WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
J.P. Morgan & Co., Incorporated and Morgan Guaranty Trust Company of New York v. Resource Marketing
Case No. D2000-0035
1. The Parties
Claimants are J.P. Morgan & Co., Incorporated ("J.P. Morgan") and Morgan Guaranty Trust Company of New York ("Morgan Guaranty"). J.P. Morgan is a bank holding company, incorporated in the State of Delaware with headquarters at 60 Wall Street, New York, New York, 10260 USA. Morgan Guaranty is an international bank chartered in and existing under the laws of the State of New York with its principal offices located at 60 Wall Street, New York, New York, 10260 USA. Morgan Guaranty is the largest subsidiary of J.P. Morgan.
Respondent is Resource Marketing a corporation located at 809 Castlewood Drive, Greensboro, North Carolina 27405 USA.
2. The Domain Name(s) and Registrar(s)
The domain name at issue is jpmorgan.org. The registrar is Network Solutions, Inc. (the "Registrar") 505 Huntmar Park Dr., Herndon, Virginia 20170 USA.
3. Procedural History
The WIPO Arbitration and Mediation Center (the "Center") received the Complaint of Complainants on February 6, 2000 by email and on February 7, 2000 in hardcopy. The Complainants paid the required fee.
On February 7, 2000, the Center sent an Acknowledgement of Receipt of the Complaint to the Complainants. On the same date, the Center sent to the Registrar a request for verification of registration data. On February 8, 2000, the Registrar confirmed, inter alia, that it is the registrar of the domain names in dispute and that jpmorgan.org is registered in the Respondent's name.
Having verified that the Complaint 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 Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"), the Center on February 9, 2000 sent to the Respondent, with a copy to the Complainants, a notification of the administrative proceeding together with copies of the Complaint. This notification was sent by the methods required under paragraph 2(a) of the Rules. The formal date of the commencement of this administrative proceeding is February 9, 2000.
On March 1, 2000, the Center sent Notification of Respondentís Default. On March 3, 2000, the Center received Respondentís Response, which the Center acknowledged to the parties on March 3, 2000. On March 6, 2000, Complainants filed a Reply in the form of a letter. On March 10, 2000, after receiving their completed and signed Statements of Acceptance and Declarations of Impartiality and Independence, the Center notified the parties of the appointment of a three-arbitrator panel consisting of Mr. Richard W. Page as the presiding panelist, Mr. Mark Partridge as Complainantsí party-appointed panelist and Mr. M. Scott Donahey as a party-appointed panelist named by the Center.
Complainants objected to and asked the Panel to refuse to consider the late-filed Response, citing the Panel to Talk City, Inc. v. Robertson, ICANN Case No. D2000-0009. However, the Panel notes that Talk City, supra, specifically rejected the request filed by a respondent because it was filed two weeks after the response was due and would serve to delay the panelís decision. Id., paragraph 5(a)(ii), at 4. However, the panel in Talk City also accepted an email filed by Respondent two days after the deadline for a response, because it was received before any substantive review had begun. Id., paragraph 5(a)(i), at 3. This Panel applies the same rationale to the response at issue and will accept it.
Complainants also filed a Reply to the Response. A number of panel decisions have considered a Reply or Rebuttal without comment. See, e.g., Cedar Trade Associates, Inc. v. Ricks, ICANN Case No. FA0002000093633; Aero-Turbine, Inc. v. Mcayman, Ltd., ICANN Case No. FA000200093675; Travel Services, Inc. v. Tour COOP of Puerto Rico, ICANN Case No. FA0001000092524; Heelquick!, Inc. v. Goldman, et al., ICANN Case No. FA0001000092527. Because the distinguished panelists in these cases did not discuss this issue, the Panel in the present case does not have the benefit of their reasoning. However, looking at the Rules and the decision in Easyjet Airline Co., Ltd. v. Steggles, ICANN Case No. D2000-0024, the Panel is persuaded that documents, whether designated "replies" or "rebuttals," are not called for in the Rules. Paragraph 12 of the Rules provides for additional submissions only at the Panelís request, in its sole discretion. The Panel is persuaded by the reasoning of Easyjet, supra, that such unrequested submissions should not be considered. Id. at paragraph 5,I. Accordingly, the Panel does not consider the Reply of Complainants filed in letter form, dated March 6, 2000.
