About Intellectual Property IP Training IP Outreach IP for… IP and... IP in... Patent & Technology Information Trademark Information Industrial Design Information Geographical Indication Information Plant Variety Information (UPOV) IP Laws, Treaties & Judgements IP Resources IP Reports Patent Protection Trademark Protection Industrial Design Protection Geographical Indication Protection Plant Variety Protection (UPOV) IP Dispute Resolution IP Office Business Solutions Paying for IP Services Negotiation & Decision-Making Development Cooperation Innovation Support Public-Private Partnerships The Organization Working with WIPO Accountability Patents Trademarks Industrial Designs Geographical Indications Copyright Trade Secrets WIPO Academy Workshops & Seminars World IP Day WIPO Magazine Raising Awareness Case Studies & Success Stories IP News WIPO Awards Business Universities Indigenous Peoples Judiciaries Genetic Resources, Traditional Knowledge and Traditional Cultural Expressions Economics Gender Equality Global Health Climate Change Competition Policy Sustainable Development Goals Enforcement Frontier Technologies Mobile Applications Sports Tourism PATENTSCOPE Patent Analytics International Patent Classification ARDI – Research for Innovation ASPI – Specialized Patent Information Global Brand Database Madrid Monitor Article 6ter Express Database Nice Classification Vienna Classification Global Design Database International Designs Bulletin Hague Express Database Locarno Classification Lisbon Express Database Global Brand Database for GIs PLUTO Plant Variety Database GENIE Database WIPO-Administered Treaties WIPO Lex - IP Laws, Treaties & Judgments WIPO Standards IP Statistics WIPO Pearl (Terminology) WIPO Publications Country IP Profiles WIPO Knowledge Center WIPO Technology Trends Global Innovation Index World Intellectual Property Report PCT – The International Patent System ePCT Budapest – The International Microorganism Deposit System Madrid – The International Trademark System eMadrid Article 6ter (armorial bearings, flags, state emblems) Hague – The International Design System eHague Lisbon – The International System of Appellations of Origin and Geographical Indications eLisbon UPOV PRISMA Mediation Arbitration Expert Determination Domain Name Disputes Centralized Access to Search and Examination (CASE) Digital Access Service (DAS) WIPO Pay Current Account at WIPO WIPO Assemblies Standing Committees Calendar of Meetings WIPO Official Documents Development Agenda Technical Assistance IP Training Institutions COVID-19 Support National IP Strategies Policy & Legislative Advice Cooperation Hub Technology and Innovation Support Centers (TISC) Technology Transfer Inventor Assistance Program WIPO GREEN WIPO's Pat-INFORMED Accessible Books Consortium WIPO for Creators WIPO ALERT Member States Observers Director General Activities by Unit External Offices Job Vacancies Procurement Results & Budget Financial Reporting Oversight

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Jones Day v. WhoisGuard Protected, WhoisGuard, Inc. / Bourgeron Damien, Jonesday

Case No. D2018-0661

1. The Parties

The Complainant is Jones Day, of Cleveland, Ohio, United States of America, represented by Jones Day, United States.

The Respondent is WhoisGuard Protected, WhoisGuard, Inc of Panama CityPanama / Bourgeron Damien, Jonesday of Paris, France.

2. The Domain Name and Registrar

The disputed domain name <jonesday-lawfirm.com> is registered with NameCheap, Inc. (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 23, 2018. On March 26, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 26, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 29, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 30, 2018.

The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 5, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 25, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 30, 2018.

The Center appointed George R. F. Souter as the sole panelist in this matter on May 9, 2018. 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

The Complainant is a global law firm operating under the trade name/trademark JONES DAY, with 43 offices in major centers of business and finance throughout the world, with more than 2,500 lawyers, including more than 550 lawyers in Europe and 200 lawyers in Asia.

Details of United States Service Mark registrations for the trademark JONES DAY, U.S. Reg. Nos. 2,212,877 (registered December 22, 1998) and 2,316,539 (registered February 8, 2000), for use in connection with "legal services" have been supplied to the Panel.

