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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

The Chase Manhattan Corporation v. Jehovah Technologies Pte Ltd

Case No. D2000-0388

 

1. The Parties

The Complainant is The Chase Manhattan Corporation, a corporation organized and existing under the laws of the State of Delaware, USA, with its world headquarters located at 270, Park Avenue, New York, New York, USA.

The Respondent is Jehovah Technologies Pte Ltd. According to registrars.com's WHOIS database, the Respondent is located in Singapore. No street address, postal address or other contact details are available.

 

2. The Domain Name(s) and Registrar(s)

This dispute concerns the domain name "chasemanhattancorp.com".

The registrar with which the said domain name is registered is registrars.com of 475, Sansome Street, San Francisco, California, 94111, USA (hereinafter "the Registrar").

 

3. Procedural History

On May 4, 2000, the Complainant filed the Complaint in these Administrative Proceedings in electronic form with the WIPO Arbitration and Mediation Center (hereinafter "the Center"). Said Complaint was filed pursuant to the Uniform Domain Name Dispute Resolution Policy (hereinafter "the Policy") adopted by the Internet Corporation for Assigned Names and Numbers (hereinafter "ICANN") on October 24, 1999.

On May 10, 2000, a hard copy of said Complaint was received by the Center and the Complainant stated therein that a copy of said Complaint had been sent to the Registrar.

On May 11, 2000, the Center sent an Acknowledgement of Receipt of the Complaint to the Complainant and on the same date a copy of the said acknowledgement was sent to the Respondent by e-mail.

On May 11, 2000, the Center sent to the Registrar a Request for Registrar Verification requesting confirmation that a copy of the Complaint had been sent to the Registrar by the Complainant, as required by the Supplemental Rules for Uniform Dispute Resolution Policy (hereinafter the "Supplemental Rules") paragraph 4(b); confirmation that the specified domain name "chasemanhattancorp.com" is registered by the Registrar; confirmation that the Respondent is the current registrant of the said domain name and requesting full contact details available in the Registrar's WHOIS database for the domain name registrant, technical contact, administrative contact and billing contact for the above domain name. The Center further requested that the Policy applied to the said domain name and requested the Registrar to indicate the current status of the said domain name. The Center received a response to said request on May 27, 2000.

On May 26, 2000, having verified, in accordance with Paragraph 4(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter "the Rules") and Paragraph 5 of the Supplemental Rules, that the Complaint satisfied the formal requirements of the Policy, the Rules and the Supplemental Rules and the payment in the required amount had been made to the Center by the Complainant, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent. Said Notification was sent by the Center by e-mail without attachments. A copy of the said Notification was sent on the same date to the Complainant by e-mail (without attachments). Further copies were sent by the Center (without attachments) to ICANN and to the Registrar.

On June 18, 2000, the Center sent a Notification of Respondent Default to the Respondent by e-mail. A copy of said Notification was sent to the Complainant by e-mail at the same time.

On June 22, 2000, having received a Statement of Acceptance and Declaration of Impartiality and Independence from James Bridgeman the Center proceeded to appoint this Administrative Panel and sent a Notification of Appointment of Administrative Panel and Projected Decision Date to the authorised representative of the Complainant and to the Respondent. On the same date the case file was transmitted to this Administrative Panel.

Having reviewed the above correspondence and documentation, this Administrative Panel concludes that the proper procedures were followed and that this Administrative Panel was properly constituted.

 

4. Factual Background

The Complainant has produced prima facie evidence of the following factual background and in the absence of any submissions from the Respondent this Administrative Panel accepts the Complainant's submissions as correct.

The Complainant is a holding corporation whose subsidiaries are engaged in financial services. Chase National Bank, the predecessor of the Complainant, was founded in 1877. On March 31, 1955, the acquisition of Chase National Bank was effected by The Bank of the Manhattan Company and the resulting corporation was known as The Chase Manhattan Bank.

In 1969, The Chase Manhattan Bank formed a one-bank holding company viz. the Complainant.

In the same year the shares of the Complainant corporation were listed on the New York Stock Exchange. On March 31, 1996, the Complainant merged with the Chemical Banking Corporation and the Complainant became what was then the largest bank holding company in the USA.

Since 1877, the Complainant, its predecessors and subsidiaries, have used the words "CHASE" and subsequently "CHASE MANHATTAN" as part of their trade name. Under its umbrella, the Complainant's subsidiaries provide a range of financial services world-wide. Among the services provided are credit card issuance and related services, mortgage banking, investment banking, corporate and small business lending, global asset management, personal and private banking, credit cards, consumer finance, custody services, cash management, investor services, and trust and other fiduciary services.

