The Complainant is Juniper Networks, Inc. of Sunnyvale, California, United States of America, represented by Melbourne IT DBS Inc., United States of America.
The Respondent is Kenneth Crossman of Oak Park, Illinois, United States of America.
The disputed Domain Name <juniper.tv> is registered with Mesh Digital Limited.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 30, 2010. On July 1, 2010, the Center transmitted by email to Mesh Digital Limited a request for registrar verification in connection with the Domain Name. On July 2, 2010, Mesh Digital Limited transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 7, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 27, 2010. The Response was filed with the Center on July 27, 2010.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on August 12, 2010. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Complainant is a Delaware business corporation headquartered in Sunnyvale, California, United States of America. Established in 1996, the Complainant has become a leading global supplier of Internet Protocol network products and services, particularly to corporate, government, and institutional customers. The Complainant employs a workforce of more than 7000, with offices in some 50 countries, and reports 2009 revenues of more than USD 3.3 billion. The Complainant’s stock has been publicly traded on the NASDAQ stock exchange since 1999. The Complaint attaches evidence of numerous instances of industry awards and publicity for the Complainant’s products. Since 1996, the Complainant has operated a website at “www.juniper.net”.
The Complainant holds registered trademarks for JUNIPER NETWORKS and for design marks incorporating those words. The marks are used on the Complainant’s website and in its advertising and packaging. Relevant registrations include United States Trademark Registration No. 2255921 (JUNIPER NETWORKS, registered June 22, 1999) and No. 2761776 (JUNIPER NETWORKS plus design, registered September 9, 2003). The Complainant also claims JUNIPER as a registered mark, but the database operated by the United States Patent and Trademark Office (USPTO) indicates that this mark is the subject of a pending application for registration.
The Respondent, a writer and licensed psychotherapist in private practice in the Chicago area, registered the Domain Name on March 21, 2010. The Respondent says that he has registered several “generic” domain names in the “.tv” top-level domain, including <atmosphere.tv>, <cloudnine.tv>, <lightbulb.tv>, <regions.tv>, <lynx.tv>, and <nada.tv>, all for their generic value. The Respondent says he plans to use the Domain Name for “an interactive multimedia Web site involving the development of a ‘community novel’ based on characters and happenings in and around the fictional town of Juniper, California.”
Meanwhile, according to the Respondent, the Domain Name was “parked” by the Registrar on a pay-per-click (PPC) website created by the Registrar. From printouts furnished with the Complaint, it appears that the PPC website associated with the Domain Name displayed sponsored links to websites operated by a wide variety of commercial enterprises, prominently including the Complainant and a credit card issuer that uses the domain name <juniper.com>. The Domain Name does not currently resolve to a website.
The Complainant made at least two attempts to contact the Respondent by email, seeking the transfer of the Domain Name in exchange for reimbursement of the Respondent’s registration expenses. The Respondent acknowledges that he did not reply to these communications, as he did not recognize the sender.
The Complainant asserts that the Domain Name is identical or confusingly similar to registered JUNIPER and JUNIPER NETWORKS marks and that the Respondent has no rights or legitimate interests in the Domain Name.
The Complainant argues that the Domain Name was registered and used for a PPC advertising website in bad faith, in an attempt to mislead Internet users for commercial gain. The Complainant also infers bad faith from the Respondent’s registration of a domain name identical or confusingly similar to a long-established and registered mark, and from the Respondent’s failure to reply to the Complainant’s communications.
The Respondent argues that “juniper” is a generic, “highly brandable” English word used in various combinations with numerous commercial products and services and appearing in at least 49 United States registered trademarks.
The Respondent argues that his planned use of the Domain Name for a “community novel” constitutes a legitimate, noncommercial fair use.
The Respondent denies prior knowledge of the Complainant and its marks, and accordingly denies any intention to mislead Internet users for commercial gain. The Respondent asserts that the PPC website formerly associated with the Domain Name was merely a parking page created and displayed by the Registrar, for which the Respondent received no compensation.
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules:
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
It is troubling that the Complaint repeatedly claims JUNIPER as a registered trademark. The Complainant applied for such registration with the USPTO in 2008, but it does not appear from the record or from the USPTO database that this trademark has in fact been registered. A mere pending trademark application does not of itself provide a basis for actionable rights under the policy. The record also does not include adequate evidence to establish that the English word “juniper” has acquired a secondary meaning associated with the Complainant’s products and services sufficient to achieve common-law protection in the United States, where the Respondent is located. The Panel does not agree with the Complainant, therefore, that the Domain Name is identical to a mark held by the Complainant.
