WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

JPMorgan Chase & Co. v. Cinquemille Corp.

Case No. D2007-1514

 

1. The Parties

Complainant is JPMorgan Chase & Co., United States of America, represented by Goodwin Procter LLP, United States of America.

Respondent is Cinquemille Corp., Bahamas.

 

2. The Domain Names and Registrars

The disputed domain names <chaseselect.com>, <chaseselectloan.com> are registered with Moniker Online Services, LLC.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 15, 2007. On October 17, 2007, and October 22, 2007 the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain names at issue. On October 17, 2007, and October 23, 2007, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. 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”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 25, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was November 14, 2007. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 15, 2007.

The Center appointed Leon Trakman as the sole panelist in this matter on November 26, 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.

 

4. Factual Background and Parties’ Contentions

A. Complainant

Complainant claims that, on July 19 and July 27, 2007, Respondent registered the domain names <chaseselect.com> and <chaseselectloan.com>, that the content of these websites appears to be identical to Complainant’s mark, and that Complainant never authorized, endorsed, or sponsored Respondent’s use of the famous CHASE mark.

Complainant contends that, in accordance with the provisions of Title 15 U.S.C. 1111, it provided Respondent with appropriate notice of the registered status of Complainant’s CHASE mark and demanded that Respondent transfer its registration and take down all references to “Chase”, or to any confusingly similar variations thereof, from any web pages that are located at <chaseselect.com> and <chaseselectloan.com>.

Complainant alleges that the CHASE mark is distinctive and is the means by which a broad range of JPMorgan Chase’s products and services are identified and distinguished from the financial products and services of others. Through extensive promotion, as well as long and widespread use, the CHASE mark has attained broad consumer recognition and is “famous” within the meaning of 15 U.S.C. 1125(c)(1).

Complainant maintains that Respondent is not a licensee of, nor is it otherwise associated with JPMorgan Chase or any of its predecessors or subsidiaries. It also adduces evidence that Respondent did not have permission to use the CHASE mark or to market any of Complainant JPMorgan Chase’s products or services.

Complainant alleges that, by registering and using the domain names <chaseselect.com> and <chaseselectloan.com> in bad faith, Respondent has sought to divert Internet surfers to the websites of student loan and credit card providers other than Complainant for the purpose of generating revenue through “pay per click” advertising. If the name <chaseselect.com> or <chaseselectloan.com> appears either on a search engine result or an online advertisement, each time an Internet user clicks on the link, Respondent has the opportunity to generate income.

Complainant argues that it as well as its actual or potential customers is harmed by Respondent’s bad faith practice of directing users to sites other than that of Complainant in the mistaken belief that they are dealing with JPMorgan Chase in whose reputation for banking and financial services they trust.

B. Respondent

Respondent did not reply to Complainant’s contentions.

 

5. Discussion and Findings

Complainant, JPMorgan Chase & Co., is a bank holding company whose subsidiaries are internationally recognized as providers of financial services. Chase National Bank, a JPMorgan Chase predecessor, was founded in 1877. Widely known as “Chase,” its retail banking and financial services are well known and include regional consumer and small business banking, mortgage banking, student lending, credit card services, diversified consumer lending, middle-market banking and community development. Complainant also uses the term “Chase Select Loan” to identify its private education student loan product.

Complainant’s predecessor, JPMorgan Chase, on January 24, 1989 registered at the United States Patent and Trademark Office the service mark and trademark CHASE for use in various banking and financial services and publications. That registration remains valid and the CHASE mark became incontestable on July 30, 1995 by virtue of long and continuous use and pursuant to the provisions of 15 U.S.C. 1065.

Complainant owns over 40 U.S. trademark registrations that contain the word CHASE. Complainant or its predecessor also applied for or obtained trademark registrations that contained “Chase” in over 80 countries outside the U.S. and the Bahamas.

