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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

The Chase Manhattan Corporation v. Supreme Ltd., Inc.

Case No. D2000-0931

 

1. The Parties

The Complainant is Chase Manhattan Corporation (Chase), a Delaware, U.S.A. Corporation, having a place of business at 270 Park Avenue, New York, New York 10017, U.S.A. The Respondent is Supreme Ltd., Inc. (Supreme), a corporation having an address of 4117 Hillsboro Pike, Suite 103, PMB 316, Nashville, Tennessee 37215, U.S.A.

 

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

The domain names involved in this proceeding are "CHASEPLATINUM.NET" and "CHASEPLATINUM.ORG", both registered with the domain name registrar Network Solutions, Inc. (NSI) on March 22, 2000.

 

3. Procedural History

On or about August 2, 2000, Chase’s Complaint (the Complaint) was submitted for decision in accordance with the Uniform Policy for Domain Name Dispute Resolution, adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 (the Rules) and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules). See Rules, Paragraph. 3(b).

Chase’s Complaint was received by the WIPO Arbitration and Mediation Center (the Center) in electronic format on August 3, 2000, and in paper form on August 7, 2000. It appears that Chase made proper payment of the administrative fee, and that the Center did not note any failure to comply with formal filing requirements.

On August 8, 2000, the Center notified the registrar, NSI, that Chase had filed its Complaint with the Center, and requested that NSI verify certain details regarding Chase’s Complaint, and the registration and current status of the contested domain names. On August 4, 2000, NSI notified the Center: (i) that NSI received Chase’s Complaint, (ii) that NSI is the Registrar for the contested domain names, (iii) that Supreme is the current registrant of the "CHASEPLATINUM.NET" and "CHASEPLATINUM.ORG" domain name registrations, (iv) of Supreme’s contact details, (v) that the Policy applies to the contested domain names through application of NSI’s 5.0 Service Agreement in effect, and (vi) that the domain name registrations for the "CHASEPLATINUM.NET" and "CHASEPLATINUM.ORG" domain names are in "active" status.

On August 17, 2000, the Center began the process to notify Supreme of the filing of Chase’s Complaint in accordance with the Rules, paragraph. 2(a). Supreme was given until September 5, 2000, to file a Response.

The Center attempted e-mail transmission of its Notice of the filing of Chase’s Complaint and Commencement of this Proceeding at the address listed in the WhoIs contact details for the contested domain names: "no.valid.email@worldnic.net". This attempt was unsuccessful. In its Complaint, Chase asserts that, according to NSI, this is a standard fictitious e-mail address when the actual e-mail address is unavailable.

On August 18, 2000, the Center made several attempts to notify Supreme of the filing of Chase’s Complaint and Commencement of this Proceeding by facsimile at the fax number listed in the WhoIs contact details for the contested domain names. These attempts were unsuccessful. On the same date, the Center sent by courier the printed version of Chase’s Complaint, with exhibits, and the Notice of Commencement to Supreme’s mailing address listed in the WhoIs contact details for the contested domain names. The Panel has not been advised by the Center that the courier package was returned for insufficient address. Thus, the Panel finds that Supreme was properly notified of this proceeding.

It appears that Supreme did not submit a Response to Chase’s Complaint to the Center The Panel deems Supreme to be in default with respect to this proceeding.

In its Complaint, Chase elected to have this proceeding decided by a single member panel. On September 28, 2000, the Center contacted the undersigned to solicit interest in being the sole panelist who would decide this matter. After investigating and clearing potential conflicts of interest, the undersigned notified the Center on September 29, 2000, of the ability and availability to serve as the sole panelist for this matter. On September 29, 2000, the undersigned submitted to the Center a Statement of Acceptance and Declaration of Impartiality and Independence. Thus, the administrative panel for this proceeding was properly constituted.

On October 2, 2000, the Center forwarded to the undersigned the case file for this proceeding. Also on October 2, 2000, the Center notified the parties that the undersigned would be the sole Panelist to decide this matter.

 

4. Factual Background

According to the Complaint, Chase National Bank, Chase’s predecessor, was founded in 1877. Since that time, Chase or its predecessors and subsidiaries allegedly have used "Chase" as part of their trade name. Among the financial services provided by Chase and its subsidiaries and affiliates, Chase asserts, 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 (hereinafter, financial services).

Chase registered with the United States Patent and Trademark Office (USPTO) the service mark and trademark "CHASE" for use in association with various banking and financial services and publications. On January 24, 1989, U.S. Trademark and Service Mark Reg. No. 1,521,765 (Chase mark) was issued and placed upon the Principal Register in the USPTO. A copy of this registration certificate is attached to Chase’s Complaint. Chase asserts that this registration remains valid, subsisting and uncancelled. Chase also asserts that the U.S. registration for the Chase mark became incontestable on July 30, 1995, pursuant to the provisions of 15 U.S.C. § 1065.

Chase asserts that it has a physical presence in nearly 50 countries, and an ability to offer services around the world. Chase further asserts that it systematically has protected its mark by registering it, either alone or with other elements, in more than 70 countries throughout the world. A lengthy list of registrations claimed to be owned by Chase in numerous countries, comprising or containing the term "CHASE", is attached to the Complaint.

