WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

J.D. Edwards & Company v. Nadeem Bedar

Case No. D2002-0693

 

1. The Parties

The Complainant is J.D. Edwards & Company, a corporation incorporated in Denver, of Denver, Colorado, United States of America.

The Respondent is Nadeem Bedar, London, SE2 0EP, United Kingdom.

 

2. The Domain Name and Registrar

The domain name is <jdedwards.biz> and the registrar is Melbourne IT d/b/a Internet Names Worldwide.

 

3. Procedural History

The electronic version of the Complaint was filed on July 22, 2002. The hardcopy of the Complaint was received on July 25, 2002.

Payment in the required amount was received by the Center.

The WIPO Arbitration and Mediation Center (the "Center") issued a deficiency notification to the Complainant in relation to the Complaint on July 26, 2002. The deficiency was rectified by the Complainant on July 26, 2002. A formal amendment to the Complaint was received by the Center via email on July 26, 2002, and in hardcopy on July 30, 2002.

In accordance with Paragraph 4(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") and Paragraph 5 of the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"), the Center verified that the Complaint satisfies the formal requirements of the Policy, the Rules and the Supplemental Rules.

On August 6, 2002, the Center formally notified the Respondent by courier and email of the Complaint and of the commencement of this administrative proceedings and sent copies to the Complainant, the Registrar and ICANN.

On August 20, 2002, the Respondent filed an electronic version of the Response, and a hardcopy of the Response was received by the Center on August 22, 2002.

On August 29, 2002, the Center contacted John Swinson and requested that he act as Panelist in this case. Mr. Swinson accepted to act as Panelist in this case and submitted a Statement of Acceptance and Declaration of Impartiality and Independence.

On September 4, 2002, the parties were notified that Mr. Swinson had been appointed as the Sole Panelist.

The language of the proceeding was English.

The panel is satisfied that the Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules; payment was properly made; the panel agrees with the Centerís assessment concerning the Complaintís compliance with the formal requirements; the Complaint was properly notified to the Respondent in accordance with paragraph 2(b) of the Rules; the Response was filed in accordance with the requirements of the Rules and Supplemental Rules; the administrative panel was properly constituted.

 

4. Factual Background

The Complainant is the owner of the registered trademarks "JD EDWARDS", "J.D. EDWARDS", "J.D. EDWARDS & CO" and "J.D. EDWARDS & COMPANY."

The Respondent has registered the domain name <jdedwards.biz>.

Although not the subject of this dispute, the Respondent has also registered the domain name <jdedwards.co.uk>.

 

5. Partiesí Contentions

A. Complainant

The Complainant contends that it owns numerous trademarks worldwide, including in the United States of America, the United Kingdom, Europe, Asia, South America and the Middle East for the marks "JD EDWARDS", "J.D. EDWARDS" and in some countries, "J.D. EDWARDS & CO."

The Complainantís business relates to computer software and related services and training.

The entire section of the Complainantís submissions in relation to the Respondentís absence of rights or legitimate interest in the disputed domain name and registration of the disputed domain name and use in bad faith by the Respondent is as follows:

"In accordance with Rules, para. 3(b)(ix)(2), the Respondent has no right or license to use a registered trademark of J.D. Edwards & Company.

In accordance with Rules, para. 3(b)(ix)(3), J.D. Edwards feels that Respondent registered the domain name in bad faith for the following reasons:

1. The domain name is not being used for any legitimate purpose. The web site that the domain name points to mocks J.D. Edwards.

2. J.D. Edwards believes that the Respondent chose to register the domain name to park (as evidenced by the domain name of the registrar itself: domain-parking.net). Domain parking is a tactic commonly employed by people/organizations who wish to resell a domain name at a profit."

B. Respondent

The Respondent contends that:

(a) the domain name is not identical to the Complainantís trademark because "the Respondentís line of business is different from the Complainantís [therefore] "jdedwards" may be used in the [disputed] domain name;"

(b) the registered the disputed domain name "in good faith to start his online Cat Photographs business" and that "the services provided by [the] Respondentís business is entirely different from the Complainantís [business];"

(c) the Respondentís proposed business is still in the planning stage and that is why an "under construction" page had been published on the website for the disputed domain name. The Respondent has added a disclaimer to the website for the disputed domain name which states: "This web site is NOT affiliated with J. D. EdwardsÒ & Company. Contents of this site are neither endorsed nor approved by J. D. EdwardsÒ & Company;"

(d) the Respondent has no intention to sell, rent or otherwise transfer the disputed domain name to the Complainant or a competitor of the Complainant; and

(e) the Complainant has provided no evidence that the disputed domain name site contains "mocking material." Also, the fact that the Respondent has used the services of <domain-parking.net> is not relevant, as many people use services similar to those offered by <domain-parking.net> in order to purchase a domain name and to park it on a temporary server until the domain name can be transferred to a web host server.