The disputed domain name was registered on November 27, 2017. It is being used in connection with a website offering pay-per-click access to services competing with those of the Complainant.

5. Parties' Contentions

A. Complainant

The Complainant alleges that the disputed domain name is confusingly similar to its JONES DAY trademark, containing the trademark in its entirety, with the mere addition of the descriptive or non-distinctive element "lawfirm".

The Complainant alleges that the Respondent lacks rights or legitimate interests in the disputed domain name; in particular that the Respondent is not commonly known by the disputed domain name and there is no relationship or affiliation between the Complainant and Respondent giving rise to any license, or other right by which the Respondent could own or use any domain name incorporating the Complainant's registered service mark JONES DAY, and that the Respondent is not a licensee of or otherwise affiliated with the Complainant, and the Complainant has never authorized or otherwise condoned or consented to Respondent's use of its JONES DAY trademark.

The Complainant alleges that the disputed domain name was registered and is being used in bad faith; in particular that the Respondent's registration and use of the disputed domain name constitutes bad faith registration and use by intentionally attempting to attract, for commercial gain Internet users to the website associated with the disputed domain name by creating a likelihood of confusion with the Complainant's JONES DAY marks as to the source, sponsorship, affiliation, or endorsement of the website at the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain name be transferred to the Complainant:

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

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

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

A. Identical or Confusingly Similar

It is well established in decisions under the UDRP that generic Top-Level Domain ("gTLD") indicators (e.g., ".com", ".info", ".net", ".org") may typically be considered irrelevant in assessing confusing similarity between a trademark and a disputed domain name. The Panel agrees with this view and considers the gTLD indicator ".com" to be irrelevant in the present case.

The Complainant has satisfied the Panel as to its trademark right to its JONES DAY trademark. It is well-established in prior decisions under the UDRP that the addition of a descriptive or non-distinctive element to a trademark in which the Complainant has rights is insufficient to avoid a finding of confusing similarity. In the circumstances of the present case, the Panel regards the element "lawfirm" as clearly such a descriptive or non-distinctive element, and the Panel consequently finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

It is the consensus view of UDRP panels, with which the Panel agrees, that a prima facie case advanced by the complainant will generally be sufficient for the complainant to be deemed to have satisfied the requirement of paragraph 4(a)(ii) of the Policy, provided the respondent does not come forward with evidence demonstrating rights or legitimate interests in the domain name and the complainant has presented a sufficient prima facie case to succeed under paragraph 4(a)(ii) of the Policy.

The Panel regards the submissions put forward by the Complainant as sufficient to be regarded as a prima facie case, and the Respondent did not take the opportunity to advance any claim of rights or legitimate interests in the disputed domain name to rebut this prima facie case.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel is of the view that the finding that a respondent has no rights or legitimate interests in a disputed domain name, may lead, in appropriate circumstances, to a finding that a disputed domain name was registered in bad faith. The Panel regards the circumstances of the present case, in which the only difference between the Complainant's well-known trademark and the disputed domain name is the addition of a descriptive or non-distinctive element, as sufficient to justify a finding that the disputed domain name has been registered in bad faith, and the Panel, accordingly, finds that the disputed domain name was registered in bad faith.

It is well-established in prior UDRP decisions under the Policy that the use of a disputed domain name in connection with a website offering pay-per-click access to products or services competing with those of the Complainant constitutes use of a disputed domain name in bad faith. Accordingly, the Panel finds that the disputed domain name is being used in bad faith, and that the Complainant has satisfied the dual requirements of paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <jonesday-lawfirm.com> be transferred to the Complainant.

George R. F. Souter
Sole Panelist
Date: May 23, 2018

https://www3.wipo.int/contact/en/area.jsp?area=arbitration https://www.wipo.int/pressroom/en/ https://www.wipo.int/tools/en/disclaim.html https://www.wipo.int/en/web/privacy-policy/ https://www.wipo.int/en/web/accessibility/ https://www.wipo.int/tools/en/sitemap.html https://www3.wipo.int/newsletters/en/ https://www.wipo.int/podcasts/en/ https://www.wipo.int/news/en/