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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Jones Day v. Domain Admin, Whois Privacy Corp.

Case No. D2018-1041

1. The Parties

1.1 The Complainant is Jones Day of Cleveland, Ohio, United States of America (“United States” or “U.S.”), internally represented (the “Complainant”).

1.2 The Respondent is Domain Admin, WhoIs Privacy Corp. of Nassau, New Providence, Bahamas (the Respondent).

2. The Domain Name and Registrar

2.1 The disputed domain name <jonesdayip.com> (the “Disputed Domain Name”) is registered with Internet Domain Service BS Corp (the “Registrar”).

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 10, 2018. On May 11, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 15, 2018, 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.

3.2 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”).

3.3 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 17, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 6, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 7, 2018.

3.4 The Center appointed Ike Ehiribe as the sole panelist in this matter on June 21, 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

4.1 The Complainant, Jones Day, traces its beginnings to 1893 in Cleveland, Ohio, United States, and is a global law firm with 43 offices in major centers of business and finance throughout the world. With more than 2,500 lawyers, including 550 lawyers in Europe and 200 lawyers in Asia, the Complainant ranks among the world’s largest law firms. In the United States the Complainant maintains offices in most cities of the United States. The Complainant’s international practice is quite significant as it maintains 10 offices in Europe, 10 offices in Asia and the Pacific, 3 offices in the Middle East and 2 offices in Latin America. Since July 1983 the Complainant has used the service mark JONES DAY to identify legal services that it provides. The Complainant has used the service mark JONES DAY in commerce in various other forms since 1939. The Complainant is said to own among others, two United States Service Mark registrations for the mark JONES DAY, U.S. Registration Number 2,212877 registered on December 22, 1998, and 2,316539 registered on February 8, 2000, for use in connection with legal services. Since 1983, the Complainant is said to have spent millions of dollars marketing its services worldwide using the JONES DAY marks. Since September 30, 1997, the Complainant has owned and operated its interactive website at the domain name <jonesday.com>.

4.2 According to the WhoIs information on record, the Disputed Domain Name <jonesdayip.com> was created on December 7, 2017.

4.3 The Respondent is recorded as being Domain Admin, WhoIs Privacy Corp. of Nassau New Providence, Bahamas.

5. Parties’ Contentions

A. Complainant

5.1 It is argued on behalf of the Complainant that the Disputed Domain Name <jonesdayip.com>, is identical or confusingly similar to the Complainant’s mark as it incorporates the Complainant’s mark in its entirety. In this regard, the Complainant refers to paragraph 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions Third Edition (“WIPO Overview 3.0”). It is further asserted that the addition of the descriptive term “ip” does not prevent a confusing similarity between the Complainant’s mark and the Disputed Domain Name, on the contrary, the addition of the term “ip” reinforces the confusing similarity with the Complainant’s JONES DAY marks as it is a term that is descriptive of the services for which the Complainant’s marks have been registered. The Complainant states further that until recently, visitors attempting to access the website at the Disputed Domain Name were automatically redirected to the web page of the Complainant’s intellectual property practice and surmises that the Respondent undoubtedly intended to cause confusion between the Disputed Domain Name and the Complainant’s mark by exploiting the Complainant’s substantial goodwill and reputation.

5.2 The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name nor is the Respondent commonly known by the Disputed Domain Name. It is also stated that there is no relationship or affiliation between the Complainant and the Respondent giving rise to any license, permission or other right by which the Respondent could own or use any domain name incorporating the Complainant’s registered mark. It is further emphasized that the Complainant has never condoned or consented to the Respondent’s registration of the Disputed Domain Name. The Complainant also refers to the fact that the Respondent registered the Disputed Domain Name using a privacy shield in order as to hide the true identity of the registrant and invites the Panel to presume that the Respondent and the true registrant are not commonly known by the Disputed Domain Name, the Complainant’s mark or variation thereof. Finally, in this regard it is argued that the Respondent has not used the Disputed Domain Name in connection with a bona fide offering of goods or services nor has the Respondent used the Disputed Domain Name for any noncommercial or fair use purpose as the website and email address associated with the Disputed Domain Name have been used to make deceptive intellectual property violation reports against various sellers on Amazon.

