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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Janus Interantional Holding Co. v. Scott Rademacher

Case No: D2002-0201

 

1. The Parties

Complainant is Janus International Holding Company ("Janus" or "Complainant"), a Nevada company with its registered place of business at 639 Isbell Road, Suite 390-0, Reno, Nevada 89509, United States of America.

Respondent is Scott Rademacher ("Respondent" or "Rademacher") located at 5635 Gates Landing Road, Virginia Beach, Virginia 23464, United States of America.

 

2. The Domain Name and Registrar

The domain name at issue is <janus.info> (the "Domain Name").  The registrar is AAAQ.com, Inc. (the "Registrar") 5400 Vernon Ave., Edina, MN 55436, United States of America.

 

3. Procedural History

On March 1, 2002, the WIPO Arbitration and Mediation Center (the "Center") received hardcopy of the Complaint.  On March 6, 2002 the Center sent an Acknowledgment of Receipt of Complaint to Complainant.  On March 7, 2002, the Center received a copy of the Complaint of Complainant via email.  The Complainant paid the required fee.

On March 7, 2002 after the Center sent a Request for Verification to the Registrar requesting verification of registration data, the Registrar confirmed, inter alia, that it is the registrar of the Domain Name and that the Domain Name is registered in the Respondent's name. 

On March 8, 2002, the Center sent a letter to the Complainant that the Complaint contained deficiencies.  On March 14, 2002, the Complainant filed its Amendment to Complaint via email.  On March 19, 2002, the Center received Complainant's Amendment to Complaint in hardcopy.

The Center verified that the Complaint with Amendment satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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").

On March 20, 2002, the Center sent a Notification of Amended Complaint and Commencement of Administrative Proceeding to the Respondent together with copies of the Complaint with Amendment, with a copy to the Complainant.  This notification was sent by the methods required under paragraph 2(a) of the Rules.

On April 11, 2002, the Center advised Respondent that it was in default for failing to file its Response.  No Response has been received.

On April 24, 2002 after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page (the "Sole Panelist"), the Center notified the parties of the appointment of a single-arbitrator panel consisting of the Sole Panelist.

 

4. Factual Background

Janus International Holding Company, along with its affiliated and subsidiary companies (collectively, "Janus"), is a leading provider of financial and investment services. Established in 1969, Janus has grown to employ approximately 1,500 people and manages approximately $183 billion (as of December 31, 2001) in assets.  With a full family of retail mutual funds and a burgeoning business in separate accounts and subadvisory relationships.

Janus has registered its JANUS trademark, as well as a wide array of marks that incorporate the principal JANUS mark, in the United States.  As of the date of this Complaint, Janus owns thirty-seven (37) trademark registrations in the U.S. for the JANUS trademark and other marks that incorporate the JANUS mark.  These U.S. trademark registrations establish that Janus began using the JANUS trademark in commerce with respect to investment advisory services as of February 5, 1970.  A list of Complainant's U.S. registrations is as follows:

Mark	Registration Date
JANUS	August 18, 1998
E-JANUS	March 27, 2001
JANUS VENTURE FUND	December 15, 1987
JANUS CAPITAL CORPORATION	March 24, 1987
JANUS FUND	December 15, 1987
JANUS FLEXIBLE INCOME FUND	January 9, 1990
JANUS TWENTY FUND	April 10, 1990
JANUS WORLDWIDE FUND	November 10, 1992
JANUS GROWTH AND INCOME FUND	December 15, 1992
JANUS LIFETIME IRA	February 22, 1994
JANUS GROUP OF MUTUAL FUNDS	August 24, 1993
JANUS QUOTELINE	February 13, 1996
JANUS CLASSIC ACCOUNT SERVICES	December 21, 1993
JANUS MERCURY FUND	June 14, 1994
JANUS FEDERAL TAX-EXEMPT FUND	March 29, 1994
JANUS RETIREMENT ADVANTAGE	December 13, 1994
JANUS OVERSEAS FUND	November 7, 1995
JANUS TAX-EXEMPT MONEY MARKET FUND	June 25, 1996
JANUS OLYMPUS FUND	August 24, 1999
JANUS ASPEN SERIES	July 23, 1996
JANUS ENTERPRISE FUND	July 9, 1996
JANUS GOVERNMENT MONEY MARKET FUND	July 2, 1996
JANUS ASSET BUILDER	July 9, 1996
JANUS MONEY MARKET FUND	June 25, 1996
JANUS EQUITY INCOME FUND	July 7, 1998
JANUS HIGH-YIELD FUND	July 7, 1998
JANUS SPECIAL SITUATIONS FUND	November 24, 1998
JANUS XPRESSLINE	May 16, 2000
JANUS GLOBAL TECHNOLOGY FUND	January 16, 2001
JANUS STRATEGIC VALUE FUND	July 3, 2001
JANUS SHORT-TERM BOND FUND	November 7, 2000
JANUS INSTITUTIONAL SERVICES	November 7, 2000
JANUS INTERMEDIATE GOVERNMENT SECURITIES FUND	December 5, 2000
JANUS BALANCED FUND	November 28, 2000
JANUS FUNDS	November 20, 2001
JANUS EQUITY FUNDS	November 27, 2001
JANUS INVESTMENT FUNDS	November 20, 2001