The principal websites of Complainant, JPMorgan Chase & Co. and its subsidiaries, collectively known as “JPMorgan Chase”, include “www.jpmorganchase.com” and “www.chase.com”. Complainant markets its Chase-brand student loans, credit card and other retail financial services through these websites. Since December 19, 2006, Complainant has also held the domain name <chaseselectloans.com> which differs from the disputed domain name <chaseselectloan.com> by only one letter, the letter “s”. Chase Select Loans are certified private student loans offered by Complainant.

Complainants and its predecessors have continuously advertised and promoted a broad range of products and services using the CHASE mark in the United States and internationally, by means of brochures and branch office displays, and through various media, including television, radio, newspapers, periodical publications, direct mail and the Internet.

It is clear that Complainant’s trademark has an established meaning and is widely identified with services provided by Complainant under its CHASE mark and includes services provided by its predecessor and subsidiaries. Complainant also attracts a broad range of national and international customers by offering information and services to current and potential customers through its websites at “www.jpmorganchase.com” and “www.chase.com”. Its websites clearly feature the Chase and JPMorgan marks. Complainant also provides information and services related to its Chase Select Loans in particular at “chaseselectloans.com”. An Internet user who clicks “Chase Select” on Google is directed to the official “chaseselectloans.com” web page where Complainant offers its educational loan services.

Respondent registered the domain names <chaseselect.com> and <chaseselectloan.com> on July 19 and July 27, 2007, respectively. It is clear that Respondent has used <chaseselect.com> and <chaseselectloan.com> to divert Internet users to its own website. It is also reasonable to conclude that Respondent generates revenue by so doing through “pay per click” advertising.

Complainant adduces further evidence that it has been subject to comparable infringements of its intellectual property in the past and that various domain name panels appointed by the Center have held that such practices infringe its trademark and have ordered that the infringing marks or domain names be transferred to Complainant. See J.P. Morgan & Co., Incorporated and Morgan Guaranty Trust Company of New York v. Resource Marketing, WIPO Case No. D2000-0035 (March 23, 2000); The Chase Manhattan Corporation, et al. v. John Whitely, WIPO Case No. D2000-0346 (June 12, 2000); The Chase Manhattan Corporation v. Jehovah Technologies Pte Ltd., WIPO Case No. D2000-0388 (July 5, 2000); The Chase Manhattan Corporation v. Supreme Ltd., Inc., WIPO Case No. D2000-0931 (October 9, 2000); The Chase Manhattan Corporation and Robert Fleming Holdings Limited v. Entertainment Charlotte, WIPO Case No. D2000-0619 (August 6, 2000); The Chase Manhattan Corporation and Robert Fleming Holdings Limited v. Paul Jones, WIPO Case No. D2000-0731 (October 23, 2000); J.P. Morgan Chase & Co. v. CPIC Net, WIPO Case No. D2001-0385, (May 22, 2001); J.P. Morgan Chase & Co. v. Ahn, Giwon, WIPO Case No. D2002-0246 (May 19, 2002); JPMorgan Chase & Co. v. Byeong Deog Im, WIPO Case No. D2005-0543 (July 26, 2005).

The words “Chase Select” were adopted by Complainant to identify its certified private student loans on offer to the public. That practice is evident on an examination of Complainant’s website “chaseselectloans.com”.

