Decision for dispute CAC-UDRP-102669

There are no other legal proceedings relating to the disputed domain name.

The Complainant, JPMorgan Chase & Co., holds numerous trademark rights including for:

- the word mark CHASE (e.g. the US trademark n° 1521765 registered on January 24, 1989 and covering banking services);
- word mark JPMORGAN CHASE (e.g. the US trademark n° 3219221 registered on March 20, 2007 and covering banking services).

The Complainant is a leading global financial services firm and one of the largest banking institutions in the United States, with operations worldwide.

The Complainant is the holder of registered word marks CHASE and JPMORGAN CHASE.

The disputed domain name <myworkspacejpmchase.com> was registered on September 17, 2018. According to evidence provided by the Complainant, it resolves to a parking page with commercial links related to the Complainant.

NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.

PARTIES' CONTENTIONS:

COMPLAINANT:

The Complainant considers the disputed domain name to be confusingly similar to trademarks in which it has rights. The Complainant claims that the Respondent has no rights or legitimate interests in respect of the disputed domain name. According to the Complainant, the Respondent does not use the disputed domain name in connection with any legitimate use. Also, according to the Complainant, the Respondent has not been commonly known by the disputed domain name. Finally, the Complainant considers that the disputed domain name was registered and is being used in bad faith. The Complainant contends that the Respondent must have known of the existence of the Complainant’s trademark given its distinctiveness and reputation. The Complainant further claims that the Respondent has used the disputed domain name in order to intentionally attempt to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. The Complainant also claims that Respondent is disrupting its business. Finally, the Complainant also contends that the Respondent has engaged in a pattern of trademark-abusive domain name registrations.

RESPONDENT:

The Respondent did not reply to the Complainants’ contentions.

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).

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).

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).

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.

Paragraph 15 of the Rules provides that a panel is to decide the complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

The onus is on the complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that the complainant must show that all three elements set out in Paragraph 4 (a) of the Policy have been established before any order can be made to transfer a domain name. As the proceedings are civil, the standard of proof is the balance of probabilities.

Thus, for the complainant to succeed it must prove, within the meaning of Paragraph 4(a) of the Policy and on the balance of probabilities that:

1. The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;

2. The respondent has no rights or legitimate interests in respect of the domain name; and

3. The domain name has been registered and is being used in bad faith.


The Panel has therefore dealt with each of these requirements in turn.

1. Confusing similarity of the disputed domain name with existing rights

The Complainant must first establish that there is a trademark or service mark in which it has rights. Since the Complainant is the holder of the registered CHASE and JPMORGAN CHASE trademarks, which are used in connection with the Complainant’s business, it is established that there is a trademark in which the Complainant has rights.

The disputed domain name <myworkspacejpmchase.com> consists of:

1) the Complainant’s CHASE mark, combined only with the generic phrase “my workspace”,

2) the corporate abbreviation "jpm" for JPMorgan Chase & Co. (which also corresponds to Complainant’s stock ticker symbol on the New York Stock Exchange), and

3) the “.com” gTLD.


The addition of the generic terms “my workspace” does not add to the distinctiveness of the disputed domain name. The addition of a such terms does not prevent a finding of confusing similarity (see section 1.8, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Additionally, it is well established that the generic top-level suffix “.com” may be disregarded when considering whether the disputed domain names are confusingly similar to the trademark in which the Complainant has rights.

Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks. Accordingly, the Complainant has made out the first of the three elements that it must establish.


2. No rights or legitimate interests

Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

It is established case law that it is sufficient for the Complainant to make a prima facie showing that the Respondent has no right or legitimate interest in the disputed domain name in order to shift the burden of proof to the Respondent (see section 2.1 WIPO Overview 3.0 and Champion Innovations, Ltd. V. Udo Dussling (45FHH), WIPO case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO case No. 2004-0110).

The Panel notes that the Respondent has not been commonly known by the disputed domain name and that the Respondent has not acquired trademark or service mark rights. The Respondent’s use and registration of the disputed domain name was not authorized by the Complainant. There are no indications that a connection between the Complainant and the Respondent existed.

Moreover, the Panel is of the opinion that the Respondent is not making a legitimate non-commercial or fair use of the disputed domain name. It appears that the Respondent has been using the disputed domain name to refer to a standard parking page with sponsored links referring directly to the Complainant and its employees. According to the Panel, this cannot be considered as fair use of the disputed domain name.

The Respondent had the opportunity to demonstrate its rights or legitimate interests but did not do so. In the absence of a reaction by the Respondent, the prima facie case established by the Complainant has not been rebutted.

Based on the available record, the Panel finds that the Complainant has established a prima facie case, which was not refuted, and that the Respondent lacks rights or legitimate interests in the disputed domain name. Therefore, the Complainant has satisfied the second requirement that the Respondent has no rights or legitimate interests in the disputed domain name, under paragraph 4(a)(ii) of the Policy.


3. Bad faith

Complainant must prove on the balance of probabilities that the disputed domain name was registered in bad faith and that it is being used in bad faith (see section 4.2 WIPO Overview 3.0 and e.g. Telstra Corporation Limited v. Nuclear Marshmallow, WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd, WIPO Case No. D2006-1052).

According to the Panel, the fact that a respondent is aware of the complainant and/or the complainant’s trademark rights at the time of registration can evidence bad faith (see Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz, WIPO Case No. D2011-2209; Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070). In the instant case, the Panel finds that the Respondent must have had knowledge of the Complainant’s rights in the CHASE and JPMORGAN CHASE trademarks at the moment it registered the disputed domain name, since the disputed domain name incorporates the Complainant’s well-known CHASE mark in its entirety and the abbreviated form of Complainant’s JPMORGAN CHASE mark in combination with generic terms.

The Respondent has been using the disputed domain name in relation to a standard parking page displaying sponsored PPC links. While the intention to earn click through-revenue is not in itself illegitimate, the Panel finds that the use of a domain name that is deceptively similar to a trademark to obtain click-through-revenue is found to be bad faith use (see Mpire Corporation v. Michael Frey, WIPO Case No. D2009-0258; L'Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623). The Panel finds that by using the disputed domain name incorporating the Complainant's trademark in connection with a website containing links directly referring to the Complainant, the Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant's trademark. The addition of the terms “my workspace” in the domain name may increase confusion amongst users in this case as the Complainant uses "myworkspace" as part of a subdomain on its main website <jpmchase.com> for authorised users to log in to its virtual private network. There is a reasonable risk that the Respondent would use the disputed domain name as part of a fraudulent scheme.

Additionally, the Complainant shows that the Respondent has been the subject of numerous UDRP proceedings in which panels have ordered the transfer of the disputed domain name to the complainant. Such pattern of cybersquatting also evidences bad faith pursuant to paragraph 4(b)(ii) of the Policy as it prevents the Complainant from reflecting its mark in a domain name and the Respondent has engaged in a pattern of such conduct.

By hiding behind a privacy/proxy service, Respondent also took active steps to conceal his/her identity. In combination with the above, this support even more the proof of bad faith registration and use of the disputed domain name (see section 3.6 WIPO Overview 3.0).

Finally, the Respondent did not formally take part in the administrative proceedings. According to the Panel, this serves as an additional indication of the Respondent’s bad faith.

Therefore, the Panel finds that, on the balance of probabilities, it is sufficiently shown that the disputed domain name was registered and is being used in bad faith.