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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Verisign, Inc. v. jumbo domains

Case No. D2006-1582

 

1. The Parties

The Complainant is VeriSign, Inc., of Mountain, View, California, United States of America, represented by Ballard Spahr Andrews & Ingersoll, LLP, of Washington, D.C., United States of America.

The Respondent is jumbo domains, of Apopka, Florida, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <jamsterdownload.com> (the “Disputed Domain Name”) is registered with Blue Razor Domains, Inc.

 

3. Procedural History

The Complaint was filed against an individual (apparently the administrative and technical contact listed in the Whois) and jumbo domains with the WIPO Arbitration and Mediation Center (the “Center”) on December 12, 2006. On December 15, 2006, the Center transmitted by e-mail to Blue Razor Domains, Inc., a request for registrar verification in connection with the domain name at issue. On December 15, 2006, Blue Razor Domains transmitted by e-mail to the Center its verification response indicating that the individual named in the Complaint is not the registrant of the Disputed Domain Name and that the registrant is “jumbo domains”. Further, Blue Razor Domains provided the contact details for the registrant “jumbo domains”; the individual named was also indicated as the administrative and technical contact with separate contact details provided. On December 15, 2006, the Center sent a Complaint Deficiency Notification to Complainant. On the same date, Complainant submitted to the Center a Supplemental Filing amending the Complaint by naming the Respondent as “jumbo domains/James Martin”. The Center verified that the Complaint satisfied the formal requirements of the 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”).¹

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 19, 2006. A copy of the notification and Complaint was also forwarded to the administrative and technical contact details provided by the registrar. In accordance with the Rules, paragraph 5(a), the due date for Response was January 8, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 10, 2007.

The Center appointed Douglas M. Isenberg as the sole panelist in this matter on February 2, 2007. 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.

On February 13, 2007, the Panel submitted a Panel Order to the Center, and the Center notified the parties of same on February 15, 2007. In the order, the Panel asked the Complainant to provide further details about the status of its trademark applications and registrations. On February 24, 2007, the Complainant submitted its response to the order.

The Panel is satisfied that the appropriate Respondent in this case is the listed registrant of the disputed domain name, that is, “jumbo domains”.

 

4. Factual Background

Complainant states that, “through its Jamster and Jamba subsidiaries, [it] operates one of the largest off-deck catalogs of premium mobile content, including music, graphics, games and community services, which can be ordered using a short messaging service, and is distributed to carriers and consumers worldwide”.

Complainant states that it is the owner² of the following U.S. trademark applications:

- JAMSTER: U.S Serial No. 76-619,714; filed November 8, 2004; priority date May 10, 2004.

- JUMSTER: U.S. Serial No. 76-617,377; filed October 22, 2004; abandoned February 14, 2006.

The first application listed above matured into a registration on December 12, 2006 (U.S. Reg. No. 3,182,229), after the Complaint was filed.

Although the second application listed above has been abandoned, this important fact was not noted by the Complainant in its Complaint but was confirmed by the Complainant in its response to the panel’s order.

Complaint provided as an exhibit a list of approximately 139 “registrations and applications for the JAMSTER Marks globally”. The exhibit did not indicate which of the filings are pending applications and which have been registered. In response to the panel’s order, the Complainant provided such a list, showing numerous registrations worldwide for the JAMSTER mark owned by Jamster International Sаrl.³

The registrations cited by Complainant are referred to hereafter as the “JAMSTER Marks”.

The Disputed Domain Name was registered on March 1, 2006.

 

5. Parties’ Contentions

A. Complainant

Complainant contends, in relevant part, as follows:

- The Disputed Domain Name is confusingly similar to the JAMSTER Marks because “[t]he only difference between the Complainant’s mark and the Disputed Domain Name is the addition of the term ‘DOWNLOAD,’ which… is relevant to and descriptive of the music and ringtone related services provided by the Complainant…”

- Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because Complainant has not authorized Respondent to use the Jamster Marks; the Disputed Domain Name was registered after Complainant had established rights in the Jamster Marks; the Disputed Domain Name “does not reflect the Respondent’s common name”; and the website associated with the Disputed Domain Name “appears to operate under the name ‘MP3DOWNLOADHQ.’”

