The Complainant is JCB Co., Ltd., Japan, represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States of America (“United States”).
The Respondent is Wen Tao, 111, China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 30, 2020. On the following day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 2, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 3, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on December 4, 2020. The Center verified that the Complaint together with the amendment to 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 7, 2020. In accordance with the Rules, paragraph 5, the due date for the Response was December 27, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 29, 2020. The Center appointed Matthew Kennedy as the sole panelist in this matter on January 14, 2021. 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 credit card company founded in 1961 as “Japan Credit Bureau”. Its credit, debit and prepaid cards are accepted in more than 190 countries and territories. The Complainant owns multiple trademark registrations in multiple jurisdictions, including United States trademark registration number 1,151,914 for a figurative mark including the letters “JCB”, registered on April 21, 1981, specifying services in class 36; United States trademark registration number 3,080,016 for JCB CARD, registered on April 11, 2006, specifying goods and services in classes 9 and 35; Chinese trademark registration number 175373 for a figurative mark JCB, registered on April 15, 1983, specifying goods in class 16; Chinese trademark registration number 776119 for a figurative mark JCB, registered on January 21, 1995, specifying services in class 36; and Chinese trademark registration number 3238171 for JCB, registered on May 28, 2004, specifying services in class 36. Those trademark registrations remain current. The Complainant also registered the domain name The Respondent is an individual, and a Respondent organization identified as “111”. The disputed domain name was registered on March 25, 2019. It resolves to a website in Chinese displaying advertising for, and hyperlinks to, gambling and pornography websites. The Registrar has confirmed that the language of the Registration Agreement is English. 5. Parties’ Contentions A. Complainant The disputed domain name is confusingly similar to the Complainant’s JCB and JCB CARD marks. The disputed domain name contains these trademarks in their entirety. The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use its trademarks in any manner. The Respondent has never used, or made preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. The disputed domain name was registered and is being used in bad faith. It is implausible that the Respondent was unaware of the Complainant when it registered the disputed domain name given the fame of the Complainant’s trademark. The Respondent is using the disputed domain name in connection with a pornographic website. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy provides that a complainant must prove 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; 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 Based on the evidence presented, the Panel finds that the Complainant has rights in the JCB and JCB CARD marks. The disputed domain name incorporates the JCB and JCB CARD marks, omitting only the space in the latter mark for technical reasons. The marks are preceded in the disputed domain name by the letters “www” without a full stop, which is a common typographical error when entering an Internet address in a browser (so-called “typosquatting”). Accordingly, the addition of those letters without a full stop does not dispel confusing similarity between the disputed domain name and the trademarks that follow. See BHP Billiton Innovation Pty Ltd v. Yorkshire Enterprises Limited and Whois Privacy Services Pty Ltd,WIPO Case No. D2009-1558. The disputed domain name also incorporates the dictionary word “card”, which is not part of the JCB mark, but this does not avoid a finding of confusing similarity for the purposes of the Policy. See Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.,WIPO Case No. D2001-0110. The trademarks remain clearly recognizable within the disputed domain name. The only other element in the disputed domain name is the generic Top-Level Domain “.com”. As a technical requirement of registration, this element is generally disregarded in the comparison between a domain name and a trademark for the purposes of the first element of the Policy. Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy: (i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or (ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or (iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The disputed domain name resolves to a website that displays advertising for, and hyperlinks to, gambling and pornographic websites. The disputed domain name is confusingly similar to the Complainant’s JCB and JCB CARD marks, but the Complainant submits that it has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use its trademarks in any manner. There appears to be no reason to register the disputed domain name The Respondent’s name is listed in the Registrar’s WhoIs database as “Wen Tao” and “111”, not the disputed domain name. There is no evidence that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent failed to rebut that prima facie case because he did not respond to the Complainant’s contentions. Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows: “(iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] web site or location or of a product or service on [the respondent’s] web site or location.” The disputed domain name was registered in 2019, many years after the registration of the Complainant’s JCB and JCB CARD marks including, as regards the JCB mark, in China, where the Respondent is resident. The disputed domain name wholly incorporates the Complainant’s JCB and JCB CARD marks, omitting only the space in the latter mark for technical reasons. The disputed domain name adds the initial letters “www” without the full stop that usually separates that prefix and a domain name. There appears to be no plausible reason to register the disputed domain name other than to take advantage of Internet users who mistype the Complainant’s address “www.jcbcard.com”. The disputed domain name includes the word “card”, which is not part of the JCB mark but indicates an awareness of the Complainant’s goods and services. These circumstances indicate to the Panel that the Respondent was well aware of the Complainant’s trademark at the time of registration of the disputed domain name and that he registered the disputed domain name in bad faith. The disputed domain name is used to attract Internet users who mistype the Complainant’s address “www.jcbcard.com” and to resolve to a website that displays advertising for, and hyperlinks to, gambling and pornography websites. The disputed domain name operates by creating a likelihood of confusion with the Complainant’s JCB and JCB CARD marks as to the source, sponsorship, affiliation, or endorsement of the website to which the disputed domain name resolves. That use is intentional and for the commercial gain of the Respondent, or the operators of the linked websites, or both. In each of these scenarios, the facts fall within the circumstance described in paragraph 4(b)(iv) of the Policy. See Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright,WIPO Case No. D2007-0267. Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) 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 Matthew Kennedy
Sole Panelist
Date: January 22, 2021
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