The Complainant is the registered owner of the USA registered trademark and service mark registration number 1,521, 765 "CHASE" in classes 16 and 36. Said registration was issued and placed on the Principal Register of the USPTO on January 24, 1989.

The Complainant and its subsidiary companies claim to have a physical presence in nearly 50 countries throughout the world. The Complainant has furnished a print out of what is claimed to be details of registrations and pending applications for registration of trade marks and service marks in various countries throughout the world for the following trademarks and service marks: "CHASE", "THE CHASE MANHATTAN BANK", "CHASE ADVANTAGE CREDIT", "CHASE ADVANTAGE SMART SHOPPER", "CHASE ASSET BUILDER", "CHASE AUTOMOTIVE FINANCE + DESIGN", "CHASE BANK", "CHASE BY PHONE", "CHASE BANK OF FLORIDA (FL)", "CHASE BANKING 101", "CHASE BANKING CARD", "CHASE BASEBALL IS FOR KIDS", "CHASE BASEBALL IS FOR KIDS AND DESIGN", "CHASE BETTER BANKING", "CHASE BLOOD DROP DESIGN", "CHASE BUSINESS RETIREMENT MANAGEMENT ACCOUNT", "CHASE CASH ACCESS LINE", "CHASE CLASSIC CHECKING ACCOUNT", "CHASE COMBINATION ACCOUNT", "CHASE CONSOLIDATOR LINE OF CREDIT", "CHASE CUENTA CORRIENTE DE INVERSIONES", "CHASE CUSTOM", "CHASE CUSTOMER RESOURCES", "CHASE CUSTOMFIT", "CHASE DIRECT BANKING", "CHASE DIVIDEND SAVINGS", "CHASE ECONOMY CHECKING", "CHASE E PASSPORT", "CHASE EXPRESS", "CHASE FASTPAY", "CHASE FAXLINE", "CHASE FUNDS ALLOCATION UNIT", "CHASE GOLD", " CHASE HOME LOAN DIRECT", "CHASE HOME LOAN RESOURCES", "CHASE I-SOLUTIONS", " CHASE IMAGEACCESS", "CHASE IMAGEEXPORT", "CHASE IMAGESTATION", "CHASE INDIVIDUAL BANK + LOGO-SOLID", "CHASE INDIVIDUAL BANK", "CHASE INFOLINK", "CHASE INFOSTATION", "CHASE INTERNATIONAL INVESTMENT CORPORATION", "CHASE INVESTMENT BANK", "CHASE LIQUIDITY MANAGER", "CHASE MANHATTAN", "CHASE MANHATTAN BANK", "CHASE MANHATTAN BANK - NATIONAL ASSOCIATION", "CHASE MANHATTAN BANK, THE", "CHASE MANHATTAN BANK ESPANA", "CHASE MANHATTAN BANK (NATIONAL ASSOCIATION)", "CHASE MANHATTAN BANK (NA)", "CHASE MANHATTAN CORP INVESTMENT NOTE", "CHASE MANHATTAN OVERSEAS BANKING CORPORATION", "CHASE MANHATTAN OVERSEAS CORP.", "CHASE MANHATTAN OVERSEAS INVESTMENT CORPORATION", "CHASE MANHATTAN PROFITS FROM THE EXPERIENCE", "CHASE MANHATTAN VISTA FUNDS AND DESIGN", "CHASE MANHATTAN (Defensive name)", "CHASE MARKET INDEX INVESTMENT", "CHASE MERCHANDISE PROTECTION PLAN", "CHASE MIA", "CHASE MORTGAGE PLUS", "CHASE PAY BY PHONE", "CHASE PAYROLL CARD", "CHASE PERSONAL BANKER", "CHASE PERSONAL BANKING", "CHASE PREFERRED CLIENT SERVICES", "CHASE PREFERRED", "CHASE PREMIER", "CHASE PREMIER ADVANTAGE", "CHASE PREMIER + P DESIGN", "CHASE PRIME BANKING", "CHASE PRIME PLUS", "CHASE PRIVATE BANK", "CHASE PRIVATE BANK DESIGN", "CHASE PROFIT FROM THE EXPERIENCE", "CHASE RETIREMENT MANAGEMENT", "CHASE SMALL BUSINESS DIRECT", "CHASE SMART SHOPPER", "CHASE STAR", "CHASE STRAIGHT THROUGH", "CHASE STRESS-FREE CARD", "CHASE SUMMIT", "CHASE TRAVELLER SERVICE", "CHAST VISTA", "CHASE VISTA FUNDS + DESIGN", "CHASE VISTA FUNDS +LOGO", "CHASE (CHINESE CHARACTERS)", "CHASE (in Japanese characters)", "CHASE AND LINE LOGO", "CHASE AND LOGO-SOLID", "CHASE24TRADE", "CHASEBOND", "CHASEBUSINESSCARDS.COM", "CHASECONNECT.COM", "CHASEDEAL", "CHASEDEPO", "CHASEFUNDS24", "CHASEFX", "CHASEINVEST", "CHASELOCK", "CHASERS", "CHASESPACE", "CHASEXCHANGE.COM", "CHASE UNA BUENA RELACION ES LO QUE CUENTA", "THE CHASE BANK OF CYBERSPACE", "THE CHASE BANK OF THE INFORMATION HIGHWAY", "THE CHASE BANK OF THE INTERNET", "THE CHASE FINANCIAL SOLUTIONS CENTER", "THE CHASE MANHATTAN", "THE CHASE MANHATTAN BANK", "THE CHASE MANHATTAN BANK N.A.", "THE CHASE MANHATTAN BANK NA +SOLID LOGO", "THE CHASE MANHATTAN BANK (NATIONAL ASSOCIATION)", "THE CHASE MANHATTAN BANK (NJ)", "THE CHASE MANHATTAN BANK (NY)", "THE CHASE MANHATTAN PRIVATE BANK (SWITZERLAND)", "THE CHASE UNIVERSAL ACCOUNT", "THE CHASE WEALTH MANAGEMENT ACCOUNT".

