WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

JPMorgan Chase & Co. v. Marcos Cutino, Chase Savings and Loans

Case No. D2013-1804

1. The Parties

The Complainant is JPMorgan Chase & Co. of New York, New York, United States of America (“US”), represented internally.

The Respondent is Marcos Cutino, Chase Savings and Loans of Mixco, Guatemala.

2. The Domain Names and Registrar

The disputed domain names <chase-payment-system.com>, <chasepaymentsystem.com>, <chase-payment-system.info>, <chasepaymentsystem.info>, <chase-payment-system.net>, <chasepaymentsystem.net>, <chase-payment-system.org>, <chasepaymentsystems.biz>, <chase-paymentsystems.com>, <chasepaymentsystems.info>, <chase-paymentsystems.net>, <chasepaymentsystems.org> and <chasesandl.com> (the “Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 22, 2013. On October 22, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On October 22, 2013, the Registrar 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” 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”).

On November 1 and 2, 2013, the Center received two email communications from the Respondent. The Center acknowledged their receipt on November 4, 2013.

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 November 4, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was November 24, 2013. The Respondent did not submit any formal response. Accordingly, the Center notified the Parties about the commencement of panel appointment process on November 25, 2013.

On November 25, 2013, the Center received two email communications from the Respondent. The Center acknowledged their receipt on November 27, 2013. On November 27, 2013, the Center received another email communication from the Respondent. The Center acknowledged its receipt on November 28, 2013.

The Center appointed Nicholas Smith as the sole panelist in this matter on December 2, 2013. 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.

On December 2, 2013, the Center received a further email communication from the Respondent. The Center acknowledged its receipt on December 3, 2013.

4. Factual Background

The Complainant is a bank holding corporation headquartered in New York, in the US. Since 1877, the Complainant and its predecessors have provided banking services to customers in the US and world-wide. The Complainant has a physical presence in over 50 countries.

The Complainant is the owner of a word trade mark consisting of the word “Chase” (the “CHASE Mark”), for use for various banking services in the US, which it first registered on January 24, 1989 (registration no. 1521765). The CHASE Mark has been used extensively since that date. The CHASE Mark is also registered in Mexico (registration no. 561810 of October 30, 1997), the location claimed by the Respondent. The Complainant also maintains a website at “www.chase.com” through which it offers its services to its customers.

The Domain Name <chasesandl.com> was registered on April 22, 2010. The other Domain Names were registered on or around May 17, 2013. The Domain Names <chase-payment-system.com>, <chase-payment-system.info>, <chase-payment-system.net>, <chase-payment-system.org>, <chasepaymentsystems.biz>, <chase-paymentsystems.com>, <chase-paymentsystems.net>, <chasepaymentsystems.org> and <chasesandl.com> currently resolve to a website (“Respondent’s First Website”) located at the domain name <chasesandl.com> which refers to “Chase Savings and Loans” and appears to offer banking services in competition with the Complainant, however it is not clear if the site is active in any way. The Domain Names <chasepaymentsystem.com>, <chasepaymentsystem.info> and <chasepaymentsystem.net> currently resolve to a website (“Respondent’s Second Website”) located at the domain name <cpspaygo.com> which refers to “Chase Payment Systems” and also appears to offer banking services in competition with the Complainant, however it is not clear the extent to which the site is active. The Complainant has given evidence that in 2012, the Mexican Patent and Trade Mark office rejected the Respondent’s application to register a trade mark consisting of “CSL Chase Savings and Loans”.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

(i) that the Domain Names are identical or confusingly similar to the Complainant’s CHASE Mark;

(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Names; and

(iii) that the Domain Names have been registered and are being used in bad faith.

The Complainant is the owner of the CHASE Mark. A predecessor of the Complainant first registered the CHASE Mark in 1989 in the US and there has been extensive use of the CHASE mark since that date. The Respondent purports to offer financial services using domain names that incorporate the CHASE Mark and thereby cause confusion to the general public.

The Respondent has no rights or legitimate interests in the Domain Names. The Respondent is not related in any way to the Complainant’s business. The Complainant has not granted any licence or authorization to the Respondent to make any use, nor apply for registration of the Domain Names. The Respondent is not using the Domain Names in connection with a bona fide offering of goods or services, rather the Domain Names are used for a website that current or potential customers of the Complainant could visit by mistake and believe they are dealing with the Complainant. Furthermore the Respondent may be seeking to generate income through the use of pay-per-click advertising from people who accidently visit the Respondent’s Website. Such uses are not a bona fide use offering of goods and services.

