The Complainant is Grace From Fire, LLC of Newburgh, Indiana, United States of America, represented by Stites & Harbison, PLLC, United States of America.
The Respondent is ConnectDomain.com Worldwidedomains, Inc of Glenview, Illinois, United States of America.
The disputed domain name <jackjackass.com> is registered with eNom.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 1, 2010. On February 2, 2010, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On February 2, 2010, eNom transmitted by email to the Center its verification response, providing registrant information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on February 4, 2010. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 the Respondent of the Complaint, and the proceedings commenced on February 5, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was February 25, 2010. On February 3, 2010, the Respondent submitted an email. While it was not formatted as a Response, the Panel will consider that email as constituting the Response.
The Center appointed Richard Hill as the sole panelist in this matter on March 4, 2010. 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.
The Complainant has registered trademark rights for the mark JACK JACKASS.
The Complainant has been using the disputed domain name since 2000 to point to operate an anti-smoking informational web site.
Following a dispute regarding operation of the web site and payment of fees, the Respondent, who is a reseller of the registrar, changed the domain name registration so that it became the registrant.
The Complainant alleges that it registered the mark JACK JACKASS in connection with cartoon prints and cartoon strips on January 28, 2003. The registration was duly assigned to the Complainant and recorded with the United States Patent Trademark Office on February 24, 2005. The Complainant has also, for many years, used the mark JACK JACKASS to offer educational materials and literature to the general public relating to smoking cessation and prevention.
The Complainant states that it registered the disputed domain name through the Respondent on or about February 10, 2000. It has been operating an anti-smoking informational web site at the disputed domain name since that time.
According to the Complainant, it began experiencing problems with the web site throughout 2009. The Complainant did not receive a satisfactory resolution to the problems associated with the web site. The Complainant notified the Respondent on or about November 1, 2009 of the Complainant's desire to terminate its hosting agreement with the Respondent. The Respondent replied on or about November 18, 2009 stating that Complainant would be required to pay four hundred ninety-five dollars (USD495.00) to terminate the agreement.
The Complainant further states that, on or about November 27, 2009, before the Complainant paid any termination fee or took any further steps to terminate the agreement, it discovered that it was no longer listed as the registrant of the disputed domain name, and that the Respondent was now listed as the registrant.
The Complainant alleges that the Respondent has a history of “cyberjacking”.
According to the Complainant, the disputed domain name is identical to its mark.
Further, says the Complainant, the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name but has instead been using the domain name as leverage against the Complainant for payment of fees, which is a violation of the Policy.
According to the Complainant, the Respondent, as host of the Complainant's web site and reseller for the Complainant's registrar, took control of the Complainant's domain name without knowledge or consent of the Complainant. Accordingly, the Respondent's action in transferring registration of the disputed domain name from the Complainant to the Respondent is an act of bad faith.
In its email of February 3, 2010, the Respondent states:
“For the legal record, this case emerges from a legally contracted dispute in which our customer has failed to perform his legally obligated contractual duties, namely payment for services have not been made.
There is an amount that is past due for which the customer is fully aware and we have made numerous attempts to collect on the past due amount. Legal collections action will be brought against him and all legal enforcement issues will be address if required.”
The Respondent did not otherwise reply to the Complainant's contentions.
It is obvious that the disputed domain name is identical to the Complainant's registered trademark.
The Respondent has not presented any allegations (much less evidence) that its registration and use of the disputed domain name fulfills one of the conditions explicitly mentioned in paragraph 4(c) of the Policy.
On the contrary, it admits that it changed the registration of the disputed domain name in the context of a commercial dispute. As the Respondent itself indicates, commercial disputes should be resolved by appropriate legal actions, not by “self-enforcement”.
Consequently, the Panel agrees with the conclusions of a previous UDRP panel in a similar case, Ecoyoga Ltd v. siteleader.com, Siteleader Hosting, WIPO Case No. D2009-1327 (December 11, 2009), finding that “non-payment of fees by the Complainant to the Respondent does not establish rights or legitimate interests in the disputed domain name in the Respondent.”
As the Complainant points out, similar behavior by the Respondent has been found by prior UDPR panels to constitute bad faith registration and use. See Ecoyoga Ltd, supra, in which the panel found “that the action taken by the Respondent in transferring registration of the disputed domain name from [the Complainant] to the Respondent is an act of bad faith.”
Given the prior relations between the parties, the Panel finds that the Respondent did not act in good faith when it took the disputed domain name from the Complainant apparently in order to exert pressure with respect to unresolved commercial issues. See Birinyi Associates, Inc. v. Convert, WIPO Case No. D2001-0395 (June 20, 2001) and Robilant & Associati Srl v. POWERLAB snc (ROBILANT6-DOM), WIPO Case No. D2006-0991 (October 5, 2006).
Consequently the Panel finds that the Respondent has registered and used the disputed domain name in bad faith in the sense of the Policy.
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 <jackjackass.com> be transferred to the Complainant.
Dated: March 9, 2010