Janus has also registered its JANUS trademark and other marks that incorporate the JANUS mark in the following jurisdictions:  Argentina, Australia, Benelux, Brazil, Canada, Chile, the European Community, France, Germany, Hong Kong, SAR of China, Japan, Mexico, the People's Republic of China, the Republic of Korea, Singapore, Switzerland, Taiwan, Province of China, the United Kingdom and Venezuela.

Janus makes active and wide-ranging use of the JANUS mark on the internet, including use of the JANUS mark in association with the Janus Internet website accessed at the URL <www.janus.com>.  Janus registered the Domain Name <janus.com> on January 19, 2000.

Respondent registered the domain name <janus.info> on September 22, 2001.

 

5. Parties'Contentions

A. Complainant's contentions

i. Complainant contends that it has numerous registrations of the trademark JANUS and that its trademark registrations are valid and subsisting.

ii. Complainant argues that the Domain Name is identical with or confusingly similar to the JANUS mark, pursuant to Paragraph 4(a)(i) of the Policy, because it wholly incorporates the trademark JANUS with the addition of generic terms. 

iii. Complainant contends that Respondent has no rights or legitimate interests in the Domain Name, pursuant to Paragraph 4(a)(ii), and that Respondent has failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Domain Name.

Complainant alleges that prior to notice to Respondent by Complainant of the disputed rights in the Domain Name, there is no evidence of Respondent's use of, or demonstrable preparations to use, the phrase "JANUS" or any phrase similar thereto, or the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services. 

Complainant further alleges that there is no evidence that Respondent has been commonly known by the mark "JANUS" or any mark similar thereto.  There is no evidence that Respondent is making legitimate non-commercial or fair use of the Domain Name.

Complainant states that in its letter of December 10, 2001 to Respondent, Complainant demanded that Respondent cease and desist from any further use of the Domain Name or the JANUS trademark.  Respondent replied by stating that it registered the Domain Name for "personal use under the two-face Ў®god' significance."  Despite Respondent's contention that it registered the Domain Name for personal use, Respondent has not made and is not making any legitimate non-commercial or fair use of the word "Janus" or the Domain Name.  To the contrary, and as discussed below, Respondent's only use of the Domain Name has been to offer to sell the Domain Name to Complainant.  Therefore, Respondent has failed to provide any evidence of its right or legitimate interest in respect of the JANUS mark or the Domain Name.

iv. Complainant contends that Respondent registered and is using the Domain Names in bad faith in violation of Paragraph 4(a)(iii).

Complainant further contends that in its correspondence to Complainant of November 5, 2001, Respondent offered to sell the Domain Name to Respondent.  As stated in Respondent's offer letter to Complainant:  "I have personally acquired "janus.info".  Therefore, I have approached your company and others to offer the first opportunity for purchasing this URL."  By offering to sell the Domain Name to Complainant, as well as other parties, Respondent clearly intends to create a competitive bidding situation with respect to the Domain Name for the purposes of maximizing Respondent's resale price for the Domain Name.  Complainant states that Respondent has registered the Domain Name, which incorporates an indisputably famous trademark, for the primary purpose of selling, renting, or otherwise transferring the Domain Name registration for valuable consideration in excess of Respondent's out-of-pocket costs directly related to the Domain Name.

Complainant further contends that its first use of the JANUS mark and the dates of Complainant's numerous registrations for the JANUS mark are all prior to Respondent's registration of the Domain Name.  Complainant asserts that Respondent had actual and/or constructive knowledge of the JANUS mark.

B. Respondent's contentions

i. Respondent does not dispute that the Complainant has registrations of the JANUS mark.

ii. Respondent does not dispute that the Domain Name is identical with or confusingly similar to the JANUS mark.

iii. Respondent does not dispute that he has no rights or legitimate interests in the Domain Name.

iv. Respondent does not dispute that he registered and used the Domain Name in bad faith.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Sole Panelist as to the principles the Sole Panelist is to use in determining the dispute:  "A Panel shall 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." 

Because both the Complainant and Respondent are domiciled in the United States and United States courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States.  (Tribeca Film Center, Inc. v. Lorenzo Brusasco-Mackenzie, WIPO Case No. D2000-1772, April. 10, 2001, footnote n. 3).