The Domain Names were registered and are being used in bad faith. The Respondent has registered multiple Domain Names that contain the Complainant’s well-known CHASE Mark. Moreover the Respondent sought to register CSL CHASE SAVINGS & LOANS as a trade mark in Mexico, however the application was rejected by the Mexican Patent and Trade Mark office in 2012 on the basis of similarity with the Complainant’s CHASE Mark. It is impossible to imagine a circumstance in which the Respondent could make legitimate use of the Domain Names in connection with financial services. Rather the Respondent’s conduct violates the letter and spirit of the UDRP and also the law of the US, such as the Lanham Act and the Anti-Cybersquatting Consumer Protection Act.

B. Respondent

The Respondent did file a formal Response to the Complainant’s contentions.

Between November 1, 2013 and November 25, 2013, the Center received five e-mail communications from an entity whose identity was unclear but purporting to be the Respondent. These communications made a number of charges and statements including but not limited to the following:

a) That WIPO has no jurisdiction over Mexico both generally and in this particular proceeding.

b) That Chase Savings and Loans is a filed financial corporation in Mexico.

c) That the Complainant is engaged in racketeering, extortion, money laundering and associated criminal behavior; and

d) That the Complainant and WIPO are liable to be criminally prosecuted in Mexico, with the Respondent intending to press charges.

The Respondent provided no proof of any of the assertions made in its communications.

On December 2, 2013, following the appointment of the Panel, the entity sent a further communication to the Center. In this communication the Respondent:

a) Indicated that it did not accept the jurisdiction of the UDRP;

b) Made references to the Panel being a “bribe” by the Complainant and indicated that the UDRP process amounted to criminal extortion; and

c) Made numerous legal threats against the Complainant’s representative and against the case manager engaged by the Center to manage this administrative proceeding.

Again, the Respondent provided no proof of any of the assertions made in its communications.

6. Discussion and Findings

While it ultimately did not affect the decision of the Panel, the Panel expresses concern with certain aspects of the content of the Complaint. In particular it notes that the Respondent, as it is not based in the US, is not bound by the laws of the US and sees very limited relevance in the Complaint making submissions that the Respondent is in breach of the Lanham Act, or the Anti-Cybersquatting Consumer Protection Act in a proceeding under the Policy. Furthermore, the Complaint contains a number of assertions that appear to be unsupported by any evidence. In particular the Panel finds no evidence on the record that the Respondent may be generating revenue through “pay-per-click” advertising or any evidence, other than assertions in an affidavit, of the fame or reputation of the CHASE Mark.

With respect to the Respondent’s contentions in this matter, the Panel notes that the Respondent, by registering the Domain Names through the Registrar, has agreed to be bound by the Policy and any decision delivered by a properly appointed panel. If the Respondent wishes to raise any concerns about the Decision of the Panel or its jurisdiction, the proper course of action is to submit the dispute to a court of competent jurisdiction for independent resolution as provided by paragraph 4(k) of the Policy. The remaining assertions in the Respondent’s communications are unsupported by any evidence and are given little or no weight by the Panel.

A. Identical or Confusingly Similar

To prove this element the Complainant must have trade or service mark rights and the Domain Names must be identical or confusingly similar to the Complainant’s trade or service mark.

The Complainant is the owner of the CHASE Mark, having registrations for CHASE as a trade mark since 1989, both in the US and in Mexico.

The Domain Name <chasesandl.com> consists of the CHASE Mark in its entirety and the addition of the phrase “sandl”. “S and L” is an abbreviation of the term “Savings and Loans”, which can refer to the financial services offered by the Complainant. The addition of “sandl” to the CHASE Mark does not operate to prevent a finding of confusing similarity between the CHASE Mark and the Domain Name.

The Domain Names <chase-payment-system.com>, <chasepaymentsystem.com>, <chase-payment-system.info>, <chasepaymentsystem.info>, <chase-payment-system.net>, <chasepaymentsystem.net>, <chase-payment-system.org>, <chasepaymentsystems.biz>, <chase-paymentsystems.com>, <chasepaymentsystems.info>, <chase-paymentsystems.net> and <chasepaymentsystems.org> consist of the CHASE Mark in its entirety and the addition of the term “payment systems”. The addition of this term does not prevent a finding of confusing similarity between the CHASE Mark and the Domain Names. In fact given that the term “payment system” directly refers to financial services, such as the services offered by the Complainant, the addition of such a term may reinforce any confusing similarity between the CHASE Mark and the Domain Names.