4. Factual Background
For nearly seventy years, Morgan Guaranty has used the trademark J.P. MORGAN to market banking, advisory, financing, trading and related services to businesses, governments and consumers. The trademark J.P. MORGAN was famous and distinctive at the time of registration. Morgan Guaranty owns the registered United States trademarks J.P. MORGAN (Registration No. 1,572,322) and MORGAN (Registration No. 1,077,598). These trademarks are also registered internationally. Morgan Trust has an active presence on the Internet under the domain name jpmorgan.com registered with the Registrar on April 24, 1992. Morgan Trust also owns and used the domain name jpmorgan.net.
Respondent registered the domain name jpmorgan.org with the Registrar on March 25, 1999. Respondent claims it intends to provide, non-profit comparisons of the financial information regarding major financial institutions. Respondent has also registered the domain names firstchigaco.net and pncbank.net.
5. Partiesí Contentions
A. Complainants contend that the domain name jpmorgan.org is identical with and confusingly similar to the trademark J.P. MORGAN pursuant to the Policy paragraph 4(a)(i).
B. Complainants contend that Respondent has no rights or legitimate interest in the domain name jpmorgan.org pursuant to the Policy paragraph 4(a)(ii).
C. Complainants contend that Respondent registered and is using the domain name jpmorgan.org in bad faith in violation of the Policy paragraph 4(a)(iii).
D. Respondent does not contest that the domain name jpmorgan.org is identical with or confusingly similar to the trademark J.P. MORGAN.
E. Respondent contends that it has rights and legitimate interest in jpmorgan.org because of Respondentís contemplated posting of financial information regarding Complainants on a website using the domain name.
F. Respondent contends that its registration and use of jpmorgan.org is in good faith because the use will be noncommercial.
6. Discussion and Findings
Identity or Confusing Similarity
The Panel finds that the domain name jpmorgan.org is identical with and confusingly similar to the trademark J.P. MORGAN.
Rights or Legitimate Interest
Paragraph 4(c)(i) of the Policy provides that evidence of "demonstrable preparations" to use the domain name in connection with a bona fide offering of goods or services before notice of the dispute may show that a Respondent has rights to and legitimate interest in the domain name. Here, although it claims an intent to make legitimate noncommercial use of the domain name, Respondent has provided no annexes, exhibits or other evidence of preparation to use the domain name jpmorgan.org as an active website or of expenses in such preparation. Therefore, the Panel finds that Respondent has no rights or legitimate interest in the domain name jpmorgan.org.
Respondent responds without denying the allegations that it has registered other domain names of financial institutions. Accordingly, the Panel can draw adverse inferences. See paragraph 14(b) of the Rules; Mondich and American Vintage Wine Biscuits, Inc., ICANN Case No. D2000-0004. Panel decisions have found that ownership of numerous domain names which are the names or marks of well known business entities suggests an intent to profit from the activities of others. See, Stella DíOro Biscuit Co., Inc v. The Patron Group, Inc., ICANN Case No. D2000-0012, paragraph 5(b)(1) at 6; Nabisco Brands Co. v. The Patron Group, Inc., ICANN Case No. D2000-0032, paragraph 5(b)(1) at 6; and Parfums Christian Dior v.1 Network, Inc., ICANN Case No. D2000-0022, paragraph 6(c) at 5-6. Therefore, the Panel finds that Respondent has registered and used the domain name jpmorgan.org in bad faith.
The Panel concludes (a) that the domain name jpmorgan.org is identical with and confusingly similar to the trademark J.P. MORGAN, (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 Panel orders that the domain name jpmorgan.org be transferred to Complainant Morgan Guaranty Trust Company of New York.
M. Scott Donahey and Mark Partridge
March 23, 2000