 

6. Discussion and Findings

In order to qualify for a remedy, the Complainant must prove each of the three elements set out in Paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy, as approved by ICANN on October 24, 1999 (the "Policy"), namely:

(a) the domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and

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

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

The onus of proving these elements is that of the Complainant.

6.1 Identical or similar to a trademark or service mark

The Panel finds that the Complainant is the owner of the registered trademarks JD EDWARDS and J.D. EDWARDS and that the domain name is identical to both of these trademarks, apart from the generic ".biz" identifier. The addition of the generic identifier ".biz" does nothing to deflect the impact on the viewer of the "JD EDWARDS" mark.

For the purpose of determining whether the disputed domain name is identical to a trademark or service mark in which the Complainant has rights, it is irrelevant that the Complainant and Respondent may conduct business in industries that are completely unrelated.

6.2 Illegitimacy

The Complainant contends that the Respondent has no legitimate interest in the use of the domain name as the Respondent "has no right or license to use a registered trademark of J.D. Edwards & Company."

There is no apparent association between the disputed domain name and Respondentís name. The Respondent has not shown that it owns or is the beneficiary of a trade or service mark that is identical to the disputed domain name, nor that the Respondent is commonly known by the domain name.

Whilst the Respondent contends that he intends to use the disputed domain name for the purpose of starting his "online Cat Photographs business," he has not provided any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.

The Panel notes that at the time of writing this decision, the website for the disputed domain name says "This site is still under construction" and there are hyperlinks to the "Cat Fanciersí Association" and "The International Cat Association."

The onus is on the Complainant to prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Panel notes the Respondentís assertion that he intends to use the disputed domain name in connection with his cat photography business. However, the Respondent has not provided any explanation as to why it chose the disputed domain name for the purpose of setting up a Cat Photography business, nor has the Respondent provided any evidence of demonstrable preparations to use the disputed domain name. On balance, the Panel finds that the Respondent has not provided enough evidence to satisfy the Panel that the Respondent has any rights or legitimate interests in the disputed domain name.

6.3 Bad Faith

The Complainant contends that the Respondent registered and is using the domain name in bad faith as:

(a) "the domain name is not being used for any legitimate purpose" and that "the web site that the domain name points to mocks J.D. Edwards"; and

(b) "the Respondent chose to register the domain name to park" and that "domain parking is a tactic commonly employed by people/organizations who wish to resell a domain name at a profit."

These are the only grounds that the Complainant is relying on to show bad faith.

The Complainant has not specified in what way the web site for the disputed domain name "mocks" the Complainant and has not provided any evidence of such alleged "mocking."

The Respondent asserts that:

(a) he has no intention of selling or transferring the domain name to the Complainant nor to a competitor of the Complainant;

(b) he is not a competitor of the Complainantís;

(c) the disputed domain site contains a disclaimer that the site is not affiliated with J. D. Edwards & Company nor endorsed or approved by J. D. Edwards & Company.

This is similar to the arguments put forward by the Respondent in The Governor and Company of the Bank of Ireland v. Escape Ventures Inc., WIPO Case No. DBIZ2001-0039 when the Panel found in favour of the Respondent on the issue of bad faith.

The Panel was disappointed at the lack of effort put into the Complaint by the Complainant.

As is allowed under the Rules, the Panel visited the website located at the disputed domain name. The source code for that website included the following:

<meta name="keywords" content="ERP, JD Edwards, SAP,Peoplesoft">

The Panel is aware that ERP is, in the software industry, a reference to Enterprise Resource Planning. The Panel notes from the Complainantís website that the Complainant provides ERP software. SAP and Peoplesoft, one would suspect, are competitors of the Complainant.

Accordingly, the Panel finds that due to the Respondentís use of metatags that clearly relate to the Complainant (and not a cat photography business), that the Respondent has, by using the disputed domain name, intentionally attempted to attract, for commercial gain, Internet users to the Respondentís website, by creating a likelihood of confusion with the Complainantís trademark. See also Vodafone Group Plc v. Desiree Mendoza, WIPO Case No. D2001-1037.

On the balance of probabilities, the Panel finds that the disputed domain name was registered and is being used in bad faith and, therefore, the Complainant satisfies paragraph 4(a)(iii) of the Policy.

 

7. Decision

For the reasons set forth above, the Panel decides that the Complaint succeeds. The Panel has found that all of the requirements of paragraph 4(a) of the Policy have been made out. Accordingly, the Panel orders that the domain name <jdedwards.biz> be transferred by to the Complainant, J.D. Edwards & Company.

 


 

John Swinson
Sole Panelist

Dated: September 30, 2002