It is well established that the generic Top-Level Domain (“gTLD”) or country-code Top-Level domain (“ccTLD”) (such as “.com”) may be disregarded when evaluating whether a domain name is identical to a complainant’s trade mark, see eBay Inc.v Akram Mehmood, WIPO Case No. DAE2007-0001; Magnum Piering, Inc.v.The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525 and Rollerblade, Inc.v.Chris McCrady, WIPO Case No. D2000-0429.

The Panel finds that each of the Domain Names is confusingly similar to the Complainant’s CHASE Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.

Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:

“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” (Policy, paragraph 4(c)).

The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Names or to seek the registration of any domain names incorporating the CHASE Mark or a mark similar to the CHASE Mark. There is no evidence that the Respondent is commonly known by the Domain Names or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Names in connection with a legitimate noncommercial use.

The Domain Names currently resolve to websites that, at least on its face of it, utilise the name “Chase Savings and Loans” or “Chase Payment Systems” and purport to offer banking services. However the Respondent, despite making multiple submissions to the Center, has put on no evidence (as opposed to assertions) that it has a functional operating business from its websites and that it has any right to use the name “Chase Savings and Loans” or “Chase Payment Systems” for its business. Rather the Complainant has put on evidence that the Respondent has applied for and been rejected for its trade mark application for CSL CHASE SAVINGS & LOANS in Mexico. In the absence of any evidence of a functioning business or any permission to use the name, and in the presence of direct evidence that such permission has been refused, both by the Complainant and (in respect of the Respondent’s trade mark application) by Mexican authorities, the inference can be drawn that the Respondent is not using the CHASE mark or the Domain Names for a bona fide offering of goods or services.

The Panel is not persuaded by the Respondent’s assertion that it somehow has rights to “chase” being a common dictionary word. The word “chase” is a registered trade mark registered by the Complainant for financial services in Mexico. The Respondent, on the face of it, does not have the right to use that word as a trade mark for financial services in Mexico.

The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Names. The Respondent has had an opportunity to rebut the presumption that it lacks rights or legitimate interests but has chosen not to do so in any meaningful way. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Names in bad faith:

(i) circumstances indicating that the Respondent has registered or has acquired the Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registrations to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Names; or

(ii) the Respondent has registered the Domain Names in order to prevent the owner of the trade mark 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 Names primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the Domain Names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online 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 the Respondent’s website or location.

The Panel finds that the Respondent at the time of registration of the Domain Names knew of the existence of the Complainant. It is implausible that the Respondent would register 13 separate domain names each of which reproduces the Complainant’s CHASE Mark with no awareness of the Complainant. Secondly, it is implausible that the Respondent, who purports to trade in the area of financial services, would be unaware of the Complainant’s CHASE Mark. Finally, 12 of the 13 Domain Names were registered after the Respondent’s application to register CSL CHASE SAVINGS & LOANS as a trade mark was rejected by Mexican authorities by reason of the CHASE Mark. The registration of the Domain Names in awareness of the CHASE Mark and in the absence of rights or legitimate interests in this case amounts to registration in bad faith.

The Respondent is using the Domain Names to intentionally attempt to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website. The Respondent’s Websites and use of “Chase” appears to have been designed in order to confuse Internet users into thinking that the Respondent is somehow connected to the Complainant. It is therefore likely that the Respondent either receives revenue or is planning to receive revenue from Internet users who happen to come across the Respondent’s First or Second Website by means of confusion with the CHASE Mark. Furthermore, given the fame of the CHASE Mark in financial services, and the fact that the Complainant has registered the CHASE Mark as a trade mark in Mexico, the Panel cannot identify, and the Respondent has chosen not to supply, any possible use of the Domain Names that could be in good faith. The Panel finds that the Respondent is using the Domain Names in bad faith.

Accordingly, the Panel finds that the Respondent has registered and is using the Domain Names in bad faith under 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 <chase-payment-system.com>, <chasepaymentsystem.com>, <chase-payment-system.info>, <chasepaymentsystem.info>, <chase-payment-system.net>, <chasepaymentsystem.net>, <chase-payment-system.org>, <chasepaymentsystems.biz>, <chase-paymentsystems.com>, <chasepaymentsystems.info>, <chase-paymentsystems.net>, <chasepaymentsystems.org> and <chasesandl.com> be transferred to the Complainant.

Nicholas Smith
Sole Panelist
Date: December 5, 2013