2nd Nov 2004

DECISION 

Jinfonet Software, Inc. v. Internet Services

Claim Number: FA0409000326227

 

PARTIES

Complainant is Jinfonet Software, Inc. (“Complainant”), represented by Marc A. Bergsman, of Dickinson Wright PLLC, 1901 L Street N.W., Suite 800, Washington, DC 20036. Respondent is Internet Services (“Respondent”), represented by Ari Goldberger, of ESQwire.com Law Firm, 35 Cameo Drive, Cherry Hill, NJ 08003.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <jreport.com>, registered with Enom, Inc.

PANEL

The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.

Jeffrey M. Samuels, Chairman

Sandra Jo Franklin, Panelist

Steven L. Schwartz, Panelist

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on September 13, 2004; the Forum received a hard copy of the Complaint on September 14, 2004.

On September 14, 2004, Enom, Inc. confirmed by e-mail to the Forum that the domain name <jreport.com> is registered with Enom, Inc. and that the Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On September 16, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 6, 2004 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@<jreport.com> by e-mail.

A timely Response was received and determined to be complete on October 6, 2004.

Complainant submitted a timely “additional submission” on October 11, 2004.

Respondent submitted a timely “additional submission” on October 18, 2004.

On October 19, 2004, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed Jeffrey M. Samuels, Sandra Jo Franklin, Esq., and Steven L. Schwartz to serve as Panelists.

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant is the owner of the trademark JREPORT, which is used in connection with computer software for use in data retrieval, data analysis, report design, report management, and graphical and textual report delivery for business and non-business use. Complainant began using the mark on January 21, 1998, and filed an application to register the mark with the United States Patent and Trademark Office on July 22, 2003. The application matured into U.S. Registration No. 2,860,330 on July 6, 2004. See Annex 2 to Complaint.

Complainant alleges that Respondent registered the domain name in dispute on October 15, 1998, nine months after Complainant’s date of first use of the JREPORT mark, and notes that Respondent is located only ten miles from Complainant’s offices in Rockville, Maryland. According to Complainant, in late 1998 or early 1999, it learned that the domain name <jreport.com> had been registered by Respondent and resolved to a website displaying sexually explicit and pornographic material for commercial gain. Upon demand by Complainant, Respondent removed this material in 1999, and, since that time, the domain name<jreport.com> has been passive. Despite the passive nature of the site, Respondent later renewed the registration. See Declaration of Dr. Bing Yao, the president and founder of Complainant Jinfonet Software, Inc., attached as Exhibit 7 to Complaint.

Complainant maintains that the domain name <jreport.com> is identical to the JREPORT mark, in which Complainant, through both use and registration, has rights.

Complainant further argues that Respondent has no rights or legitimate interests in the domain name. It contends that Respondent’s Internet Services is a fictitious company name used by an unidentified entity, that there is no evidence that Respondent is commonly known as JREPORT, that Complainant has not licensed or otherwise permitted Respondent to use the JREPORT mark or register the domain name <jreport.com>, and that Respondent is not making any legitimate noncommercial or fair use of the mark. In fact, Complainant emphasizes, Respondent is not making any use of the mark, nor has it for over four years.

With respect to the issue of “bad faith” registration and use, Complainant maintains that, by using a domain name incorporating the JREPORT mark, Respondent attracted unsuspecting internet users looking for Complainant’s JREPORT software products to Respondent’s web site and, thereby, created a likelihood of confusion (and in fact actual confusion) as to the source, sponsorship, affiliation, or endorsement of Respondent’s porno site. 

Complainant alleges the existence of other evidence of “bad faith,” including Respondent’s concealment of its true identity by using the name of an unidentifiable business entity; Respondent’s failure to provide fax or voice numbers for itself or its Administrative Contact, as required by the Registration Agreement; and Respondent’s “passive” holding of the domain name.

