Bainbridge Capital, Inc. v. Chipie, Ltd
Claim Number: FA0808001218630
Complainant is Bainbridge Capital, Inc. (“Complainant”), represented by Gary
J. Nelson, of Christie, Parker & Hale LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bainbridgeconsulting.com>, registered with Nicco Ltd.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Antonina Pakharenko-Anderson as Panelist.
Complainant submitted a Complaint in both English and Russian to the National Arbitration Forum electronically on July 31, 2008; the National Arbitration Forum received a hard copy of the Complaint on August 1, 2008.
On August 14, 2008, Nicco Ltd. confirmed by e-mail to the National Arbitration Forum that the <bainbridgeconsulting.com> domain name is registered with Nicco Ltd. and that the Respondent is the current registrant of the name. Nicco Ltd. has verified that Respondent is bound by the Nicco Ltd. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 4, 2008, a Russian Language Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 24, 2008 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to firstname.lastname@example.org by e-mail.
A timely Response was received on September 24, 2008 in electronic copy only, and was therefore deemed deficient pursuant to ICANN Rule 5 since the Response was also not received in hard copy prior to the Response deadline.
On September 30, 2008, pursuant to the provisions of Supplemental Rule 7(a) of the Policy, Complainant filed an Additional Submission.
On October 22, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Antonina Pakharenko-Anderson as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant alleges that:
1. He is a holder of rights and legitimate interests in the trademarks “BAINBRIDGE” and “BAINBRIDGE CAPITAL” (the BAINBRIDGE Marks).
2. Respondent has registered the domain name which is confusingly similar to the BAINBRIDGE Marks.
3. Respondent has no rights or legitimate interests in the BAINBRIDGE Marks and is not a party authorized to use the Complainant’s BAINBRIDGE Marks.
4. Respondent acted in bad faith when registered the domain name incorporating the Complainant’s BAINBRIDGE Marks.
B. Respondent timely sent his Response to the Complaint. However the Respondent did not fulfill the requirement of sending hard copies by regular post.
C. Additional Submissions
Based on Respondent’s Response sent via e-mail, on September 24, 2008 Complainant filed an Additional Submission producing further arguments in support of the initial allegations.
Respondent filed a Response to the Complaint with the set of documents via e-mail on September 24, 2008. At the same time, Respondent did not send hard copies by regular post as provided by Supplemental Rule 5(a) of the Policy. The Panel reviewed and disregarded Respondent’s deficient submission, which would not have required a change in the rightful outcome of the dispute. See Bank of Am. Corp. v. NW Free Cmty. Access, FA 180704 (Nat. Arb. Forum 30 September 2003) (refusing to accept the respondent’s deficient response that was only submitted in electronic form because it would not have affected the outcome in the matter).
Complainant established in this proceeding that it has rights in the BAINBRIDGE Mark based on registration with the United States Patent and Trademark Office, as well as the fact that the Mark has acquired fame in relation to Complainant due to the use of this Mark for consultancy services for over forty years. Complainant produced sufficient evidences to show registration of the BAINBRIDGE Marks (Reg. No. 2,156,896 issued May 12, 1998, Reg. No. 2,624,155 issued September 24, 2002) for the services of class 35 of the Nice Classification, particularly for business management consulting services and market research services.
Complainant also makes statement that Respondent does not have legitimate interests in the BAINBRIDGE Mark of Complainant and that the <bainbridgeconsulting.com> domain name is confusingly similar with Complainant’s BAINBRIDGE mark. At the same time, Respondent argues against confusing similarity between Complainant’s BAINBRIDGE Marks and the registered domain name.
Complainant also produced evidences establishing that the <bainbridgeconsulting.com> domain name is not used by Respondent.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “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.”
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant produced evidence of its trademark registration with the United States Patent and trademark Offie (“USPTO”) for the BAINBRIDGE mark (Reg. no. 2,156,896, Reg. No. 2,624,155, Application No. 78/844,125).
The Panelist finds that, pursuant to Paragraph 4(a) of the Policy, Complainant duly established its rights to the BAINBRIDGE mark through the Registrations Nos. 2,156,896 and 2,624,155. See Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007) (“Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also Diners Club Int’l Ltd. v. Rulator Corp., FA 967678 (Nat. Arb. Forum June 5, 2007) (further illustrating the above conclusion).
Respondent’s <bainbridgeconsulting.com> domain name contains the BAINBRIDGE mark in its entirety and adds the generic word “consulting” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that this domain name is confusingly similar to Complainant’s BAINBRIDGE mark since the word element “BAINBRIDGE” in this domain is the key element which makes it distinctive, while the remaining two constituents of this domain name are irrelevant as generic. See Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”).
The Panel finds that Complainant has made a prima facie showing that Respondent does not have rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). Thus, the burden of proof shifts to Respondent. See Mason Cos., Inc. v. Chan, FA 1216166 (Nat. Arb. Forum Sept. 4, 2008) (“The Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the [disputed domain] name. Thus, the burden shifts to Respondent to demonstrate that it does have such rights or interests.”).
Taking into consideration that Respondent has never made any active use of the <bainbridgeconsulting.com> domain name; that the provided registration data for this domain name provided by Complainant lack any information on Respondent and its activities, the Panel finds that Respondent is not commonly known by the <bainbridgeconsulting.com> domain name, and therefore lacks rights and legitimate interests pursuant to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Also, taking into account that there are different degrees of distinctiveness, while invented marks are usually more distinctive as compared to marks consisting of common names and concepts, the registration of the BAINBRIDGE mark itself gives grounds to suppose that the mark is registrable, particularly is distinctive, in the scope as registered. Thus, Respondent’s arguments that the mark is not sufficiently distinctive can not be accepted. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 7, 2007) (finding that because the complainant had received a trademark registration for its VANCE mark, the respondent’s argument that the term was generic failed under Policy ¶ 4(a)(i)). Thus, even in this aspect Respondent does not have right or legitimate interest in the disputed domain.
Furthermore, produced evidences make the Panel to believe that Respondent has not used the <bainbridgeconsulting.com> domain name in connection with either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name); see also U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (finding that a respondent had no rights or legitimate interests in a confusingly similar domain name where it had failed to use it).
Based on the circumstances of this case, the Panelist finds analysis of the dispute in light of the provisions of the Policy ¶ 4(b) to be hardly applicable.
At the same time, there is widely established practice evidencing that passive ownership of a domain name which infringes a third party’s trademark rights constitutes a bad faith act in light of Policy ¶ 4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that inactive use of a domain name permits an inference of registration and use in bad faith).
Furthermore, the use by Respondent of Complainant’s mark BAINBRIDGE in combination with the word “consulting” in the disputed domain name is obviously indicative of the Complaint’s field of activities and compels respective associations in consumers, which evidences of bad faith in the activities of Respondent pursuant to Policy ¶ 4(a)(iii). See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO October 4, 2000) (finding that “domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests ‘opportunistic bad faith’”).
Having established all three elements required under the ICANN Policy, the Panelist concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bainbridgeconsulting.com> domain name be TRANSFERRED from Respondent to Complainant.
Antonina Pakharenko-Anderson, Panelist
Dated: November 19, 2008
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