J.P. Morgan Chase & Co. v. CPIC Net

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

J.P. Morgan

Chase & Co. v. CPIC Net

Case No.

D2001-0385

1. The Parties

The Complainant is:

J.P. Morgan Chase & Co., a bank holding corporation whose headquarters

is at 270 Park Avenue, New York, New York, 10017, U.S.A.

The Respondent is: CPIC

NET, an entity whose address is at 15, 5th Street, Closter,

New Jersey 07624, U.S.A.

2. The Domain Names

and the Registrar

The eleven (11) domain

names in dispute are: <chasemorganbank.com>, <chasemorgancapital.com>,

<chasemorgancorp.com>, <chasemorgandirect.com>, <chasemorganmarkets.com>,

<chasemorganonline.com>, <labchasemorgan.com>, <jpmorganchasecorp.com>,

<morganchasecapital.com>, <morganchasedirect.com> and <chasemorgan.org>.

All the disputed domain

names are registered with Network Solutions, Inc. (NSI), 505 Huntmar

Park Drive, Herndon, Virginia 20170, U.S.A.

3. Procedural History

This dispute is to

be resolved in accordance with the Uniform Policy for Domain Name Dispute

Resolution (the Policy) and Rules for Domain Name Dispute Resolution (the

Rules) approved by the Internet Corporation for Assigned Names and Numbers

(ICANN) on October 24, 1999, and the World Intellectual Property Organization

Arbitration and Mediation Center's Supplemental Rules for Uniform Domain

Name Dispute Resolution (the Center, the Supplemental Rules).

The Complaint was filed

on March 16, 2001. On March 22, 2001, the Center requested that the registrar

NSI check and report back on the registrant(s) for the eleven (11) disputed

domain names supra. On March 28, 2001, NSI apprised the Center that the

Respondent CPIC NET was the registrant for all eleven (11) disputed domain

names.

On March 29, 2001,

the Center forwarded a copy of the Complaint to Respondent by registered

mail and by e-mail and this proceeding officially began. The Respondent

did not file a response within the twenty (20) day time frame required by

Rule 5 of the Rules, and on April 25, 2001, was declared in default.

The Administrative

Panel submitted a Declaration of Impartiality and Independence on May 7,

2001, and the Center proceeded to appoint the Panel on May 8, 2001. The

Panel finds the Center has adhered to the Policy and the Rules in administering

this Case.

This Decision is due

by May 22, 2001.

4. Factual Background

Chase National Bank,

a predecessor of the Complainant, J.P. Morgan Chase & Co., was founded

in 1877. Currently, the Complainant uses the "Chase" mark to identify its

retail banking and financial services.

J.P. Morgan & Co.,

also a predecessor of the Complainant, was founded in 1861. Currently, J.P.

Morgan Chase uses the "J.P. Morgan" mark to identify its wholesale banking

and financial services, including investment banking and private banking.

The Complainant has

offices in numerous countries all over the world. The Complainant also operates

websites at: <jpmorganchase.com>; <chase.com>; and <jpmorgan.com>.

On September 12, 2000,

news services reported the imminent merger of Chase and J. P. Morgan

banks (Complaint Annex H). Also on September 12, 2000, Respondent registered

the following eight (8) disputed domain names: <chasemorganbank.com>,

<chasemorgandirect.com>, <chasemorganonline.com>, <chasemorgan.org>,

<chasemorgancapital.com>, <chasemorgancorp.com>, <chasemorganmarkets.com>,

and <labchasemorgan.com> (Complaint Annex C).

The merger was officially

announced on September 13, 2000, (Complaint Annex H). Also on September

13, 2000, the Respondent registered the following three (3) domain names:

<jpmorganchasecorp.com>, <morganchasecapital.com> and <morganchasedirect.com>

(Complaint Annex C).

The Complainant wrote several

letters to the Respondent during September and October 2000, alleging trademark

infringement and demanding the Respondent transfer all eleven (11) disputed

domain names to the Complainant (Complaint Annex I). The Respondent did not

reply. The Complainant now is seeking transfer of the domain names in this proceeding.

5. The Parties' Contentions

Complainant's Contentions:

- Respondent's

use of the famous Chase and J.P. Morgan marks is unauthorized.

- The Chase and

J.P. Morgan marks are famous.

- The Respondent

has parked the eleven (11) domain names and they are not being used

in any active website.

- Respondent

registered the eleven (11) disputed names in order to keep the Complainant

from doing so and the Respondent has engaged in a pattern of this

behavior.

Respondent's Contentions

The Respondent is in

default in this proceeding and thus did not submit any contentions.

6. Discussion and Findings

In order for the Complainant

to prevail and have the disputed domain names transferred to it, Complainant

must prove the following (the Policy, paragraph 4(a)(i-iii):

- the domain

name is identical or confusingly similar to a trademark or service

mark in which the Complainant has rights; and

- the Respondent

has no rights or legitimate interests in respect of the domain name;

and

- the domain name

was registered and is being used in bad faith

Identical or Confusingly

Similar

The Complainant has

produced an exemplary copy of its trade- service mark no. 1,521,765,

"Chase", for use in connection with its banking and financial services.

