WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
JAI A/S v. Site Services International, Richard Sorensen
Case No. D2007-1685
1. The Parties
The Complainant is JAI A/S of Glostrup, Denmark, represented by Nielsen NÝrager Law Firm, Denmark.
The Respondent is Site Services International, Richard Sorensen, of Dallas, Texas, United States of America.
2. The Domain Name and Registrar
The disputed domain name <jai.com> is registered with Direct Information Pvt Ltd d/b/a PublicDomainRegistry.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 15, 2007. On November 16, 2007, the Center transmitted by email to Direct Information Pvt Ltd d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the domain name at issue. On November 17, 2007, Direct Information Pvt Ltd d/b/a PublicDomainRegistry.com transmitted by email to the Center its verification response confirming that the 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 29, 2007. In accordance with paragraph 5(a) of the Rules, the due date for Response was December 19, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 24, 2007.
The Center appointed Brigitte Joppich as the sole panelist in this matter on January 7, 2008. 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 paragraph 7 of the Rules.
4. Factual Background
The Complainant is among the leading edge developers in vision technology, providing digital camera technology for applications in machine vision, medical equipment, defense and high-end surveillance systems, as well as complete solutions for vehicle identification in traffic enforcement and traffic management. The Complainant has been active under the name JAI since 1967 and has today operations in Europe, the United States of America and Japan. In 2006/2007, its revenue was about US$ 50 million.
The Complainant is the owner of various JAI trademarks in international class 9, including:
- Community Trademark No. 000591511 JAI, registered on October 2, 2001,
- US trademark No. 2,313,030 JAI, registered on February 1, 2000, and
- US trademark No. 2,538,519 JAI (stylized version), registered on February 12, 2002,
(the “JAI Marks”).
The Complainant initially registered the disputed domain name on March 1, 1999, and moved it to the registrar Speednames A/S in 2004, paying for ownership until 2009.
Around August 2006, the Respondent took control of the registration of the domain name <jai.com> without the Complainant’s knowledge or consent. The Respondent provides the Complainant’s website at the disputed domain name.
The Respondent was involved as respondent in at least two other proceedings under the Policy, i.e. Olympic Credit Fund, Inc. v. Site Services International c/o Richard Sorensen, NAF Case No. FA 910790; and Wall Street Webcasting and Douglas Estadt v. Site Services International c/o Richard Sorensen, NAF Case No. FA 955052, where the Respondent hijacked the domain names <ocf.com> and <wsw.com> from their rightful owners and where the panels ordered the transfer of these domain names back to their original owners.
5. Parties’ Contentions
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are given in the present case:
(1) The domain name <jai.com> is identical to the JAI Marks.
(2) The Respondent has no rights or legitimate interests in respect of the disputed domain name as it seemingly does not exercise any legitimate business at all. The Respondent has never used the name JAI and has no rights in it. The website at <jai.com> still uses the DNS servers of the registrar Speednames A/S and displays the same content as it did when the Complainant had control over it. The Complainant contends that the Respondent has hijacked the disputed domain name.
(3) The Complainant finally contends that the domain name was registered and is being used in bad faith. The Respondent does not use and has never used the name JAI in any way. The Respondent hijacked the disputed domain name which was therefore registered and used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the domain name is identical or confusingly similar to the Complainant’s trademark; and
(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.
A. Identical or Confusingly Similar
The disputed domain name fully incorporates the Complainant’s distinctive JAI Marks in which the Complainant has exclusive rights.
It is well established that the specific top level domain name is not an element of distinctiveness that can be taken into consideration when evaluating the identity and similarity of the complainant’s trademark and the disputed domain name (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374).
Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to the respondent of the dispute, the use by the respondent 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) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The Respondent did not file a response in this proceeding. Therefore, the Complainant’s assertions that the Respondent lacks rights or legitimate interests stand unrebutted.
Based on the evidence before the Panel, in the absence of any use of the disputed domain name by the Respondent or other pertinent facts, the Respondent apparently is neither commonly known by the domain name nor contends to make a legitimate non-commercial or fair use of the domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.
(i) circumstances indicating that the respondent has registered or 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 respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent 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 respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the 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 the respondent’s website or location or of a product or service on its website or location.
Though it is not exactly clear how the Respondent gained control of the disputed domain name, this was done without the permission of the Complainant and likely through improper means. It is well-settled that the practice of hijacking a domain name, i.e. wrongfully taking control of a domain name from the rightful name holder (cf. Domain Name Hijacking: Incidents, Threats, Risks, and Remedial Action, Report from the ICANN Security and Stability Advisory Committee, July 12, 2005), is of itself evidence of the bad faith use and registration of a domain name (cf. CC Computer Consultants GmbH and WAFA Kunststofftechnik GmbH v. APG Solutions & Technologies, WIPO Case No. D2005-0609; Bjorn Kassoe Andersen v. Direction International, WIPO Case No. D2007-0605; and, leaving open whether the disputed domain name was in fact hijacked, Lynx Solutions Limited t/a Thandi Coaches v. Whois Guard Protected, WIPO Case No. D2007-0827).
This finding is supported by the fact that the Respondent has previously been found to have hijacked and thus registered and used in bad faith two other domain names by NAF panels (cf. Olympic Credit Fund, Inc. v. Site Services International c/o Richard Sorensen, NAF Case No. FA 910790; and Wall Street Webcasting and Douglas Estadt v. Site Services International c/o Richard Sorensen, NAF Case No. FA 955052).
The Complainant has thus satisfied the requirements of paragraph 4(a)(iii) of the Policy as well.
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 <jai.com> be transferred to the Complainant.
Dated: January 21, 2008