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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Janus Interantional Holding Co. v. Scott Rademacher
Case No: D2002-0201
1. The Parties
Complainant is Janus International Holding Company ("Janus" or "Complainant"),
a Nevada company with its registered place of business at 639 Isbell Road, Suite
390-0, Reno, Nevada 89509, United States of America.
Respondent is Scott Rademacher ("Respondent" or "Rademacher") located at 5635
Gates Landing Road, Virginia Beach, Virginia 23464, United States of America.
2. The Domain Name and Registrar
The domain name at issue is <janus.info> (the "Domain Name"). The
registrar is AAAQ.com, Inc. (the "Registrar") 5400 Vernon Ave., Edina, MN 55436,
United States of America.
3. Procedural History
On March 1, 2002, the WIPO Arbitration and Mediation Center (the "Center")
received hardcopy of the Complaint. On March 6, 2002 the Center sent an
Acknowledgment of Receipt of Complaint to Complainant. On March 7, 2002,
the Center received a copy of the Complaint of Complainant via email.
The Complainant paid the required fee.
On March 7, 2002 after the Center sent a Request for Verification to the Registrar
requesting verification of registration data, the Registrar confirmed, inter
alia, that it is the registrar of the Domain Name and that the Domain Name
is registered in the Respondent's name.
On March 8, 2002, the Center sent a letter to the Complainant that the Complaint
contained deficiencies. On March 14, 2002, the Complainant filed its Amendment
to Complaint via email. On March 19, 2002, the Center received Complainant's
Amendment to Complaint in hardcopy.
The Center verified that the Complaint with Amendment satisfies the formal
requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the
"Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the
"Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution
Policy (the "Supplemental Rules").
On March 20, 2002, the Center sent a Notification of Amended Complaint and
Commencement of Administrative Proceeding to the Respondent together with copies
of the Complaint with Amendment, with a copy to the Complainant. This
notification was sent by the methods required under paragraph 2(a) of the Rules.
On April 11, 2002, the Center advised Respondent that it was in default for
failing to file its Response. No Response has been received.
On April 24, 2002 after the Center received a completed and signed Statement
of Acceptance and Declaration of Impartiality and Independence from Richard
W. Page (the "Sole Panelist"), the Center notified the parties of the appointment
of a single-arbitrator panel consisting of the Sole Panelist.
4. Factual Background
Janus International Holding Company, along with its affiliated and subsidiary
companies (collectively, "Janus"), is a leading provider of financial and investment
services. Established in 1969, Janus has grown to employ approximately 1,500
people and manages approximately $183 billion (as of December 31, 2001) in assets.
With a full family of retail mutual funds and a burgeoning business in separate
accounts and subadvisory relationships.
Janus has registered its JANUS trademark, as well as a wide array of marks
that incorporate the principal JANUS mark, in the United States. As of
the date of this Complaint, Janus owns thirty-seven (37) trademark registrations
in the U.S. for the JANUS trademark and other marks that incorporate the JANUS
mark. These U.S. trademark registrations establish that Janus began using
the JANUS trademark in commerce with respect to investment advisory services
as of February 5, 1970. A list of Complainant's U.S. registrations is
as follows:
Mark
|
Registration Date
|
JANUS
|
August 18, 1998
|
E-JANUS
|
March 27, 2001
|
JANUS VENTURE FUND
|
December 15, 1987
|
JANUS CAPITAL CORPORATION