A. Identical or Confusingly Similar

Complainant’s trademark is CHASE. Both disputed domain names incorporate that mark as the primary element in its entirety in combination with a descriptive word or words of relevance to Complainant’s area of business. The test for confusing similarity is a direct comparison between each disputed domain name and the mark at issue to determine the likelihood of confusion without regard to any content that may appear on the website. See e.g. WIPO Overview of UDRP Panel Views on Selected UDRP Questions, paragraph 1.2, and cases cited therein. The Panel is satisfied on the basis of this test that each of the disputed domain names is confusingly similar to Complainant’s CHASE mark. The Panel further notes that Complainant’s website includes an identifier for its offered student loan program, “Chase Select SM”, which may or may not be a trademark, but if so would also clearly be virtually identical to the disputed domain name <chaseselect.com> and certainly confusingly similar to <chaseselectloan.com>. Additionally, and without deciding the matter, if Complainant were to have trademark rights in its descriptor and domain name <chaseselectloans.com>, the registration by Respondent of the domain name <chaseselectloan.com> which merely omits the “s” would clearly constitute a case of typosquatting. “The omission, addition, inversion or substitution of a letter is commonly known as typosquatting ... [which] reinforces similarity between the disputed domain names and the trademarks of the Complainant pursuant to Policy, paragraph 4 (a)(i)”. See Starwood Hotels & Resorts Worldwide, Inc. v. Domaincar, WIPO Case No. D2006-0136 (April 17, 2006).

The Panel therefore finds that that both of Respondent’s domain names are confusingly similar to Complainant’s mark.

B. Rights or Legitimate Interests

Respondent’s use of the famous CHASE mark is unauthorized. Respondent has no affiliation with Complainant. It does not have a license from Complainant, nor from any of its subsidiaries or predecessors permitting it to use Complainant’s CHASE mark or the name of Complainant’s Chase Select student loan program.

Respondent clearly registered <chaselect.com> and <chaseselectloan.com> without Complainant or its predecessor’s knowledge or approval.

As a result, Respondent has no right to or legitimate interest in the domain names in dispute.

C. Registered and Used in Bad Faith

Respondent has not used the websites for a bona fide offering of goods and services. Rather, its websites, “www.chaseselect.com” and “www.chaseselectloan.com”, were registered and used in bad faith in order to direct users through a series of links to numerous student loan and credit card providers, as well as to mortgage, college scholarship and debt relief services that are provided by businesses that are unrelated to Complainant. In using its websites for these purposes, Respondent has deliberately exploited Complainant’s Chase brand products and services, diverting the actual or potential customers of Complainant to financial services providers other than Complainant.

Respondent is also in bad faith in using confusingly similar domain names and websites, “impostor websites”, to mimic those of well-known advertisers like Complainant for the purpose of generating income through pay per click advertising. See, e.g., Wal-Mart Stores, Inc. v. Modern Limited - Cayman Web Development, Domain Administrator, WIPO Case No. D2005-0322 (May 24, 2005).

Respondent’s bad faith registration and use of the disputed domain name is contrary to Paragraph 4(b)(iv) of the Policy, in that Respondent has “intentionally attempted to attract, for commercial gain, Internet users to [its] website 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 [its] website or location or of a product or service on [its] website or location.” See further BellSouth Intellectual Property Corporation v. Barbara Kayne, WIPO Case No. D2005-0875 (October 20, 2005); Wal-Mart Stores, Inc. v. Modern Limited - Cayman Web Development, Domain Administrator, WIPO Case No. D2005-0322 (May 24, 2005).

Respondent cannot reasonably claim that it was somehow unaware of Complainant’s mark. Not only is Complainant’s mark widely known; Complainant registered that mark in December 2006, a year and a half before Respondent registered its disputed domain names. As further evidence of Respondent’s bad faith, its domain names, <chaseselect.com> and <chaseselectloan.com> lead to websites that advertise or offer look-alike “Chase” credit cards and student loan services. A Respondent that engages in such practices assuredly acts in bad faith. See BellSouth Intellectual Property Corporation v. Michele Dinoia, WIPO Case No. D2004-0486 (August 27, 2004.)

Given the behavior of Respondent, the fact that Complainant’s marks are widely known, and the absence of any legitimate use of the disputed domain names, Respondent is engaged in the bad faith violation of the ICANN Policy and Rules. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000).

 

6. 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 names, <chaseselect.com> <chaseselectloan.com> be transferred to Complainant.


Leon Trakman
Sole Panelist

Dated: December 7, 2007