Chase contends that the Chase mark is inherently distinctive and is the means by which the products and services of Chase are identified and distinguished from similar products and services of others. Chase further contends 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 Chase’s services. Chase asserts that both the "Chase" and "Chase Platinum" marks are well-known and exclusively associated with Chase’s services. Chase also contends that, through long, extensive and widespread use, the Chase marks have attained broad consumer recognition and are "famous" within the meaning of 15 U.S.C. § 1125(c)(1). The Panel makes no finding with respect to the degree of inherent or acquired distinctiveness or fame of the Chase mark(s), as such a finding is not necessary for the disposition of this matter.

Chase claims that, at all times, it has continuously and extensively advertised and promoted its products and services using the Chase mark throughout the United States as well as internationally by means of brochures and branch office displays, and through various media, including television, radio, newspapers, periodical publications, direct mail and the Internet. The Panel notes that evidence of this alleged "continuous and extensive advertising and promotion of Chase’s products and services using the Chase mark" has not been submitted with the Complaint.

Chase contends that it attracts a broad national and international customer base by offering information and services to current and potential customers through its website at "www.chase.com". The website is alleged to have been initiated in 1996 and to have grown to 1000 pages. While this matter was pending with the Center, the Panel visited the "www.chase.com" website. Throughout the website, numerous references are made to marks and names using the term "CHASE", including the mark CHASE PLATINUM, in connection with the promotion and advertising of Chase’s financial services.

Chase asserts that Chase Platinum identifies a brand of premium MasterCard and Visa credit card that Chase has issued since June 1997. In the credit card industry, says Chase, the term "platinum" is commonly associated with a particular category of credit card, one that is generally issued with a high credit line and additional benefits to attract the most creditworthy customer. Chase uses the term "platinum" to identify its credit cards in this category, and specifically uses the term "Chase Platinum" to distinguish the card in the market and to associate the card, in the mind of the public, with the Chase name and quality of products and services. Chase says that it began using the Chase Platinum service mark in 1997, when it launched the card.

Chase states that it has marketed Chase Platinum throughout the United States by means of brochures and branch office displays, and with multimedia advertising campaign. Chase claims that extensive information is available about the Chase Platinum credit card on the "www.chase.com" website. From a visit to the site, the Panel agrees with Chase’s representations in this regard. Chase also attached to its Complaint a sample of a June 1997 introductory mailing, and a copy of an envelope from a similar mailing, marked "Received July 17, 1997," indicating that Chase was using Chase Platinum as a service mark long before Supreme registered the contested domain names.

Chase states that Supreme is neither a licensee of Chase nor in any way associated with The Chase Manhattan Corporation or any of its subsidiaries or affiliates. Nevertheless, on March 22, 2000, Respondent registered the domain names at issue.

Chase asserts that, during the week following the registration of the contested domain names, Respondent, represented by Mr. Chris Raines, contacted Chase and left a voice-mail message in which he stated that his company owned the domain name registrations for "chaseplatinum.net" and "chaseplatinum.org", and that if Chase did not purchase the registrations, he would use the domain names as addresses for a pornographic Internet website.

On March 29, 2000, a Chase attorney, to whom Mr. Raines’s voice-mail message had been forwarded, wrote to Respondent and rejected the offer, demanding that the domain names be transferred immediately to Chase. A copy of Chase’s letter is attached to the Complaint.

On April 4, 2000, the same Chase attorney spoke to Mr. Raines by telephone. During that conversation, Mr. Raines informed Chase that Respondent would agree to transfer the domain names if Chase consented to the use of Chase Platinum as the name of a recording artist that Respondent had not yet even developed. Chase states that it declined the "counter-offer." A copy of Chase’s April 11, 2000, letter recounting this conversation is attached to the Complaint.

To date, Respondent has not transferred the domain names "chaseplatinum.net" and "chaseplatinum.org" to Chase. Chase’s Internet searches using each domain name access "the message" that the website is "under construction". While this matter was pending with the Center, the Panel visited the web pages that resolved to the URLs "www.chaseplatinum.net" and "www.chaseplatinum.org." The Panel has verified that the web pages appearing at these URLs are standard NSI "under construction" pages.

Chase conducted additional research from NSI’s WhoIs database records. Chase’s research revealed that Respondent also has registered the domain names "visaplatinum.org", "amexplatinum.net", "nvphilips.com", and "nvshell.com", all of which include names of other well-known credit card companies or other businesses. A copy of the WhoIs search results is attached to the Complaint.

 

5. Parties’ Contentions

A. Complainant

Chase contends that the contested domain names are identical or confusingly similar to trademarks or service marks in which the it has rights; that Supreme has no rights or legitimate interests in respect of the domain names; and that the domain names were registered and are being used in bad faith.