5.3 On the question of bad faith registration and use, the Complainant alludes to the following circumstances to assert that the Complainant has also engaged in bad faith registration and use. Firstly the mere registration of the Disputed Domain Name which is identical or confusingly similar to the Complainant’s mark is by itself a clear indication of bad faith. This is more the case as it is pointed out that the Respondent registered the Disputed Domain Name in the year 2017, nearly 125 years after the Complainant was founded, 35 years after the Complainant began using the JONES DAY marks, nearly 20 years after the Complainant registered the JONES DAY mark and more than 20 years after the Complainant’s registration of its domain name <jonesday.com>. Secondly, the Respondent registered and used the Disputed Domain Name to intentionally attempt 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 marks. In this regard, it is stated that the Respondent attempted to confuse Amazon sellers targeted by the reports filed by Respondent using the email address “[…]@jonesdayip.com” into believing that the reports were made by or otherwise affiliated or sponsored by or endorsed by the Complainant. Thirdly, it is said that the Respondent registered the Disputed Domain Name to intentionally attempt to harm competitors in that the registration of the Disputed Domain Name is intended to harm Amazon sellers as the conduct of the Respondent constituted opposition to the Amazon sellers, as such reports can lead to the removal of the listed items and the suspension of the seller’s account. Fourthly, it is said that the Respondent having used the Disputed Domain Name to create an email address and send deceptive communications constitutes further evidence of bad faith. Since as it is put, the Disputed Domain name was used to create an email address using the Disputed Domain Name, that feature, coupled with the automatic redirect from the Disputed Domain Name to the home page of the intellectual property practice of the Complainant leads to the conclusion that the Respondent intended to deceive Internet users into believing that the email address is associated with the Complainant. Fifthly, reference is made to the Respondent’s failure to respond to the Complainant’s cease and desist letters dispatched to the Registrar, the proxy service, the webhosting provider, and the email address associated with the Disputed Domain Name. Sixthly, reliance is also placed on the Respondent’s passive holding of the Disputed Domain Name as further evidence of bad faith.

B. Respondent

5.4 The Respondent did not reply to the Complainant’s contentions. Therefore, in accordance with paragraphs 14(a) and (b) of the Rules, the Panel shall draw such inferences as it considers appropriate from the Respondent’s default.

6. Discussion and Findings

6.1 Under paragraph 4(a) of the Policy to succeed in this administrative proceeding the Complainant must prove that: (i) the Disputed Domain Name is identical and or confusingly similar to the trademark or service mark of the Complainant; (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.

6.2 As expressly stated in the Policy the Complainant must establish the existence of each of these three elements in any UDRP administrative proceeding.

A. Identical or Confusingly Similar

6.3 This Panel accepts that the Complainant is the registered owner of the service mark JONES DAY. The Panel also accepts that the Complainant has established a worldwide reputation as one of the premier law firms in the world and therefore the Complainant’s name and mark have become very valuable assets. In addition, the Panel finds that upon a visual examination, the Disputed Domain Name is confusingly similar to the Complainant’s JONESDAY mark in that the Disputed Domain Name wholly incorporates the Complainant’s mark. See in this regard, section 1.8 of the WIPO Overview 3.0. Equally, the Panel finds that the mere addition of the acronym “ip” that stands for “intellectual property”, and or the generic Top-Level Domain (“gTLD”) “.com” does absolutely nothing to prevent a finding of confusing similarity.

6.4 The Panel therefore finds that the Complainant has established that the Disputed Domain Name is confusingly similar to the Complainant’s JONES DAY mark.

B. Rights or Legitimate Interests

6.5 This Panel also finds that the Respondent has failed to establish that it has any rights or legitimate interests in the Disputed Domain Name within the ambit of paragraph 4(c) of the Policy. As contended by the Complainant, the Respondent is not commonly known by the Disputed Domain Name and there is no relationship or affiliation between the Complainant and the Respondent giving rise to any license, permission or other right by which the Respondent could own or use any domain name incorporating the Complainant’s registered JONES DAY mark. Furthermore, the Panel finds that the Respondent has not used the Disputed Domain Name in connection with a bona fide offering of goods or services nor has the Respondent used the Disputed Domain Name for any legitimate noncommercial or fair use purpose. Clearly, the website and the email addresses associated with the Disputed Domain Name have been used to make deceptive intellectual property reports against various sellers on Amazon. The Panel finds that on any view such conduct cannot be described as a bona fide offering of goods and services within the ambit of the Policy, see generally, the principles stated in Oki Data Americas Inc. v. ASD, inc. WIPO Case No. D2001-0903 and in particular, Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. The Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name, thereby shifting the burden of production of such rights and or interests onto the Respondent (see, section 2.1 of the WIPO Overview 3.0). As the Respondent has failed to come forward with relevant evidence to rebut this presumption, the Complainant is deemed to have satisfied the second element.