|
March 24, 1987
|
JANUS FUND
|
December 15, 1987
|
JANUS FLEXIBLE INCOME FUND
|
January 9, 1990
|
JANUS TWENTY FUND
|
April 10, 1990
|
JANUS WORLDWIDE FUND
|
November 10, 1992
|
JANUS GROWTH AND INCOME FUND
|
December 15, 1992
|
JANUS LIFETIME IRA
|
February 22, 1994
|
JANUS GROUP OF MUTUAL FUNDS
|
August 24, 1993
|
JANUS QUOTELINE
|
February 13, 1996
|
JANUS CLASSIC ACCOUNT SERVICES
|
December 21, 1993
|
JANUS MERCURY FUND
|
June 14, 1994
|
JANUS FEDERAL TAX-EXEMPT FUND
|
March 29, 1994
|
JANUS RETIREMENT ADVANTAGE
|
December 13, 1994
|
JANUS OVERSEAS FUND
|
November 7, 1995
|
JANUS TAX-EXEMPT MONEY MARKET FUND
|
June 25, 1996
|
JANUS OLYMPUS FUND
|
August 24, 1999
|
JANUS ASPEN SERIES
|
July 23, 1996
|
JANUS ENTERPRISE FUND
|
July 9, 1996
|
JANUS GOVERNMENT MONEY MARKET FUND
|
July 2, 1996
|
JANUS ASSET BUILDER
|
July 9, 1996
|
JANUS MONEY MARKET FUND
|
June 25, 1996
|
JANUS EQUITY INCOME FUND
|
July 7, 1998
|
JANUS HIGH-YIELD FUND
|
July 7, 1998
|
JANUS SPECIAL SITUATIONS FUND
|
November 24, 1998
|
JANUS XPRESSLINE
|
May 16, 2000
|
JANUS GLOBAL TECHNOLOGY FUND
|
January 16, 2001
|
JANUS STRATEGIC VALUE FUND
|
July 3, 2001
|
JANUS SHORT-TERM BOND FUND
|
November 7, 2000
|
JANUS INSTITUTIONAL SERVICES
|
November 7, 2000
|
JANUS INTERMEDIATE GOVERNMENT SECURITIES FUND
|
December 5, 2000
|
JANUS BALANCED FUND
|
November 28, 2000
|
JANUS FUNDS
|
November 20, 2001
|
JANUS EQUITY FUNDS
|
November 27, 2001
|
JANUS INVESTMENT FUNDS
|
November 20, 2001
|
Janus has also registered its JANUS trademark and other marks that incorporate
the JANUS mark in the following jurisdictions: Argentina, Australia, Benelux,
Brazil, Canada, Chile, the European Community, France, Germany, Hong Kong, SAR
of China, Japan, Mexico, the People's Republic of China, the Republic of Korea,
Singapore, Switzerland, Taiwan, Province of China, the United Kingdom and Venezuela.
Janus makes active and wide-ranging use of the JANUS mark on the internet,
including use of the JANUS mark in association with the Janus Internet website
accessed at the URL <www.janus.com>. Janus registered the Domain
Name <janus.com> on January 19, 2000.
Respondent registered the domain name <janus.info> on September 22, 2001.
5. Parties'Contentions
A. Complainant's contentions
i. Complainant contends that it has numerous registrations of the trademark
JANUS and that its trademark registrations are valid and subsisting.
ii. Complainant argues that the Domain Name is identical with or confusingly
similar to the JANUS mark, pursuant to Paragraph 4(a)(i) of the Policy, because
it wholly incorporates the trademark JANUS with the addition of generic terms.
iii. Complainant contends that Respondent has no rights or legitimate interests
in the Domain Name, pursuant to Paragraph 4(a)(ii), and that Respondent has
failed to demonstrate any of the three circumstances that constitute rights
to or legitimate interests in the Domain Name.
Complainant alleges that prior to notice to Respondent by Complainant of the
disputed rights in the Domain Name, there is no evidence of Respondent's use
of, or demonstrable preparations to use, the phrase "JANUS" or any phrase similar
thereto, or the Domain Name or a name corresponding to the Domain Name in connection
with a bona fide offering of goods or services.
Complainant further alleges that there is no evidence that Respondent has been
commonly known by the mark "JANUS" or any mark similar thereto. There
is no evidence that Respondent is making legitimate non-commercial or fair use
of the Domain Name.
Complainant states that in its letter of December 10, 2001 to Respondent, Complainant
demanded that Respondent cease and desist from any further use of the Domain
Name or the JANUS trademark. Respondent replied by stating that it registered
the Domain Name for "personal use under the two-face Ў®god' significance."