In particular, Chase asserts that Supreme’s actions amount to attempts to extort payment or other concessions from Chase, with respect to domain name registrations in which Supreme never held any rights or legitimate interests. Chase further asserts that Respondent’s communications with Chase compound its bad faith registration and use of the domain names insofar as it seeks to trade the domain names for valuable consideration well in excess of Supreme’s out-of-pocket costs directly related to those domain names.

Chase requests that the contested domain names be transferred to it.

B. Respondent

As Supreme has defaulted in this proceeding, it has elected not to contest any of the evidence submitted, assertions made, or the claim for relief requested by Chase in its Complaint.

 

6. Discussion and Findings

Transfer or cancellation of the contested domain names will be ordered if Chase has shown that the following three elements are present:

(i) the contested domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the domain name registrant has no rights or legitimate interests in respect of the domain name; and

(iii) the contested domain name has been registered and is being used in bad faith.

In an administrative proceeding pursuant to the Policy, Rules and Supplemental Rules, the Complainant must prove that each of these three elements are present. Policy, paragraph 4(a).

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 registrant registered or 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 the registrant’s documented out-of-pocket costs directly related to the domain name; or

(ii) the registrant 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 it is shown that the registrant has engaged in a pattern of such conduct; or

(iii) the registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to his website 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 registrant’s website or location or of a product or service on his website or location.

Policy, paragraph 4(b).

On the other hand, 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 registrant’s rights or legitimate interests to the domain name:

(i) before any notice to the registrant of the dispute, his 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) the registrant (as an individual, business, or other organization) have been commonly known by the domain name, even if the registrant has acquired no trademark or service mark rights; or

(iii) the registrant is making a legitimate noncommercial 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.

Policy, paragraph 4(c ).

Supreme had the opportunity to respond to Chase’s Complaint, and to present evidence that it has rights or legitimate interests in respect of the contested domain names. Supreme chose not to do so. Chase is not entitled to relief simply by reason of Supreme’s default, however, but the Panel can and does draw evidentiary inferences from Supreme’s failure to respond. See, Miles D., Ltd. dba Jazz Alley v. Shosha, Case No. AF-00318 (eResolution, August 29, 2000), citing, Royal Bank of Canada v. D3M Domain Sales, Case No. AF-0147 (eResolution, May 1, 2000).

For example, Paragraph 14 of the Rules 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.

Thus, the Panel finds that the contested domain names are identical to and/or are confusingly similar to trademarks or service marks in which the Chase has rights. Supreme has not come forward with evidence or argument in an effort to show that it has any rights or legitimate interests in respect of the contested domain names. Web pages that resolve to URLs associated with each of the contested domain names contain nothing more than standard NSI "under construction" pages. The Panel, therefore, finds that Supreme does not have any demonstrated rights or legitimate interests in respect of these two domain names.

The Panel now must decide whether Chase has come forward with sufficient evidence that the contested domain names have been registered and are being used in bad faith. The Panel finds that the circumstances stated in paragraphs. 4(b)(i) and (ii) of the Policy are present here.

From the parties’ communications, documented by Chase, the Panel finds here circumstances indicating that Supreme registered the contested domain names primarily for the purpose of selling or otherwise transferring the domain name registrations to Chase, who is the owner of the Chase trademarks and/or service marks for valuable consideration in excess of Supreme’s documented out-of-pocket costs directly related to the domain names. The Panel also finds that Supreme has registered the domain names in order to prevent Chase, as the owner of the Chase and Chase Platinum trademarks and/or service marks, from reflecting the CHASE PLATINUM mark in a corresponding domain name. From additional evidence Chase provided with its Complaint, it has been shown that Supreme has engaged in a pattern of such conduct.

In particular, Supreme evidenced bad faith registration and use of the contested domain names by (a) demonstrating that it has registered multiple domain names that encompass the marks or names of well known credit companies or other businesses, and (b) threatening to use the domain names at issue in this proceeding to direct Internet users to a pornography site if Chase did not submit to Supreme’s demands. See, Oxygen Media, LLC v. Primary Source, Case No. D2000-0362 (WIPO, June 19, 2000). A pattern of registration of domain names of other well-known entities also is evidence of bad faith registration and use of the disputed domain names. See, e.g., NFL Properties, Inc., et al. v. Rusty Rahe, Case No. D2000-0128 (WIPO, April 26, 2000). Finally, Supreme provided to NSI false contact details, which the Panel finds to be further evidence of Supreme’s bad faith registration and use of the contested domain names, Telstra Corp. Ltd. v. Nuclear Marshmallows, Case No. D2000-0003 (WIPO, February 18, 2000).

 

7. Decision

The Panel finds that Chase has met its burden of proof with respect to the three elements recited in paragraph. 4(a) of the Policy. Respondent has defaulted with respect to this proceeding, and has not come forward with any evidence or argument to contest Chase’s pleadings or proof. Thus, the Panel directs that the registrations for the "CHASEPLATINUM.NET" and "CHASEPLATINUM.ORG" domain names be transferred to Complainant, Chase Manhattan Corporation.

 


Jonathan Hudis
Panelist

Dated: October 9, 2000

 

Источник информации: https://www.internet-law.ru/intlaw/udrp/2000/d2000-0931.html

 

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