6.6 Accordingly, the Panel is satisfied that the Complainant has established that the Respondent does not possess any rights or legitimate interest in the Disputed Domain Name as stipulated in paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

6.7 Turning to the question of bad faith registration and use, the Panel finds that the Respondent registered and uses the Disputed Domain Name in bad faith. Several factors arising from the unchallenged evidence adduced by the Complainant support this finding. Firstly, following Ropes v. Gray LLP v David Turcotte, WIPO Case No. D2017-2474, the Respondent knew or ought to have known of the extensive intellectual property rights of the Complainant in the JONES DAY mark before deciding to register the Disputed Domain Name, see WIPO Overview 3.0, section 3.2.2. The Respondent decided to register the Disputed Domain Name in the year 2017 which is nearly 125 years after the Complainant was founded, approximately 35 years after the Complainant began usage of the JONES DAY trademark; nearly 20 years after the Complainant first registered the JONES DAY mark and more than 20 years after the Complainant registered its domain name at <jonesday.com>. The Panel finds from the chronology of events that the Respondent clearly knew of the Complainant’s JONES DAY trademark at the time of registration of the Disputed Domain Name. The Respondent registered the Disputed Domain Name, adding the descriptive term “ip”, an abbreviation for “intellectual property”, which relates to one of the core services provided by the Complainant, to the verbatim duplication of the Complainant’s trademark JONES DAY. Therefore, as it is put by the Complainant, the mere registration of the Disputed Domain Name by the Respondent creates a presumption of bad faith.

6.8 Secondly, the Complainant asserts that the Respondent registered the Disputed Domain Name with the intention of attracting, for commercial gain, Internet users to the website associated with the Disputed Domain Name by creating a likelihood of confusion with the Complainant’s trademark. In this regard it is further asserted that the Respondent registered and used the Disputed Domain Name to intentionally harm the Complainant’s goodwill and reputation. Reference is made to the Respondent’s creation of an email address at “[…]@JonesDayIP.com”, in order to impersonate the Complainant and mislead Internet users. The Respondent’s attempt to benefit form the Complainant’s substantial goodwill and reputation are all indices of bad faith use. The Panel finds that these acts whether considered singularly or jointly are all further evidence of bad faith use and registration. This is all the more the case as the use of the Disputed Domain Name coupled with the automatic redirect to the home page of the intellectual property practice of the Complainant leads to the conclusion that the email address was created to further deceive Internet users, and in particular Amazon sellers into believing that the email address and the fictitious reports emanating therefrom were associated with the Complainant.

6.9 Thirdly, the fact that the Respondent made use of a proxy service to register the Disputed Domain Name, is in conjunction with other factors arising in this case, a further indication of bad faith use. The Panel finds that upon taking all other factors arising herein into account, the Respondent undoubtedly made use of the proxy service to shield its identity. See in this regard, Revevol SARL v. Whoisguard Inc./Australian Online Solutions Domain support, WIPO Case No.2015-0379.

6.10 Fourthly, the fact that the Respondent failed to respond to the cease and desist letters dispatched by the Complainant to the Respondent, the Registrar, the Proxy Service, the webhosting provider, and the email address associated with the Disputed Domain Name is further indication of bad faith use. See in particular HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062, holding that bad faith is compounded when the domain name owner or its duly authorised privacy service refuses to respond or even to disclose the domain name owner’s identity to the trademark owner.

6.11 Fifthly, as the Disputed Domain Name remains inactive at the time of filing these proceedings, the Panel notes that passive holding of the Disputed Domain Name also constitutes use in bad faith following Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

6.12 Sixthly as earlier indicated at paragraph 5.4 above, the Panel has drawn adverse inferences from the failure of the Respondent to respond to the Complainant’s contentions in this reference.

6.13 The Panel is therefore satisfied that the Respondent registered and used the Disputed Domain Name <jonesdayip.com> in bad faith.

7. Decision

7.1 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 <jonesdayip.com> be transferred to the Complainant.

Ike Ehiribe
Sole Panelist
Date: July 13, 2018

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