WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AJ Jersey, Inc. v. Webpageandhosting.com
Case No. D2014-2119
1. The Parties
The Complainant is AJ Jersey, Inc. of South Plainfield, New Jersey, United States of America (the "USA"), represented by Gibson & Dernier, LLP, USA.
The Respondent is Webpageandhosting.com of Chennai, India.
2. The Domain Name and Registrar
The disputed domain name <aj-jersey.com> is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 3, 2014. On December 4, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 5, 2014, 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").
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 December 18, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 5, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 6, 2015.
The Center appointed Alfred Meijboom as the sole panelist in this matter on January 9, 2015. 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 owner of U.S. trademark registration 2,587,932, which was registered on July 2, 2002, for the mark AJ JERSEY in International Classes 12, 35 and 37 for fork lifttrucks and related accessories, for services in connection with distribution of materialhandling equipment such as fork lift trucks and related accessories, and providing maintenance, repair and rental of such material handling equipment (the "Trademark").
The Respondent registered the disputed domain name on November 20, 2007, which was created on October 21, 2006.
5. Parties' Contentions
The Complainant alleges that the disputed domain name is identical or confusingly similar to the Trademark as the disputed domain name incorporates the Trademark in its entirety, with a hyphen instead of the space between "AJ" and "Jersey".
The disputed domain name resolves to a website offering for sale material handling equipment. Each tab of the website links to photographs and listings of material handling equipment for sale, and a long list of domain names which link to other equipment handling sites. The Respondent is not affiliated with the Complainant and is not in any way endorsed by the Complainant as an authorized distributor of goods and/or services under the Trademark. The Complainant has not licensed the Respondent to use the Trademark or to register domain names incorporating the Trademark. The Respondent registered the disputed domain name without the Complainant's consent and subsequently used the disputed domain name for a website which offers for sale material handling products and links to accessories such as lift truck batteries, which compete with the Complainant's products under the Trademark. The Respondent's website attempts to convey the impression of affiliation with or sponsorship by the Complainant.
The Respondent has no rights or legitimate interests in the disputed domain name. Before any notice to the Respondent of the dispute, there is no evidence of the Respondent's use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services for the reasons explained in the previous paragraph.
According to the Complainant the disputed domain name was also registered and is being used in bad faith because the Respondent, by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website or other on-line location, by creating a likelihood of confusion with the Trademark 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 Respondent established the website to which the disputed domain name resolves to offer for sale goods
identical to those covered by the Trademark. The foregoing acts were for the specific and intentional purpose of misleading consumers for the Respondents' commercial gain, and are clear evidence of bad faith
registration and use by the Respondent.
The Complainant sent the Respondent a cease and desist letter on November 13, 2014 via electronic mail and by overnight courier. The Respondent did not respond to said letter. The failure of the Respondent to reply, or take any remedial steps whatsoever in response, to the Complainant's cease and desist letter is
additional evidence of bad faith on the part of the Respondent.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
The Respondent did not reply to the Complainant's contentions. However, as set out in paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, ("WIPO Overview 2.0"), the consensus view of UDRP panelists is that the respondent's default does not automatically result in a decision in favor of the complainant. The complainant must still establish each of the three elements required by paragraph 4(a) of the Policy. Although the Panel may draw appropriate inferences from a respondent's default, paragraph 4 of the Policy requires the complainant to support its assertions with actual evidence in order to succeed in these proceedings. Paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, the Panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules. The Panel finds that in this case there are no such exceptional circumstances.
Under the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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 that the generic Top-Level Domains ("gTLDs") may typically be disregarded in the assessment under paragraph 4(a)(i) of the Policy (e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003), and, in the present case at least, this is not different for the gTLD ".com".
The Panel finds that the disputed domain name is confusingly similar if not identical to the Trademark. The Respondent has taken the Trademark in its entirety and merely added a hyphen between "AJ" and "Jersey", which does not distinguish the disputed domain name from the Trademark. The addition of a hyphen can be considered typosquatting because the disputed domain name is likely to create confusion due to its visual similarity with the Trademark (e.g. Autogrill Retail UK Limited v. Hongjun Technology Ltd. / John Li, WIPO Case No. D2011-1204).
Consequently, the first element of paragraph 4(a) of the Policy is met.
B. Rights or Legitimate Interests
The Complainant must make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, which the Respondent may rebut (e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Complainant has shown that it has not authorized the Respondent to use the Trademark, and that the Respondent is not commonly known by the disputed domain name. Further, the Complainant has shown that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name in light of the fact that the website at the disputed domain name offers products in direct competition with the goods and services offered by the Complainant under the Trademark.
The Panel is therefore satisfied that the Complainant has made a prima facie case, which the Respondent has not rebutted. As a result, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and the second element of paragraph 4(a) of the Policy is also met.
C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b)(iv) of the Policy, there is evidence of registration and use of the disputed domain name in bad faith where the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service offered on the Respondent's website or location.
In the Panel's view, it is obvious that at the time the Respondent registered the disputed domain name it must have had the Trademark in mind as the Trademark had already been registered for many years, is not generic, and the Respondent uses the website under the disputed domain name to offer for sale material handling products and links to accessories, which compete with the Complainant's products under the Trademark. The facts that the Complainant sent a cease and desist letter to the Respondent, to which the Respondent did neither reply nor or take the requested remedial action to cease all activities and use of the disputed domain name, as well as that the Respondent did not reply to the Complaint, further contribute to the Panel's finding of bad faith registration and use of the disputed domain name.
Consequently, the third and last element of paragraph 4(a) of the Policy is also met.
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 <aj-jersey.com> be transferred to the Complainant.
Date: January 16, 2015