B. Respondent

Respondent contends that it registered the domain name in dispute on October 18, 1996. In support of this contention, Respondent submitted a printout of the original Whois report from Internic which indicates that the domain name <jreport.com> was registered in the name of J Report Internet Services on October 18, 1996. See Appendix 1 to Response.

Respondent asserts that the “uncontradicted and irrefutable“ evidence is that Respondent registered the domain name without any knowledge of Complainant or its mark. The fact that the parties reside within ten miles of each other in the same county is of no consequence, Respondent urges, given the size and population of the county and the fact that Complainant does not market its products locally.

In response to Complainant’s contention that Respondent has taken deliberate steps to conceal its true identity, Respondent argues that “[c]ompanies do that all the time but that does not mean they are doing anything wrong.” According to Respondent, Internet Services is a bona fide d/b/a operated by Respondent. Moreover, Respondent adds, the evidence indicates that Complainant has been able to contact Respondent.

Focusing on the relevant UDRP policy, Respondent first contends that Complainant’s alleged mark provides no enforceable rights since Complainant did not begin to use the JREPORT mark until after Respondent first registered the domain name in October 1996.

Respondent next maintains that it has rights or legitimate interests in the domain name. It argues that the display of pornographic material on its web site constitutes a bona fide offering of goods and services. Respondent further urges that, given that it “voluntary[ily] removed the pornographic material, it would be “unfair” to conclude that Respondent lacks a legitimate interest due to passive holding. 

Finally, Respondent indicates that it cannot be found to have registered the domain name in bad faith since it had no knowledge of Complainant or of the JREPORT mark when it registered the domain name in 1996. Even if the October 1998 date is used as the date of registration, Respondent urges, bad faith registration still could not be established since there is no evidence that the domain name was registered with Complainant’s mark in mind. According to Complainant, “[i]t should also be noted that Respondent’s mere knowledge of Complainant’s mark when it renewed (or re-registered) the Disputed Domain Name does not mean the renewals were done in bad faith. Once a domain name is registered in good faith, the Respondent is entitled to renew it based on the original good faith reason the domain name was initially registered.”

Respondent further argues that its willingness to remove the “adult content” of its web site is an indication of its “good faith” and that it is “an unabashed display of chutzpah” for Complainant to now argue that the passive holding of the site – resulting from the removal of the adult material – is evidence of bad faith. Further, Respondent adds, “[i]n order to establish bad faith registration based on passive holding, the trademark owner must have rights predating the domain name registration and the respondent must have had actual or imputed knowledge of those rights, which is not the case here.”

Respondent urges the Panel to find that this is a case of “reverse domain name hijacking.” According to Respondent, Complainant knew or should have known at the time it filed the complaint that it could not establish the requisite bad faith given that the domain name registration predates the filing date of the application to register JREPORT by at least five years.

C. Additional Submissions

In its “additional submission,” Complainant notes that the domain name <jreport.com> was registered in October 1996 by an entity other than Respondent, i.e., J Report Internet Services, of Kensington, Maryland. Thus, Complainant asserts, it is clear that the disputed domain name was not registered until October 1998, after Complainant’s first use of its JREPORT mark.

With respect to the issue of Respondent’s knowledge of Complainant’s mark, Complainant emphasizes that, while the county in which the parties reside comprises 500 square miles with a population of over 1 million, the parties are within ten miles of each other.

On the issue of “bad faith” registration, Complainant cites evidence indicating Respondent‘s pattern of registering third-party marks as domain names, as well as “typo-squatting.” Attached as Exhibits 15-22 are printouts of other registrations owned by Respondent for names such as <justler.com> and <gidelity.com>. With the exception of one site, none of the other names resolve to an actual site and none of the sites are being used to provide bona fide services.

Complainant also contests Respondent’s assertion that it has a legitimate interest in the domain name because it once operated a porno site at<jreport.com>. Complainant asserts that there is no indication that any services were rendered at such site.

In its “additional submission,” Respondent contends that while the 1996 registration was done in the name of J Report Internet Services, such entity is the same as Respondent Internet Services. The declaration of Jay Rose, the individual who registered the domain name <jreport.com> in October 1996, indicates that J Report Internet Services and Internet Services “are one and the same.” See Exhibit 1 to Additional Submission.

