WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

JPMorgan Chase & Co. v. Chase Petroleum, Inc.

Case No. D2007-1910

 

1. The Parties

Complainant is JPMorgan Chase & Co., of New York, United States of America, represented internally.

Respondent is Chase Petroleum, Inc., of California, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <chaseatm.com> is registered with Network Solutions, LLC.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 19, 2007. On December 24, 2007, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On December 26, 2007, Network Solutions, LLC 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on January 3, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was January 23, 2008. Respondent did not file a Response by the due date and the Center issued a Notification of Respondent Default on January 24, 2008. On February 3, 2008, Respondent emailed a letter to Complainant responding to Complainant’s cease and desist letter dated September 4, 2007. Complainant forwarded a copy of that letter by email to the Center on the same day. On February 13 and 14, 2008, Respondent sent emails to the Center. The Panel has considered the content of those emails, as discussed below.

The Center appointed Lynda J. Zadra-Symes as the sole panelist in this matter on February 20, 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 the Rules, paragraph 7.

 

4. Factual Background

Complainant is a bank holding corporation whose subsidiaries are internationally recognized as providers of banking and other financial services. Complainant offers, inter alia, consumer banking services such as checking and savings accounts, ATMs, personal and business lending, credit, investment and advisory services, through an extensive retail branch network.

Complainant maintains websites at “www.jpmorganchase.com”, “www.chase.com” and “www.jpmorgan.com”.

Complainant’s predecessor Chase National Bank was founded in 1977. Since that time, Complainant and certain of its predecessors and subsidiaries have used “Chase” as part of their trade name. Currently, Complainant uses “JPMorgan Chase Bank,” “Chase” and “JPMorgan” to identify its retail banking and financial services. Currently, JP Morgan Chase operates the fourth largest bank branch network and third largest ATM network in the U.S. All of the branches and ATMs in these networks are branded “Chase.” Complainant’s website at “www.chase.com” prominently displays the CHASE mark and provides an “ATM Locator” through which Internet users can locate one of Complainant’s “8,500 Chase ATM’s nationwide.” Complainant’s website also displays a picture of one of Complainant’s ATM machines with the mark CHASE prominently displayed at the top of the machine.

Complainant is the owner of U.S. Trademark Registration No. 1,521,765, registered January 24, 1989, for the mark CHASE for use in connection with various banking and financial services.

This registration is valid, subsisting and uncancelled, and became incontestable on July 30, 1995, pursuant to the provisions of 15 U.S.C. 1065.

Complainant has also registered the mark CHASE, alone and in combination with other words, in numerous countries worldwide.

On September 4, 2007, Complainant sent a cease and desist letter via overnight courier to Respondent at the address listed for Respondent “Chase Petroleum Inc.” and for Respondent’s Administrative Contact, chasefinancialservices@aol.com.

The Panel also notes that, in addition to sending its September 4, 2007 letter by overnight courier (for delivery on September 5, 2007), Complainant also emailed a copy of the letter to Respondent on September 18, 2007.

 

5. Parties’ Contentions

A. Complainant

Complainant contends that the domain name is confusingly similar to Complainant’s CHASE trademark, that Respondent lacks any legitimate rights or interests in the domain name, and that Respondent has registered and used the domain name in bad faith.

B. Respondent

Respondent did not file a formal Response to Complainant’s contentions.

On February 3, 2008, Respondent sent a letter by email to Complainant in response to Complainant’s cease and desist letter dated September 4, 2007. In that letter, Respondent indicated that “beginning in 2001, I utilized ChaseATM as a subsidiary of Chase Petroleum Inv. for the sole purpose of providing ATM service. In 2003 I incorporated Chase Financial Services in view of taking the ATM division away from Chase Petroleum Inc. due to large volume of cash transactions.” The letter further stated “if you are interested in actually utilizing the web site for your own purposes, you may purchase it from me and that would cover the cost of all new names and set up.”

On February 13, 2008, in reply to an e-mail from the Center to the Parties regarding possible settlement of the matter, Respondent sent an email to the Center stating that Complainant “has notified us that they do not wish to settle this issue. As such, please advise as to what are my options and chances in prevailing in this case in that I do not wish to reconstruct my business based on their point of view.”

