence submitted by the Complainant in this proceeding includes information about the Complainant’s website, information about its portfolio of investments and acquisitions, and press coverage of the Complainant’s celebrity.
Moreover, to establish unregistered trademark rights for purposes of the UDRP, a complainant must show that its mark has become a distinctive identifier which consumers associate with that complainant’s goods and/or services. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.3. The Complainant has provided adequate grounds for a finding that it holds acquired distinctiveness and significant goodwill to have established common law trademark rights in the TJC Mark. Further, it is well-established that “[u]se of a mark in commerce and marketing, including displaying the mark prominently on a company website, is evidence of common law trademark ownership [and] the UDRP recognizes and protects common law trademarks”. See BlackBerry Limited v. Bryan Fan,WIPO Case No. D2015-0464.
The Disputed Domain Name consists of the TJC Mark followed by the letters “llc” which is the abbreviation for “limited liability company” and followed by the generic Top-Level Domain (“gTLD”) “.com”. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the addition of a descriptive word or abbreviation. See Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo,WIPO Case No. D2011-0795; see also Hoffmann-La Roche, Inc. v. Wei-Chun Hsia,WIPO Case No. D2008‑0923. Specifically, the addition of the abbreviation “llc” does not detract from the distinctiveness of the dominant part of the Disputed Domain Name. See Areva v. St. James Robyn Lioges,WIPO Case No. D2010-1017. As stated in section 1.8 of WIPO Overview 3.0, “where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”.
Finally, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva,WIPO Case No. D2012-0182. Thus, the Disputed Domain Name is confusingly similar to the Complainant’s TJC Mark.
Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant. B. Rights or Legitimate Interests
Under the Policy, a complainant must make out a prima facie case that a respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, a respondent carries the burden of production of evidence to demonstrate rights or legitimate interests in the disputed domain name. If a respondent fails to do so, a complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1.
The Complainant has not authorized, licensed, or otherwise permitted the Respondent to use its TJC Mark. The Complainant does not have any type of business relationship with the Respondent, nor is the Respondent making a legitimate noncommercial or fair use of the Disputed Domain Name. Instead, the Panel finds that the Respondent is improperly using the Disputed Domain Name for a fraudulent purpose and for commercial gain. The Respondent registered the Disputed Domain Name in an attempt to appear associated or affiliated with the Complainant and to use the emails it created from the Disputed Domain Name in connection with a phishing scheme. Thus, the Respondent did not use or have an intention to use the Disputed Domain Name in connection with a bona fide offering of goods or services and has no rights or legitimate interests in the Disputed Domain Name.
Finally, where a respondent has registered and is using a domain name in bad faith (see the discussion below), that respondent cannot be reasonably found to have made a bona fide offering of goods or services. In this case, the Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent has not submitted any substantive arguments or evidence to rebut the Complainant’s prima facie case.
Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant. C. Registered and Used in Bad Faith
The Panel finds that based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith pursuant to paragraph 4(b) of the Policy.
First, the Disputed Domain Name was registered long after the Complainant first began using its TJC Mark. The Panel finds it likely that the Respondent had the Complainant’s TJC Mark in mind when registering the Disputed Domain Name.
Second, the Respondent used the Disputed Domain Name to impersonate the Complainant and perpetrate a phishing scheme directed against the Complainant, a strong indication of bad faith. The Respondent’s phishing scheme to send fraudulent emails purporting to come from the Complainant, seeking wired funds, evidences a clear intent to disrupt the Complainant’s business, deceive individuals, and trade off the Complainant’s goodwill by creating an unauthorized association between the Respondent, the Disputed Domain Name and the Complainant’s TJC Mark. See Banco Bradesco S.A. v. Fernando Camacho Bohm,WIPO Case No. D2010-1552. Such conduct is emblematic of the Respondent’s bad faith registration and use of the Disputed Domain Name. See Petróleo Brasileiro S.A. - Petrobras v. AK Bright,WIPO Case No. D2013-2063 (considering the reputation of the complainant and the emails sent by the respondent using the complainant’s trademark, the respondent is held to have registered and used the disputed domain name in bad faith). Further, UDRP panels have found that email-based phishing schemes that use a complainant’s trademark in the disputed domain name are evidence of bad faith. See, e.g., DeLaval Holding AB v. Registration Private, Domains By Proxy LLL / Craig Kennedy,WIPO Case No. D2015-2135.
Finally, the registration of a domain name that is confusingly similar to a trademark by an entity that has no relationship to that mark may be sufficient evidence of opportunistic bad faith. See Ebay Inc. v. Wangming,WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163. Based on the circumstances here, the Respondent registered and is using the Disputed Domain Name in bad faith to target the Complainant’s TJC Mark for commercial gain.
Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant. 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.
Lynda M. Braun
Sole Panelist
Date: September 7, 2019
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