Respondent further argues that, even accepting that Respondent did not register the domain name until after Complainant first used the JREPORT mark, there is no evidence that Respondent had knowledge of the mark in 1998, and, thus, there is no evidence of the requisite “bad faith.” Respondent also urges the Panel to disregard the evidence regarding Respondent’s registration of names incorporating misspellings of marks, given that Respondent did not have knowledge of Complainant’s mark.

Finally, with regard to Complainant’s contention that Respondent never provided any services at the <jreport.com> site, Respondent states that, while it is not in the pornography business, it did generate revenue from the adult content promoted at its site and that such activity constitutes a bona fide offering of services.

FINDINGS

The Panel finds that: (1) the domain name <jreport.com> is identical or confusingly similar to a mark, i.e., JREPORT, in which Complainant has rights; (2) Respondent has no rights or legitimate interests in the domain name; but (3) the domain name was not registered and used in bad faith.

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “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 requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1)    the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(2)    Respondent has no rights or legitimate interests in respect of the domain name; and

(3)    the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

The Panel concludes that the <jreport.com> domain name is, for all intents and purposes, identical to Complainant’s JREPORT mark. The addition of the generic top-level domain “.com” in the domain name is irrelevant in determining whether the domain name is identical to Complainant’s mark. See Busy Body, Inc. v. Fitness Outlet Inc., Case No. D2000-0127 (WIPO Apr. 22, 2000) (finding that “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 Panel further concludes that Complainant, through its ownership of a federal registration and use of the JREPORT mark since 1998, has rights in the mark.

Rights or Legitimate Interests

The evidence indicates that the <jreport.com> site currently is a “passive” one. As such, the Panel finds that the evidence does not support a determination that the domain name is being used in connection with a bona fide offering of goods or services or that Respondent is making a legitimate noncommercial or fair use of the name. There is also no evidence that Respondent has been commonly known by the domain name.

As noted above, Respondent, at one point, prior to notice of the dispute, operated a pornographic site at <jreport.com>. The Panel concludes, however, that, under the facts of this case, such use does not constitute a bona fide offering of goods and services under the applicable policy. See Isleworth Land Co. v. Lost In Space, FA, Case 117330 (Nat. Arb. Forum, Sept. 27, 2002) (finding that respondent’s use of its domain name to link to adult-oriented web site did not constitute bona fide offering of goods or services). Respondent acknowledged in its “additional submission” that it is not in the pornography business.

Registration and Use in Bad Faith

The Panel concludes that Complainant has not sustained its burden of proof relating to establishing that the domain name was registered in bad faith. Based on its review of all the evidence, the Panel finds that the owner of the 1996 registration for the <jreport.com> domain name is, for all intents and purposes, the same entity as the instant Respondent. Since such registration predates any use of the JREPORT mark by Complainant, the Panel finds that the 1996 registration was not in “bad faith.” Further, even if the evidence established that Respondent knew of Complainant’s mark at the time the domain name was re-registered by Respondent in 1998, the Panel concludes that it was not the intent of the UDRP to extend the definition of “abusive registration” to domain names originally registered in good faith. See PAA Laboratories GmbH v. Printing Arts America, Case No. D2004-0338 (WIPO July 13, 2004). See also Telaxis Communications Corp. v. William E. Minkle, Case No. D2000-0005 (WIPO March 5, 2000).

Reverse Domain Name Hijacking

The Panel declines to find that the filing of the complaint in this case constitutes “reverse domain name hijacking.” Given the fact that the 1996 registration for the<jreport.com> domain name was in the name of an entity other than Respondent, it may not be held that the proceeding was instituted in bad faith.

 

DECISION

Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED

 

Jeffrey M. Samuels, Chairman

Sandra Jo Franklin, Panelist

Steven L. Schwartz, Panelist

Dated: November 2, 2004