Despite Respondent's contention that it registered the Domain Name for personal
use, Respondent has not made and is not making any legitimate non-commercial
or fair use of the word "Janus" or the Domain Name. To the contrary, and
as discussed below, Respondent's only use of the Domain Name has been to offer
to sell the Domain Name to Complainant. Therefore, Respondent has failed
to provide any evidence of its right or legitimate interest in respect of the
JANUS mark or the Domain Name.
iv. Complainant contends that Respondent registered and is using the Domain
Names in bad faith in violation of Paragraph 4(a)(iii).
Complainant further contends that in its correspondence to Complainant of November 5,
2001, Respondent offered to sell the Domain Name to Respondent. As stated
in Respondent's offer letter to Complainant: "I have personally acquired
"janus.info". Therefore, I have approached your company and others to
offer the first opportunity for purchasing this URL." By offering to sell
the Domain Name to Complainant, as well as other parties, Respondent clearly
intends to create a competitive bidding situation with respect to the Domain
Name for the purposes of maximizing Respondent's resale price for the Domain
Name. Complainant states that Respondent has registered the Domain Name,
which incorporates an indisputably famous trademark, for the primary purpose
of selling, renting, or otherwise transferring the Domain Name registration
for valuable consideration in excess of Respondent's out-of-pocket costs directly
related to the Domain Name.
Complainant further contends that its first use of the JANUS mark and the dates
of Complainant's numerous registrations for the JANUS mark are all prior to
Respondent's registration of the Domain Name. Complainant asserts that
Respondent had actual and/or constructive knowledge of the JANUS mark.
B. Respondent's contentions
i. Respondent does not dispute that the Complainant has registrations of the
JANUS mark.
ii. Respondent does not dispute that the Domain Name is identical with or confusingly
similar to the JANUS mark.
iii. Respondent does not dispute that he has no rights or legitimate interests
in the Domain Name.
iv. Respondent does not dispute that he registered and used the Domain Name
in bad faith.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Sole Panelist as to the principles
the Sole Panelist is to use in determining the dispute: "A Panel shall
decide a complaint on the basis of the statements and documents submitted in
accordance with the Policy, these Rules, and any rules and principles of law
that it deems applicable."
Because both the Complainant and Respondent are domiciled in the United States
and United States courts have recent experience with similar disputes, to the
extent that it would assist the Panel in determining whether the Complainant
has met its burden as established by Paragraph 4(a) of the Policy, the Panel
shall look to rules and principles of law set out in decisions of the courts
of the United States. (Tribeca Film
Center, Inc. v. Lorenzo Brusasco-Mackenzie, WIPO
Case No. D2000-1772, April. 10, 2001, footnote n. 3).
Even though Respondent has failed to file a Response or to contest Complainant's
assertions, the Sole Panelist will review the evidence proffered by Complainant
to verify that the essential elements of the claims are met.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of
the following:
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;
and,
ii) that the Respondent has no rights or legitimate interests in respect of
the domain name; and,
iii) that the domain name has been registered and is being used in bad faith.
Enforceable Trademark Rights
Complainant contends that it has numerous registrations of the trademark JANUS
and that its trademark registrations are valid and subsisting. Complainant's
trademark registrations serve as prima facie evidence of its ownership and the validity of the JANUS
mark. 15 U.S.C. § 1115. Complainant registrations appear to be incontestable
and conclusive evidence of its ownership of the mark and exclusive right to
use the mark in connection with the stated goods or services. 15 U.S.C.
§§ 1065 and 1115(b).
Panel decisions have held that registration of a mark is prima
facie evidence of validity, which creates a rebuttable presumption that
the mark is inherently distinctive. Respondent has the burden of refuting
this assumption. See, e.g., EAuto,
L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO
Case No. D2000-0047. Respondent has failed to contest Complainant's
assertions regarding its trademark rights. Therefore, the Sole Panelist
finds that Complainant, for purposes of this proceeding, has enforceable rights
in the trademark.
Identity or Confusing Similarity
Complainant further contends that the Domain Name is identical with and confusingly
similar to the trademark pursuant to the Policy paragraph 4(a)(i), because it
wholly incorporates the trademark JANUS with the addition of generic or merely
descriptive terms.
As numerous courts and prior ICANN panels have recognized, the incorporation
of a trademark in its entirety is sufficient to establish that a domain name
is identical or confusingly similar to the complainant's registered mark.