On February 14, 2008, the Center responded that the WIPO Center’s role is limited to the administration of the UDRP procedure and does not provide legal advice. The Center also notified Respondent that he had failed to submit a response by the due date and that the Center was proceeding with the appointment of an Administrative Panel.

Respondent emailed the Center on the same day requesting an extension in which to file his response from January 23, 2008 to March 23, 2008 “on the basis that I was out of the country at the time the complainant sent a copy of the complaint to my post office box. I left the country on October 16, 2007 and did not return till January 11, 2008. I went to Iran to get married...”

Complainant objected to Respondent’s extension request on the basis that, by Respondent’s own admission, he returned on January 11, 2008, almost two weeks prior to the deadline for response to the Complaint. In addition, the Panel notes that Respondent was previously aware of the dispute by virtue of Complainant’s September 4, 2007, letter emailed to Respondent on September 18, 2007.

The Panel agrees that Respondent has failed to submit sufficient grounds for extending the deadline for further response.

 

6. Discussion and Findings

In order to succeed in its claim, Complainant must demonstrate that all of the elements enumerated in Paragraph 4(a) of the Policy have been satisfied:

(i) the domain name in dispute is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) Respondent has no rights or legitimate interests with respect to the domain name; and

(iii) the domain name has been registered and used in bad faith.

Paragraph 15(a) of the Rules instructs this Panel to decide a Complaint “on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

A. Identical or Confusingly Similar

The disputed domain name <chaseatm.com> incorporates Complainant’s registered CHASE trademark in its entirety. The domain name adds only the non-distinctive term “atm” which is a generic term used in the banking industry to refer to automated teller machines. The most dominant feature of the domain name is Complainant’s registered CHASE mark. The addition of “atm” to the domain name does not avoid confusing similarity with Complainant’s mark.

Accordingly, the Panel finds that the domain name is identical and confusingly similar to Complainant’s trademark.

B. Rights or Legitimate Interests

Respondent is apparently not affiliated or related to Complainant or its subsidiaries in any way, nor is Respondent licensed by Complainant or otherwise authorized to use the CHASE mark.

There is no evidence before the Panel to establish that Respondent is generally known by the domain name or that Respondent has acquired any trademark or service mark rights in that name or mark.

Respondent’s website located at the disputed domain name prominently displays the CHASE mark and states “Chase ATM, offers transaction switching/processing through all major networks, including Cirrus, Plus, MasterCard, Visa, American Express, Discover/Novus, Star, and Honor. We even offer Electronic Benefit Transfer (EBT) processing through Link and Quest.”

Respondent’s website also indicates that “Chase ATM” plans to expand into equipment and services related to credit card payment processing.

On the basis of the present record, Respondent is not using the domain name in a bona fide manner. Instead, Respondent is apparently using the domain name to attract Internet users to a website purporting to offer information about banking and other financial services that are similar to those of Complainant. Respondent’s use of the domain name for such purposes is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name. Respondent has not put forward any evidence that would rebut Complainant’s case or support a finding that it has rights or legitimate interests in the domain name.

In light of the foregoing, the Panel finds that Respondent has no rights or legitimate interests with regard to the domain name at issue.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith:

(i) circumstances indicating that 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 the Complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or

(ii) 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 Respondent has engaged in a pattern of such conduct; or

(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s 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 Respondent’s website or location of a product or service on Respondent’s website or location.

It should be noted that the circumstances of bad faith are not limited to the above.

In the present case, it is apparent that the domain name is being deliberately used for commercial gain to attract Internet users to Respondent’s website based on a likelihood of confusion with Complainant’s CHASE mark. The widespread fame and use of the CHASE mark in the banking industry, Complainant’s prior domain name registrations and trademark registrations lead to the inevitable conclusion that Respondent registered and is using the domain name with actual knowledge of Complainant’s rights.

Accordingly, on the present record the Panel finds the disputed domain name to be registered and used in bad faith.

 

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, <chaseatm.com>, be transferred to the Complainant.


Lynda J. Zadra-Symes
Sole Panelist

Dated: March 6, 2008