This Chase mark is registered on the principal register of the United States

of America Patent and Trademark Office, dated January 24, 1989, in int.

classes 16 and 36 for financial reports and bulletins and for banking services

(Complaint Annex E).

On December 19, 1989,

the Complainant's predecessor registered the trade- service mark "J.P. Morgan",

no. 1, 572, 322, in int. classes 35 and 36 for business management and brokerage

services etc. on the principal register of the United States of America

Patent and Trademark Office (Annex F). The Complainant has also registered

the J.P. Morgan and Chase marks in many other countries all over the

world (Complaint, Annex G).

All the eleven (11)

disputed domain names contain the Complainants' service marks "Chase" and

"J.P. Morgan", either alone or paired with generic terms associated with

banks and financial services, particularly in the internet context (e.g.,

<chasemorganbank.com>, <chasemorganonline.com>, <chasemorgancapital.com>).

The pairing of the Complainant's famous marks with generic financial services

terms does not create new distinct marks but confusingly similar marks.

The Panel thus finds

that the eleven (11) disputed domain names are at best confusingly similar

to the Complainant's famous service marks.

Legitimate Rights or

Interests

The Complainant has

stated categorically that the Respondent is an "unauthorized" user of the

Complainant's service marks in the disputed domain names (the Complaint

p. 10). Being in default, the Respondent has not seen fit to inform

the Panel of any legitimate rights or interests it may have in the disputed

domain names (the Policy at 4c). Therefore, the Panel finds the Respondent

has no legitimate rights or interests in the disputed domain names.

Registered and Used

in Bad Faith

The Complainant essentially

makes one argument under the Policy that the Respondent registered and is

using the eleven (11) disputed domain names in bad faith. This is that the

Respondent registered the domain names to prevent the Complainant from registering

them, and that the Respondent has engaged in a pattern of such conduct in

contravention of the Policy at 4 b(ii). Certainly, it appears to the Panel

that all the disputed domain names would be important to the Complainant

in the conduct of its banking and financial businesses. The Respondent systematically

chose and registered the domain names with the Complainant's needs in mind,

and heedless of the fact that it was infringing famous marks.

In addition, the Respondent

also timed its registrations of the domain names it calculated would be

important to the Complainant for the very moment the Complainant's predecessors

announced their intention to merge Chase Bank and J. P. Morgan to create

the Complainant, J.P. Morgan Chase & Co. The merger was bruited for

some time before it was formally announced on September 13, 2000, and the

Respondent registered all the disputed domain names on September 12 and

13, 2000. (see Vivendi S.A., the Seagram Company Ltd., Universal Studios,

Inc., et al. v. CPIC Net, ICANN/WIPO Case No. D2000-0685, September

12, 2000; and A. P. Moller v. Webb Society, ICANN/WIPO Case No. D2000-0135,

April 15, 2000, where the Respondent registered a domain name because a

merger between Maersk and Sea Land was rumored.)

The very fact that

the Respondent registered eleven (11) combinations of the Complainant's

service marks is enough to constitute a pattern under the Policy (see Vivendi

supra). Moreover, the Complainant also has shown that among the numerous

other domain names the Respondent has registered are such famous trademarks

as Cadbury, Snapple, and Verizon (Complaint, Annex A). This reinforces the

obviousness of the pattern of the Respondent's conduct in violation of the

Policy. (And see Yahoo! Inc. v. Eitan Zviely, et al., ICANN/WIPO

Case No. D2000-0273, June 14, 2000, where multiple registered variations

of the Complainant's mark constituted a pattern under the Policy)

The Panel finds the

Respondent has registered and used the disputed domain names in bad faith.

7. Decision

The Panel has found

the Respondent registered eleven (11) disputed domain names that are at

best confusingly similar to the Complainant's famous service marks Chase

and J.P. Morgan. The Panel also has found the Respondent has no legitimate

rights or interests in the disputed domain names and registered and was

using them in bad faith.

Therefore, in accord

with ICANN Policy paragraph 4(i) and Rule 15, the Panel orders that the

eleven (11) disputed domain names, <chasemorganbank.com>, <chasemorgancapital.com>,

<chasemorgancorp.com>, <chasemorgandirect.com>, <chasemorganmarkets.com>,

<chasemorganonline.com>, <labchasemorgan.com>, <jpmorganchasecorp.com>,

<morganchasecapital.com>, <morganchasedirect.com>, <chasemorgan.org>

be transferred from the Respondent, CPIC NET, to the Complainant, J.P. Morgan

Chase & Co.

Dennis A.

Foster

Sole Panelist

Dated: May

22, 2001

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