On-line ADR Center of the Czech Arbitration Court (CAC)

Panel Decision

§ 15 of the UDRP Rules (Rules), § 9 of the CAC’s Supplemental Rules (Supplemental Rules)

Case No. 102678
Time of Filing 2019-10-18 10:06:00
Disputed domain name JPMC-CONSULTS.COM
Case Administrator
Name Šárka Glasslová
Complainant
Organization JPMorgan Chase Bank, N.A.
Organization JPMorgan Chase & Co.
Authorized Representative
Organization RiskIQ, Inc. c/o Jonathan Matkowsky
Respondent
Name kelly slim
Other Legal Proceedings
There are no other legal proceedings the Panel is aware of which are pending or decided and which relate to the disputed domain name.
Identification of rights
The Complainants are the owner of the trademark "JPMORGAN CHASE" (registered at a national and international level and covering several countries), but they also have unregistered rights on "JPMC", an acronym used to refer as "JPMorgan Chase & Co", and widely used both by the Complainants themselves and the public.
Factual Background
FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:

JPMorgan Chase & Co. is a financial holding company and JPMorgan Chase Bank, N.A. is one of its subsidiaries. Since these two companies are part of the same common corporate structure, they request to proceed jointly in this proceeding, as such circumstance would not prejudice Respondent in any way.

The Complainants would be known by the public as "JPMC", an acronym referring to "JPMORGAN CHASE", a registered trademark of JPMorgan Chase Bank, N.A in the US and in the EU. As a consequence, Complainants would have unregistered rights for purposes of the Policy because "JPMC" would have become a distinctive identifier for the services offered by the Complainants.

The Respondent registered the disputed domain name on June 19, 2017, which was originally used in connection with domain parking services referring also to the Complainants' business and competitors. JPMC-CONSULTS.COM was lately used in an attempted advance-fee fraud scheme.
 
No administratively compliant Response has been filed.
Rights
The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).
No rights or legitimate interests
The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy).
Bad faith
The Complainant has, to the satisfaction of the Panel, shown the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).
Procedural Factors
The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.
Principal Reasons for the Decision
PRELIMINARY: REQUEST TO PROCEED JOINTLY

The Panel considers it is appropriate in this case that both JPMorgan Chase & Co. and JPMorgan Chase Bank, N.A. be joint Complainants in these proceedings, since each has rights in the "JPMC" acronym, used by all JPMorgan Chase & Co. affiliates.

Taken into account that granting Complainants' request to proceed jointly does not prejudice Respondent in any way, such demand is accepted.


1. IDENTICAL OR CONFUSING SIMILARITY

The Panel finds that the disputed domain name is almost identical to the acronym “JPMC”, since it exactly reproduces it, with the mere addition of the generic term "consults", which is descriptive of the services offered by the Complainants.

In order to establish unregistered or common law trademark rights for purposes of the UDRP, a Complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services. In this regard, relevant evidence demonstrating such acquired distinctiveness includes (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.

In the present case, the Complainants provided specific evidences supporting assertions of acquired distinctiveness:

- there are thousands of references to "JPMC" within the same sentence as "JPMorgan Chase" in the U.S. Securities and Exchange Commission's EDGAR (Electronic Data Gathering, Analysis, and Retrieval system) since 2015;

- by typing "JPMC" on Google, almost all of the results are connected to the Complainants' business activity and, indeed, Google's suggested phrases based on what is most frequently searched for the query “JPMC” specifically relate to Complainants;

- Complainants' websites extensively use "JPMC" directly and indirectly through affiliates as an acronym for JPMORGAN CHASE as a source identifier.

In other words, it is reasonable to believe that such acronym has been and is currently used by the general public to indicate the Complainants' business.

In consideration of the above and also taken into account that the Respondent did not reply by arguing the Complainants' assertion, this Panel believes the Complainants have satisfied paragraph 4(a) (i) of the Policy.


2. NO RIGHTS OR LEGITIMATE INTERESTS IN RESPECT OF THE DISPUTED DOMAIN NAME

According to the information provided by the Complainants, the Respondent is not affiliated nor authorized by the JPMorgan Chase & Co. and/or JPMorgan Chase Bank, N.A. in any way. Likewise, the Complainants neither licensed nor authorized the Respondent to make any use of their unregistered trademark/acronym “JPMC”, or to apply for registration of the disputed domain name on their behalf. The Complainants do not carry out any activity for, nor have any business with the Respondent.

It is undeniable that the Complainants are only required to make out a prima facie case that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. Once such prima facie case is made, the Respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. If the Respondent fails to do so, the Complainants are deemed to have satisfied paragraph 4(a) (ii) of the Policy.

Given all the above, the Panel accepts the contentions of the Complainants that the Respondent has no such rights or legitimate interests in the disputed domain name.


3. THE DISPUTED DOMAIN NAME HAS BEEN REGISTERED AND IS BEING USED IN BAD FAITH

The Panel finds that the Complainants successfully submitted prima facie evidence that, by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users, by creating a likelihood of confusion with the Complainants' unregistered mark/acronym as to the source, sponsorship, affiliation, or endorsement of the email account created through the disputed domain name and used for advance-fee-fraud cyber activities.

As a matter of fact, the demonstrated use of the disputed domain name in connection with this attempted advance-fee-fraud cyber activities is the clearest evidence of bad faith and it is quite hard to believe that the Respondent was not aware of the registration and the use of the Complainants' unregistered trademark/acronym before the registration of the disputed domain name.

Previous UDRP cases concerned with advance-fee-fraud have found the disputed domain name to have been registered in bad faith where the disputed domain name has been used for criminal activity: see - among others - WIPO Case No. D2009-0898, WIPO Case No. D2017-0614, WIPO Case No. D2017-0075, WIPO Case No. D2012-2484.

It is clear that such use of the disputed domain name is capable of disrupting the Complainants' business and the confusion will reflect extremely badly on the Complainants' business and tarnish their reputation and goodwill with their customers and the general public.

In the absence of a response from the Respondent and given the reputation of the Complainants, the Panel infers that the Respondent had the unregistered trademark/acronym "JPMC" in mind when registering the disputed domain name. Consequently, the Panel believes that the same was registered and is being used in bad faith.
Decision
For all the reasons stated above, the Complaint is Accepted
and the disputed domain name(s) is (are) to be
JPMC-CONSULTS.COM Transferred to JPMorgan Chase Bank, N.A.
Panellists
Name Tommaso La Scala
Date of Panel Decision 2019-11-28
Publication of the Decision
Publish the Decision