- The Disputed Domain Name has been registered and used in bad faith because Respondent is using the Disputed Domain Name in connection with a website at <mp3downloadhq.com>, which “offers products and services that are directly competitive to those offered by Complainant”.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; (ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith. Policy, Paragraph 4(a).

A. Identical or Confusingly Similar

Based upon the trademark registrations cited by Complainant, it is obvious that Complainant has rights in the JAMSTER Mark.

As to whether the Domain Name is identical or confusingly similar to the JAMSTER Marks, the relevant comparison to be made is with the second-level portion of the Domain Name only (i.e., “jamsterdownload”), as it is well-established that the top-level domain name (i.e., “.com”) should be disregarded for this purpose. See, e.g., The Forward Association, Inc., v. Enterprises Unlimited, NAF Claim No. FA0008000095491 (“[N]either the beginning of the URL (http://www.), nor the TLD (.com) have any source indicating significance. Those designations are merely devices that every Internet site provider must use as part of its address”).

Therefore, the only difference between the relevant portion of the Disputed Domain Name (“jamsterdownload”) and the JAMSTER Marks is the addition of the word “download” to the Disputed Domain Name. The Panel agrees with the decision cited by Complainant, Microsoft Corporation v. Wayne Lybrand, WIPO Case No. D2005-0020, that, given the nature of the services offered by Complainant under the JAMSTER Marks, “[t]he addition of such [a] relevant descriptive word[] reinforces rather than detracts from the conclusion that the Domain Name confusingly refers to the business of Complainant and would likely cause at least some customers to assume that the Domain Name is associated with Complainant”. See also Playboy Enterprises International, Inc. v. John Taxiarchos, WIPO Case No. D2006-0561 (finding confusing similarity where a domain name “incorporates the whole of the Complainant’s trademark… together with [a] descriptive [phrase]… associated with the Complainant and its renowned activities”).

Accordingly, the Domain Name is confusingly similar to the Complainant’s JAMSTER Marks and the Panel is convinced that Complainant has proven the first element of the Policy.

B. Rights or Legitimate Interests

Complainant argues that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because Complainant has not authorized Respondent to use the JAMSTER Marks; the Disputed Domain Name was registered after Complainant had established rights in the JAMSTER Marks; the Disputed Domain Name “does not reflect the Respondent’s common name”; and Respondent is using the Disputed Domain Name in connection with a website known as “MP3DOWNLOADHQ”.

Under the Policy, “a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP”. See e.g. the WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, paragraph 2.1, and the cases cited therein.

Accordingly, as a result of Complainant’s arguments and without any evidence of Respondent’s rights or legitimate interests in the Domain Name, the Panel is satisfied that the Complainant has proven the second element of the Policy.

C. Registered and Used in Bad Faith

Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has 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 the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has 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 the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website 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 registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).

In this case, Complainant specifically alleges that bad faith exists pursuant to paragraph 4(b)(iv) of the Policy. In particular, Complainant argues that bad faith exists because Respondent is using the Disputed Domain Name to redirect visitors to a website that offers products and services that are competitive with those offered by Complainant. A printout of this website provided as an exhibit by Complainant supports this argument. Accordingly, Complainant has established the presence of bad faith. See, e.g., Wal-Mart Stores, Inc. v. Whois Privacy, Inc., WIPO Case No. D2005-0850 (“where… the links are apparently to competitive websites, especially when there is no indication that the links are not sponsored by or affiliated with the relevant trademark owner, such activity indicates bad faith under the Policy”).

Therefore, the Panel is convinced that Complainant has proven the third element of the Policy.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <jamsterdownload.com> be transferred to the Complainant.

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Douglas M. Isenberg
Sole Panelist

Dated: March 1, 2007

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¹ The Panel notes that the registrant as shown in the Whois record is merely “jumbo domains”.

² The owner of these marks is listed on the website of the United State Patent and Trademark Office as Jamster International Sаrl, not VeriSign, Inc. In its complaint, Complainant states that “Complainant is VeriSign, Inc…. including its wholly owned subsidiaries Jamster International Sаrl and Jamba GmbH”.

³ In its complaint, Complainant states that “Complainant is VeriSign, Inc…. including its wholly owned subsidiaries Jamster International Sаrl and Jamba GmbH”.