The Complainant has established a www site at the domain name "www.chase.com". The www site was initiated in 1996 and has grown to 1000 pages. The Complainant's "CHASE" trademark/service mark is prominently displayed on the Complainant's said www site.

There is little information available about the legal status or location of the Respondent. The Complainant has furnished the details which are available in the Registrar's WHOIS database viz. that the Respondent is located in Singapore, there is no street address or postal address furnished, neither is there any telephone or facsimile number for the Respondent. The only contact information available in said WHOIS database is the name and e-mail address of the Administrative Contact, Technical Contact and Billing Contact. The documents referred to in the Procedural History above were served on the Respondent by e-mail to said address.

 

5. Parties’ Contentions

A. Complainant

The Complainant submits:-

that the Complainant is the owner of the registered trademarks "CHASE" and "CHASE MANHATTAN" and that the said domain name "chasemanhattancorp.com" infringes these marks; furthermore that the Respondent has no rights or legitimate interests in respect of the said domain name; and that said domain name "chasemanhattancorp.com" was registered and is being used in bad faith.

In support of the claim that the Complainant is the owner of the registered trademarks "CHASE" and "CHASE MANHATTAN", the Complainant submits that it and its subsidiaries are the owners of the above referenced registrations and pending applications for trade marks and service marks throughout the world. The Complainant has submitted that it has systematically protected its marks by registration either alone or with other elements in more than 70 countries throughout the world. In support of these claims the Complainant has furnished a copy of the certificate of registration of said USA registered trade mark and service mark, registration number 1,521,765 "CHASE" and a copy of the certificate of registration of the Republic of Singapore registered service mark "THE CHASE MANHATTAN BANK" which is registered in the name of The Chase Manhattan Bank N.A., a company within the Complainant's group, in Part B of the said register in respect of services in class 35. The Complainant has also furnished a print-out of details of registrations and pending applications in more than 70 jurisdictions for the trade marks and service marks set out in the Factual Background above.

The Complainant submits that its "CHASE" mark is inherently distinctive and is the means by which the products and services of the Complainant are identified and distinguished from similar products and services of others. It further claims that through long, extensive and widespread use, the Complainants trademarks have attained broad consumer recognition and are protected as "famous" marks by USA law.

The Complainant further argues that it has continuously and extensively advertised and promoted its products and services using the "CHASE" mark throughout the USA, as well as internationally, by means of brochures and branch office displays, and through various media, including radio, newspapers, periodical publications, direct mail and the internet so that as a result of long, continuous and exclusive use, the "CHASE" mark has acquired a secondary meaning that is associated by consumers and the public with the Complainant's services.