However, the Domain Name is similar to the Complainant’s registered JUNIPER NETWORKS mark. The most distinctive element, “juniper”, is identical, and the Domain Name is similar to the mark visually, phonetically, and in its overall impression. Hence, the Panel concludes that the Domain Name is confusingly similar to the Complainant’s JUNIPER NETWORKS mark for purposes of the first element of a complaint under the Policy.
The Policy, paragraph 4(c), provides a non-exhaustive list of circumstances in which the Respondent could demonstrate rights or legitimate interests in the Domain Name, including the following:
“(i) before any notice to you 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 (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 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 Respondent says he plans to launch an interactive “community novel”, which he claims as a legitimate noncommercial or fair use of the Domain Name, with no intent to mislead consumers for commercial gain or tarnish the Complainant’s marks. However, the Respondent furnishes no evidence of such noncommercial use to date. Nor does he provide evidence of demonstrable preparations to make a legitimate use of the Domain Name relevant to its generic value.
“Juniper” is a dictionary word in English, denoting a kind of evergreen tree or shrub, but the website to which the Domain Name formerly resolved did not reflect this generic meaning of the word or any discernable metaphorical use of the word. Instead, the PPC landing page associated with the Domain Name advertised a wide variety of goods and services, most prominently those of the Complainant and others in the Internet Protocol networking products and services industries. This is not a “legitimate noncommercial or fair use” of the Domain Name.
The Respondent may well have intentions to use the Domain Name in some generic or metaphorical sense, but these intentions have not been realized to date in a manner that would allow the Respondent to readily demonstrate rights or legitimate interests in the Domain Name. However, given the Panel’s conclusions below on the third element of the Complaint, it is not necessary to rule on the issue of the Respondent’s rights or legitimate interests in the Domain Name.
The Policy, paragraph 4(b), sets out a non-exhaustive list of circumstances evidencing bad faith in the registration and use of a domain name, including the following on which the Complainant implicitly relies:
“(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 or service on your web site or location.”
The Complainant argues that this must have been the case, since its marks were established and registered before the Domain Name was registered and have been publicized in advertising and the media, particularly in articles announcing the Complainant’s product awards and its recent agreement to serve as an OEM (original equipment manufacturer) for systems provided by IBM.
The Respondent denies prior knowledge of the Complainant or its marks. This denial is in the Panel’s assessment plausible, since it appears from the record and from a perusal of the Complainant’s website that the advertising and media references to the Complainant’s marks are predominantly in trade publications and industry websites. By its own account, the Complainant’s customers are chiefly Internet service providers, business enterprises (including 99 of the Global Fortune 100), government agencies, and institutions of higher education. The Respondent is a free-lance writer and licensed psychotherapist, and there is no evidence in the record that his job experience or current business ventures involve high-performance Internet protocol networking devices. Moreover, the Respondent has registered a variety of domain names that appear to be based on dictionary words or phrases in the “.tv” top-level domain.
Nor in this Panel’s assessment does the actual use of the Domain Name reveal a probable intention to trade on the supposed fame of the Complainant’s marks. The website formerly associated with the Domain Name was labeled “Domainmonster.com”, a name associated with the Registrar, and its content was consistent with the frequent registrar practice of parking a newly registered domain name and using an automated ad server to display PPC links until the user makes some other use of the domain name.
Of course, this practice (even if it does not entail compensation to the registrant) does not immunize the registrant from liability under trademark law or excuse the registrant from meeting its obligations under the domain name registration agreement, including this provision:
“By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that . . . (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) you are not registering the domain name for an unlawful purpose; and (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else’s rights.”
See Hoffmann-La Roche Inc. v. Alan Truskowski, WIPO Case No. D2006-1606.
Here, the parking website formerly associated with the Domain Name was not focused on the Complainant’s or competing products, although both could be found through the layers of advertising links. The fact that ad server software would logically associate the Complainant (as well as other commercial enterprises) with the word “juniper” does not prove that the Respondent likely had the Complainant’s mark in contemplation when he registered the Domain Name, which is what would be required to establish bad faith in the registration and use of the Domain Name.
It would be easier to infer such an illicit intention if the Complainant’s mark were not comprised of dictionary words. In Hoffmann-LaRoche, supra, the automated ad server used for a parking website produced links for the complainant’s and competing products, which the respondent probably intended in registering a domain name including the complainant’s highly distinctive and fanciful XENICAL mark. Here, the Domain Name is a dictionary word, and the Complainant has not demonstrated that its mark is famous in a broad consumer market or was otherwise likely to come to the attention of the Respondent. Therefore, the Panel cannot conclude that the Respondent is prevaricating and, more probably than not, intended to mislead Internet users by a false implication of association with the Complainant.
The Panel finds that the Complainant has not on the record in the present Policy proceedings established the third element of the Complaint.
For all the foregoing reasons, the Complaint is denied.
W. Scott Blackmer
Sole Panelist
Dated: August 22, 2010