Complainant is JL Audio, Inc. of Miramar, Florida, United States of America, represented by GrayRobinson, P.A., United States of America.
Respondent is Danielle M. Calvert of Emeryville, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <jlaudiow7.com> is registered with Melbourne IT trading as Internet Names Worldwide.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 29, 2007. On December 3, 2007, the Center transmitted by email to Melbourne IT trading as Internet Names Worldwide a request for registrar verification in connection with the domain name at issue. On December 5, 2007, Melbourne IT trading as Internet Names Worldwide transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on December 6, 2007. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 Respondent of the Complaint, and the proceedings commenced on December 13, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was January 2, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 7, 2008.
The Center appointed Lorelei Ritchie de Larena as the sole panelist in this matter on January 18, 2008. 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 January 23, 2008, the Center received an email from Respondent, which the Center forwarded to the Panel at its request.
4. Factual Background
Complainant has been in the business of design, development, manufacture and sale of audio and stereo equipment since at least as early as 1977. Complainant has invested heavily in goodwill associated with its marks and its products over the years and has compiled a worldwide network of distributors and retail outlets. Complainant has registered various trademarks incorporating its JL AUDIO mark, with registrations as early as January 16, 1996, for use in commerce as early as April 1, 1977. Complainant also alleges that it has acquired common law rights to the W7 mark via use in commerce since at least as early as December 2001. Complainant is also the current registrant of the domain name incorporating its mark, <jlaudio.com>, which Complainant uses in connection with its business on the Internet.
Respondent is not affiliated with Complainant and does not have a license to use Complainant’s marks. The registrar’s records indicate that Respondent registered <jlaudiow7.com> on November 3, 2005. As of the date the Complaint was filed, Respondent was using <jlaudiow7.com> to resolve to a website offering services and links to Complainant’s products.
5. Parties’ Contentions
A. Complainant
Identical or Confusingly Similar. The domain name < jlaudiow7.com> is identical to the Complainant’s marks, JL AUDIO and W7.
Rights or Legitimate Interests. Respondent has no rights or legitimate interests with respect to the domain name <jlaudiow7.com>. Complainant owns a trademark registration for the mark JL AUDIO, which it uses in commerce, including for online business. Complainant also owns common law rights in the W7 mark. Complainant’s use of the JL AUDIO mark predates Respondent’s domain name registration by at least 18 years, and Complainant’s use of the W7 mark predates the domain name registration by almost 4 years. Respondent does not own any trademark or intellectual property rights in the JL AUDIO or W7 marks, and Respondent has never used either as a legitimate business name. Complainant has never authorized, licensed or permitted the Respondent to use its JL AUDIO or W7 marks.
Registered and Used in Bad Faith. Respondent’s domain name was registered and is being used in bad faith based on the following factors: (i) disrupting the business of a competitor by diverting traffic through confusion; and (ii) knowledge of the Complainant’s long and continuous use of the JL AUDIO and W7 marks at the time of registration.
B. Respondent
The Respondent did not reply to the Complainant’s contentions. However, Respondent did send an email to the Center on January 23, 2008, after the deadline for filing a formal response. The email stated: “This domain was forfeited weeks and weeks ago. And your attachments have contained viruses and will not be opened in the future.” Although this email response was received late and apparently ex parte, the Panel finds the response useful to its determination of this proceeding.