See Paccar Inc. v. Telescan Technologies,
L.L.C., 115 F. Supp. 772 (E.D. Mich. 2000) (finding that <peterbuilttrucks.com>,
<kenworthtrucks.com> and similar domain names are not appreciably different
from the trademarks PETERBUILT and KENWORTH); Quixar
Investments Inc. v. Dennis Hoffman, WIPO
Case No. D2000-0253, May 29, 2000, (finding that QUIXTAR and <quixtarmortgage.com>
are legally identical). The
addition of other terms in the domain name does not affect a finding that the
domain name is identical or confusingly similar to the complainant's registered
trademark.
The Sole Panelist notes that the entirety of the mark JANUS is included in
the Domain Name. The addition of the phrases ".com" or ".info" are non-distinctive
because they are gTLD's required for registration of a domain name. Respondent's
addition of the gTLD ".info" is non-distinctive because it is required for registration
of the Domain Name.
Therefore, the Sole Panelist finds that the Domain Name is confusingly similar
to the JANUS mark pursuant to the Policy paragraph 4(a)(i).
Rights or Legitimate Interests
Complainant contends that Respondent has no rights or legitimate interest in
the Domain Names pursuant to the Policy paragraph 4(a)(ii).
Paragraph 4(a)(ii) requires the Complainant to prove that the Respondent has
no rights to or legitimate interests in the Domain Name. Once a Complainant
establishes a prima facie showing
that none of the three circumstances establishing legitimate interests or rights
apply, the burden of production on this factor shifts to the Respondent to rebut
the showing. The burden of proof, however, remains with Complainant to
prove each of the three elements of Paragraph 4(a). (See
Document Technologies, Inc. v. International Electronic Communications, Inc.,
WIPO Case No. D2000-0270, June 6, 2000).
Respondent has no relationship with or permission from Complainant for the
use of the JANUS mark.
The Policy paragraph 4(c) allows three nonexclusive methods for the Sole Panelist
to conclude that Respondent has rights or a legitimate interest in the Domain
Name:
(i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have
been commonly known by the domain name, even if you have acquired no trademark
or service mark rights; or
(iii) you [Respondent] are 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.
The Complainant has sustained its burden of coming forward with proof that
the Respondent lacks rights to or legitimate interests in the Domain Names.
Respondent has not provided any evidence that the use of the Domain Name meets
the elements for any of the nonexclusive methods provided for in the Policy
paragraph 4(c). Therefore, the Sole Panelist finds that Respondent has
no rights or legitimate interest in the Domain Name pursuant to the Policy paragraph
4(a)(ii).
Bad Faith
Complainant contends that Respondent registered and is using the Domain Name
in bad faith in violation of the Policy paragraph 4(a)(iii).
The Policy paragraph 4(b) sets forth four nonexclusive criteria for Complainant
to show bad faith registration and use of domain names:
(i) circumstances indicating that you have registered or you have 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) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting
the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract,
for commercial gain, Internet users to your 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 your web site or location
or of a product.
Complainant asserts that Respondent offered to sell the Domain Name to Complainant.
By offering to sell the Domain Name to Complainant, as well as other parties,
Respondent demonstrated that his primary intent to create a competitive bidding
situation with respect to the Domain Name for the purposes of maximizing Respondent's
resale price for the Domain Name. Respondent has not contested the Complainant's
assertions regarding bad faith.
The uncontested proof adduced by Complainant is convincing to the Sole Panelist.
Therefore, the Sole Panelist finds that Complainant has shown the necessary
elements of bad faith under the Policy paragraph 4(b)(i) and that Respondent
registered and used the Domain Name in bad faith pursuant to the Policy paragraph
4(a)(iii).
7. Decision
The Sole Panelist concludes (a) that the Domain Name <janus.info> is
identical with and confusingly similar to Complainant's registered JANUS mark,
(b) that Respondent has no rights or legitimate interest in the Domain Name
and (c) that Respondent registered and used the Domain Name in bad faith.
Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the
Sole Panelist orders that the Domain Name be cancelled.
Richard W. Page
Sole Panelist
Dated: March 5, 2002