Even though Respondent has failed to file a Response or to contest Complainant's assertions, the Sole Panelist will review the evidence proffered by Complainant to verify that the essential elements of the claims are met.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,

ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and,

iii) that the domain name has been registered and is being used in bad faith.

Enforceable Trademark Rights

Complainant contends that it has numerous registrations of the trademark JANUS and that its trademark registrations are valid and subsisting.  Complainant's trademark registrations serve as prima facie evidence of its ownership and the validity of the JANUS mark. 15 U.S.C. § 1115.  Complainant registrations appear to be incontestable and conclusive evidence of its ownership of the mark and exclusive right to use the mark in connection with the stated goods or services.  15 U.S.C. §§ 1065 and 1115(b).

Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption.  See, e.g., EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047.  Respondent has failed to contest Complainant's assertions regarding its trademark rights.  Therefore, the Sole Panelist finds that Complainant, for purposes of this proceeding, has enforceable rights in the trademark.

Identity or Confusing Similarity

Complainant further contends that the Domain Name is identical with and confusingly similar to the trademark pursuant to the Policy paragraph 4(a)(i), because it wholly incorporates the trademark JANUS with the addition of generic or merely descriptive terms. 

As numerous courts and prior ICANN panels have recognized, the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainant's registered mark.  See Paccar Inc. v. Telescan Technologies, L.L.C., 115 F. Supp. 772 (E.D. Mich. 2000) (finding that <peterbuilttrucks.com>, <kenworthtrucks.com> and similar domain names are not appreciably different from the trademarks PETERBUILT and KENWORTH); Quixar Investments Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253, May 29, 2000, (finding that QUIXTAR and <quixtarmortgage.com> are legally identical).  The addition of other terms in the domain name does not affect a finding that the domain name is identical or confusingly similar to the complainant's registered trademark.

The Sole Panelist notes that the entirety of the mark JANUS is included in the Domain Name.  The addition of the phrases ".com" or ".info" are non-distinctive because they are gTLD's required for registration of a domain name.  Respondent's addition of the gTLD ".info" is non-distinctive because it is required for registration of the Domain Name.

Therefore, the Sole Panelist finds that the Domain Name is confusingly similar to the JANUS mark pursuant to the Policy paragraph 4(a)(i).

Rights or Legitimate Interests

Complainant contends that Respondent has no rights or legitimate interest in the Domain Names pursuant to the Policy paragraph 4(a)(ii).

Paragraph 4(a)(ii) requires the Complainant to prove that the Respondent has no rights to or legitimate interests in the Domain Name.  Once a Complainant establishes a prima facie showing that none of the three circumstances establishing legitimate interests or rights apply, the burden of production on this factor shifts to the Respondent to rebut the showing.  The burden of proof, however, remains with Complainant to prove each of the three elements of Paragraph 4(a). (See Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270, June 6, 2000). 

Respondent has no relationship with or permission from Complainant for the use of the JANUS mark.

The Policy paragraph 4(c) allows three nonexclusive methods for the Sole Panelist to conclude that Respondent has rights or a legitimate interest in the Domain Name:

(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Complainant has sustained its burden of coming forward with proof that the Respondent lacks rights to or legitimate interests in the Domain Names.  Respondent has not provided any evidence that the use of the Domain Name meets the elements for any of the nonexclusive methods provided for in the Policy paragraph 4(c).  Therefore, the Sole Panelist finds that Respondent has no rights or legitimate interest in the Domain Name pursuant to the Policy paragraph 4(a)(ii).

Bad Faith

Complainant contends that Respondent registered and is using the Domain Name in bad faith in violation of the Policy paragraph 4(a)(iii).

The Policy paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of domain names:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product.

Complainant asserts that Respondent offered to sell the Domain Name to Complainant.  By offering to sell the Domain Name to Complainant, as well as other parties, Respondent demonstrated that his primary intent to create a competitive bidding situation with respect to the Domain Name for the purposes of maximizing Respondent's resale price for the Domain Name.  Respondent has not contested the Complainant's assertions regarding bad faith.

The uncontested proof adduced by Complainant is convincing to the Sole Panelist.  Therefore, the Sole Panelist finds that Complainant has shown the necessary elements of bad faith under the Policy paragraph 4(b)(i) and that Respondent registered and used the Domain Name in bad faith pursuant to the Policy paragraph 4(a)(iii).

 

7. Decision

The Sole Panelist concludes (a) that the Domain Name <janus.info> is identical with and confusingly similar to Complainant's registered JANUS mark, (b) that Respondent has no rights or legitimate interest in the Domain Name and (c) that Respondent registered and used the Domain Name in bad faith.  Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Sole Panelist orders that the Domain Name be cancelled.

 

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Richard W. Page
Sole Panelist

Dated:  March 5, 2002