A prior panel decision addresses the three typical options a panel may consider when a respondent agrees to transfer the subject domain name. See, The Cartoon Network LP, LLLP v. Mike Morgan, WIPO Case No. D2005-1132 (<cartonnetworkya.com>, et. al.) and cases cited therein
(i) to grant the relief requested by the Complainant on the basis of the Respondent’s consent without reviewing the facts supporting the claim;
(ii) to find that consent to transfer means that the three elements of paragraph 4(a) are deemed to be satisfied, and so transfer should be ordered on this basis; and
(iii) to proceed to consider whether on the evidence the three elements of paragraph 4(a) are satisfied because the Respondent’s offer to transfer is not an admission of the Complainant’s right or because there is some reason to doubt the genuineness of the Respondent’s consent
This Panel considers it wise, absent a signed stipulation between the parties or a withdrawal of the Complaint, to follow the third option and proceed to consider the merits of the case.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainant has established rights to the mark JL AUDIO via its United States trademark registrations dating from January 16, 1996, for use in commerce as early as April 1, 1977. Complainant has also offered evidence of its use of the W7 mark in commerce since as early as December 2001. Complainant maintains a related website for ease of its customers at “www.jlaudio.com”. The domain name <jlaudiow7.com> is identical to Complainant’s marks, JL AUDIO and W7, merely combining them together. Prior panels have found even combined marks between different companies to satisfy this standard. See, Bayerische Motoren Werke AG and Williams Grand Prix Engineering Limited v. Neil Malkhandi,
WIPO Case No. D2000-1172.
The Panel therefore finds that Complainant has satisfied the first requirement under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel accepts Complainant’s contention regarding Respondent’s lack of rights and legitimate interests in the domain name <jlaudiow7.com>. Complainant owns a trademark registration for the mark JL AUDIO, which it uses in commerce, including for online business. Complainant also offered evidence of its use of the W7 mark. Complainant’s use of the JL AUDIO mark predates Respondent’s registration of the domain name <jlaudiow7.com> by over 18 years. Complainant’s use of the W7 mark predates the domain name registration by almost 4 years. Complainant contends that the Respondent does not own any trademark or intellectual property rights in the JL AUDIO or W7 marks, and that the Respondent has never used either as a legitimate business name. Complainant further avers that it has never authorized, licensed or permitted the Respondent to use its JL AUDIO or W7 marks.
Respondent did not contest Complainant’s allegations, but rather submitted written evidence of its apparent intention to forfeit the domain name <jlaudiow7.com>. The Panel has the authority to consider and weigh supplemental materials as it deems fit, according to paragraph 10 of the Rules. The Panel considers Respondent’s email message to be indicative of Respondent’s admission of lack of rights or legitimate interest in the domain name <jlaudiow7.com>. In any event, Respondent’s email does not rebut Complainant’s prima facie showing under paragraph 4(b). See WIPOOverview of WIPO Panel Views on Selected UDRP Questions, § 2.1.
The Panel therefore finds that Complainant has satisfied the second requirement under paragraph 4(b) of the Policy.
C. Registered and Used in Bad Faith
Two primary factors lead the Panel to infer and conclude that Respondent had knowledge of Complainant’s marks and has registered and used the domain name <jlaudiow7.com> in bad faith.
First, Complainant registered the JL AUDIO mark in 1996, based on use in commerce dating from 1977, over 18 years prior to Respondent’s registration of the domain name <jlaudiow7.com>. Complainant is known internationally for its products, including those bearing its W7 mark. This supports the conclusion that the marks have a sufficient reputation so as to have become known to Respondent prior to Respondent’s registration of the domain name.
Second, the Panel finds that Respondent has chosen to register Complainant’s marks as a domain name in order to divert Internet traffic away from Complainant’s website for the purpose of disrupting Complainant’s business for monetary gain. Respondent’s website actually offers products incorporating Complainant’s marks. This conduct of diverting traffic for the purpose of disrupting the business of a competitor for monetary gain is considered bad faith under the Policy. See, Amazon.com, Inc. v. MCL International Ltd., WIPO Case No. D2000-1678 and American Institute of Floral Designers v. Palm Coast Floral, Inc.,
WIPO Case No. D2000-0335.
Accordingly, the Panel finds that Complainant has satisfied the third element under paragraph 4(c) of the Policy.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <jlaudiow7.com> be transferred to the Complainant.
Lorelei Ritchie de Larena Sole Panelist
Dated: January 25, 2008
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