WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
JPCERT Coordination Center v. Gina Piller, Pantry Food Stores
Case No. D2017-0343
1. The Parties
The Complainant is JPCERT Coordination Center of Tokyo, Japan, represented by Koichiro Komiyama, Japan.
The Respondent is Gina Piller, Pantry Food Stores of Johnstown, Pennsylvania, United States of America.
2. The Domain Name and Registrar
The disputed domain name <jpcert.org> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 21, 2017. On February 21, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 22, 2017, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 23, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 15, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 17, 2017.
The Center appointed David Perkins as the sole panelist in this matter on March 24, 2017. 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
4.A. The Complainant
4.A.1. The Complainant is a non-governmental, non-profit organisation, which was established in 1996 and incorporated in 2003. Its principal activity is to coordinate computer security incidents related to networks in Japan. Its activities are commissioned by the Japanese Ministry of Economy, Trade and Industry (“METI”).
4.A.2. The letters “jpcert”, which form the identifying part of the Complainant’s corporate name, are an abbreviation for “Japan Computer Emergency Response Team”.
4.A.3. The Complainant explains that it provides security information to technical professionals worldwide through its website at “www.jpcert.or.jp/english” and blog “www.blog.jpcert.or.jp”.
4.A.4 The Complainant states that it registered and has used the domain name <jpcert.or.jp> since its establishment in 1996.
4.A.5. The Complainant is the proprietor of the Japanese registered trade mark number 4952632 JPCERT CC. The CC element is represented in a red coloured quadrilateral device. The application for that mark was filed on October 11, 2005 and registration followed on May 12, 2006.
4.A.6. Although the Complainant’s full name is “JPCERT Coordination Center”, the Complainant says that name is commonly abbreviated to “JPCERT”. To illustrate that assertion, the Complainant points to its said domain name and to its Twitter account “@jpcert_en”.
4.B.1. In the absence of a Response, what is known of the Respondent is derived from the Complaint and Annex 1 to the Complaint.
4.B.2. From the WhoIs information in Annex 1, it is apparent that the disputed domain name was created on February 9, 2017. According to the Complaint, the disputed domain name does not resolve to a website.
5. Parties’ Contentions.
5.A.1. The Complainant relies upon its ownership of the Japanese registered trade mark, JPCERT CC, and its use of the letters “jpcert” as the predominant part of its said domain name, website, blog and Twitter account.
5.A.2. The Complainant’s case is that the disputed domain name is confusingly similar to its name and mark, since it incorporates the letters “jpcert” in their entirety.
5.A.3. The Complainant asserts that, over the twenty years since its establishment, it has not become aware of any other party using “jpcert” as a name, identifier or mark. That mark is, the Complainant says, an invented mark, which is unique to it. In the circumstances, the Complainant asserts that third party use of the JPCERT mark could only be with a view to attempting to indicate an association with it.
5.A.4. In that connection, the Complainant says that it has not licensed, or otherwise authorised, the Respondent to use its said trade mark in a domain name. Hence, the Complainant says, the Respondent cannot demonstrate rights to or legitimate interests in the disputed domain name.
5.A.5. As to Registration and use in bad faith, the Complainant’s case is that the JPCERT name and mark are so unique that the Respondent must have been aware of that name and mark when registering the disputed domain name.
5.A.6. Consequently, the Complainant concludes that, in registering the disputed domain name, the Respondent’s motive can only have been to create a likelihood of confusion with Complainant’s JPCERT name and mark. Any such affiliation, the Complainant says, could “...be leveraged for cyber security incidents, including illegitimately receiving sensitive information from the Complainant’s constituencies or spreading false information”.
5.A.7. Since - as noted in paragraph 4.B.2 above - the disputed domain name does not appear to resolve to an active website, the Complainant says that it constitutes a bad faith “passive holding” of the type falling within the principle established in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (“the Telstra case”).
5. B. Respondent
As noted, by failing to file a response, the Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. The Policy, paragraph 4(a), provides that the Complainant must prove each of the following in order to succeed in the administrative proceeding:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
6.2. The Policy, paragraph 4(c), sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name.
6.3. The Policy, paragraph 4(b), sets out circumstances which, again in particular but without limitation, if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.
6.4. As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant the requirements of paragraphs 4(a)(ii) and (iii) of the Policy.
6.A. Identical or Confusingly Similar
6.A.1. The Complainant has established that it has rights in the registered trade mark JPCERT CC.
6.A.2. The Complainant has also demonstrated its use of the abbreviation “jpcert”, e.g., in its domain name
<jpcert.or.jp>, for its website at the domain name, its blog and its Twitter account.
6.A.3. The disputed domain name incorporates the letters “jpcert” in their entirety.
6.A.4. In the circumstances, the disputed domain name is confusingly similar to the Complainant’s JPCERT CC trade mark and other rights in the abbreviation of that mark to “jpcert”. Consequently, the Complaint satisfies the requirements of paragraph 4(a)(i) of the Policy.
6.B. Rights or Legitimate Interests
6.B.1. The Panel finds that the Complainant has successfully established a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name.
6.B.2. In the absence of a response and on the present record, there is no evidence that the Respondent could demonstrate such rights or legitimate interests under paragraph 4(c) of the Policy, or otherwise.
6.B.3. Furthermore, given the uniqueness of the dominant feature of the Complainant’s trade mark - namely, “jpcert” - in the Panellist’s view it could not have been a mere coincidence, and the Respondent likely chose the disputed domain to mislead Internet users.
6.B.4. Consequently, the Complaint succeeds under paragraph 4(a)(ii) of the Policy.
6.C. Registered and Used in Bad Faith
6.C.1. The Complainant’s case, summarised in paragraphs 5.A.5 to 5.A.7 above, is well made out. The Respondent registered the disputed domain name long after the Complainant established rights in its trademark. Given the similarity of the disputed domain name to the Complainant’s mark and in light of the Complainant’s long standing use of the same in its domain name, the Panel agrees that Respondent’s motive to register the disputed domain name can only have been to create a likelihood of confusion with Complainant’s JPCERT name and mark. As stated in the Panellist’s decision in the Telstra case, “...it is not possible to conceive of any plausible or contemplated use of the (disputed) domain name by Respondent that would not be illegitimate, such as by being a passing off or an infringement of the Complainant’s rights under trade mark law”.
6.C.2. In the circumstances, the Complaint meets the requirements of paragraph 4(a)(iii) of the Policy.
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 <jpcert.org> be transferred to the Complainant.
Date: March 29, 2017