Furthermore the Complainant states that it is clear that the domain name "chasemanhattancorp.com" is in all respects identical to the name of the name of the Complainant's corporate name with the exception of the definite article "the" which is of no significance to the analysis of whether the domain name is identical to a trade mark. In this regard the Complainant submits that this point was decided in Bennett Coleman & Co. Ltd. v. Steven S Lawani, et al (WIPO Case Nos. D2000-0014 and D2000-0015).

The Complainant submits that the Respondent has candidly admitted in an e-mail that the Respondent registered the said domain name "chasemanhattancorp.com" even though it had no legitimate interest in said domain name, and that it had registered said domain name expressly for the purposes of selling it to the Complainant or some other buyer.

The Complainant submits that the said domain name was registered on December 18, 2000, and on the following day, the Respondent contacted the Complainant by e-mail stating: "You are receiving this mail because our company Jehovah Technologies Pte Ltd. is in possession of your company internet domain name. We are an internet domain name trading firm distributing internet domain names across the cyber highway in mass quantity. You have been contacted because a domain name similar to your company name has appeared under our sales listing." The said domain name was listed on an auction site where a minimum bid of $20,000 (US) was solicited. The same transmission was received by the Complainant on December 23, 1999. The Complainant has furnished copies of these communications. The Complainant submits that these communications establish that the Respondent has no legitimate rights or interest in the said domain name.

In support of the Complainant's contention that the said domain name was registered and is being used by the Respondent in bad faith, the Complainant states that after receiving the foregoing communications, one of the Complainant's attorneys, accessed an auction site and determined that the said domain name was for sale at that site. The Complainant has furnished this Administrative Panel with a print-out of the relevant pages of the said auction site. Thereafter the Complainant's attorney communicated with the Respondent and offered to pay the Respondent's out of pocket costs for the transfer of the said domain name, but refused to pay the US$20,000 asked.

The Complainant has furnished this Administrative Panel with a copy of an undated e-mail which the Complainant claims it received from the Respondent in reply. In this e-mail, the Respondent offered to sell the domain name to the Complainant for what the Respondent described as being "a compromised (sic) figure of US$18,000 (US$2,000 deduction or 10% discount from the original price of US$20,000)."

In the said e-mail the Respondent described itself in the following terms:

"Our company Jehovah Technologies is a 'Private Limited' organisation with limited payable liabilities. When our corporate bank account reaches zero, corporate bankruptcy shall be announced.

*POINTS TO NOTE*

Our company does not own any business space such as an office or building.

Our company does not own any transportation devices such as a (sic) automobile.

Our company does not employ any workers.

Our company possesses only a few hundred Singapore dollars in the corporate bank account.

If our company goes bankrupt, CHASE will have to provide additional legal expenditure in view of closing our company. A lawyer in your country cost (sic) US $250 per hour on average. According to past experience, such cases will require at least 3 months to conclude. Our statistics also show that the total amount of expenditure required to take full scale legal action against our company, Jehovah Technologies Pte Ltd. is approximately US $ 30,000 or more (not inclusive of legal fees, required by local authorities here, to close down our company and advertising fees needed to announcement (sic) of corporate bankruptcy over media sources such as major newspapers).

In relative words, Jehovah Technologies Pte Ltd. is a company represented by an empty nutshell. If things really turn out lousy for our company, we only stand to lose a few hundred dollars, our company name and the US$60 domain name. As for your company, it will cost you MORE than US $30,000 and US$60 domain name…"

The Complainant in conclusion submits that the Respondent's actions violate not only the letter and spirit of ICANN Policy, but offend the settled law of the United States as codified in the Lanham Act and interpreted by United States Federal Courts.

The Complainant seeks the transfer of the disputed domain name to the Complainant.

B. Respondent

No submissions were received from the Respondent.

 

6. Discussion and Findings

Procedural Matters relating to the Respondent's Default:

Procedural Matters Relating to the Respondent's Default

Paragraph 4(d) of the Rules provides that the Center shall immediately notify the Complainant, the Respondent, the concerned Registrar(s), and ICANN of the date of commencement of the administrative proceeding.

Paragraph 5(a) of the Rules requires that within twenty (20) days of the date of commencement of the administrative proceeding the Respondent shall submit a response to the Center.

Paragraph 6(b) of the Rules provides inter alia that if neither the Complainant nor the Respondent has elected a three-member Panel, the Center shall appoint, within five (5) calendar days following receipt of the response by the Center, or the lapse of the time period for the submission thereof, a single Panelist from its list of panelists. This procedure is also set out in paragraph 7(c) of the Supplemental Rules.

Paragraph 6(f) of the Rules provides that once the entire Panel is appointed, the Center shall notify the Parties of the Panelists appointed and the date by which, absent exceptional circumstances, the Panel shall forward its decision on the complaint to the Center.

Paragraph 10(b) of the Rules requires the Panel to ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.

Paragraph 10(c) of the Rules inter alia requires the Administrative Panel to proceed with due expedition.

Paragraph 14 of the Rules sets out the procedure to be followed by the Administrative Panel where either party is in default of the procedures and provides that:

(a) In the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the complaint.

(b) If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.

Having considered the file transmitted to the Administrative Panel by the Center pursuant to paragraph 9 of the Rules, the Administrative Panel finds :

1) that the Center has complied with paragraph 2(a) of the Rules and has employed reasonably available means calculated to achieve actual notice to the Respondent;

2) that the Respondent has been given a fair opportunity to present its case and has not done so;

3) that there is no evidence of any exceptional circumstances applying to these proceedings.

In the circumstances, the Administrative Panel is required by paragraphs 10(c) and 14(a) to proceed to make a decision on the basis set out in paragraph 15(a) of the Rules.

Substantive Issues

In accordance with paragraph 4(a) of the Policy, the Complainant bears the onus of proof and must establish:

i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

ii) that the Respondent has no legitimate interests in respect of the domain name;

iii) that the domain name has been registered and used in bad faith.

Identical or Confusingly similar to the Complainants Service Mark Rights

This administrative panel is satisfied that the Complainant is the owner of the said USA registered trademark and service mark registration number 1,521, 765 "CHASE" in classes 16 and 36. In the absence of any rebuttal evidence from the Respondent this Administrative Panel also accepts that the Complainant and its subsidiaries are the owners of the trade mark and service mark registrations listed above in various countries throughout the world including "THE CHASE MANHATTAN BANK", "CHASE MANHATTAN", "CHASE MANHATTAN BANK", "CHASE MANHATTAN BANK - NATIONAL ASSOCIATION" and "CHASE MANHATTAN BANK, THE".

Furthermore this Administrative Panel is satisfied that the said domain name is confusingly similar to said trade marks and service marks and in particular to the service mark including "THE CHASE MANHATTAN BANK".

The Respondent itself has admitted that the said domain name is similar to the Complainant's corporate name in the statement in the Respondent's e-mails to the Complainant on December 19, 2000, and December 23, 1999, viz. "You are receiving this mail because our company Jehovah Technologies Pte Ltd. is in possession of your company internet domain name…You have been contacted because a domain name similar to your company name has appeared under our sales listing." This Administrative Panel is satisfied by the evidence submitted by the Complainant that the Complainant has acquired common law rights in its corporate name in addition to the rights it has acquired through registration and use of its various trade marks and service marks.

Legitimate Interest of the Respondent

Paragraph 4(c) of the Policy provides that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate the Respondent's rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) that before any notice to the Respondent of the dispute, the Respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) that the Respondent (as an individual, business, or other organisation) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) that the Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Having considered the Complainant's submissions and in the absence of any submissions from the Respondent, this Administrative Panel is satisfied that the Respondent has no rights or legitimate interest in said domain name. This Administrative Panel is confirmed in this view by the Respondent's admission, in inter partes e-mail correspondence, that it is "a company represented by an empty nutshell".

Bad Faith

Paragraph 4(b) of the Policy provides that for the purposes of paragraph 4(a)(iii) of the Policy, "the following circumstances, 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:
(i) circumstances indicating that the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) that the Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) that the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's web site or location or of a product or service on the Respondent's web site or location.

Having considered the Complainant's submissions and the evidence adduced by the Complainant and in particular the e-mail correspondence between the parties relating to the negotiations for the sale of the said domain, it is clear that the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name.

Consequently this Administrative Panel is satisfied that the Respondent has registered the said domain name and is using said domain name in bad faith.

 

7. Decision

With reference to Paragraphs 4(i) of the Policy and rule 15 of the Rules this Administrative Panel is satisfied that the domain name the Respondent has registered "chasemanhattancorp.com" is identical or confusingly similar to the Complainant's trade marks and service marks, that the Respondent has no rights or legitimate interest in respect of the domain name and that the Respondent has registered and is using that domain name in bad faith. Accordingly, this Administrative Panel decides and directs that said domain name "chasemanhattancorp.com" should be transferred to the Complainant.

 


 

James Bridgeman
Presiding Panelist

Dated: July 5, 2000

 

Источник информации: http://www.internet-law.ru/intlaw/udrp/2000/d2000-0388.html

 

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