National Arbitration Forum

 

DECISION

 

Brady Corporation v. Texas International Property Associates- NA NA

Claim Number: FA0808001222442

 

PARTIES

Complainant is Brady Corporation (“Complainant”), represented by Lars E. Gulbrandsen, of Quarles & Brady LLP, Wisconsin, USA.  Respondent is Texas International Property Associates- NA NA (“Respondent”), represented by Gary Wayne Tucker, of Law Office of Gary Wayne Tucker, Texas, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <bradyworldwide.com>, <brady-id.com> and <bradyipal.com>, registered with Compana, LLC.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

Bruce E. Meyerson as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on August 28, 2008; the National Arbitration Forum received a hard copy of the Complaint on August 29, 2008.

 

On August 29, 2008, Compana, LLC confirmed by e-mail to the National Arbitration Forum that the <bradyworldwide.com>, <brady-id.com> and <bradyipal.com> domain names are registered with Compana, LLC and that the Respondent is the current registrant of the names.  Compana, LLC has verified that Respondent is bound by the Compana, LLC 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 October 9, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 29, 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 postmaster@bradyworldwide.com, postmaster@brady-id.com and postmaster@bradyipal.com by e-mail.

 

A timely Response was received and determined to be complete on October 29, 2008.

 

Complainant submitted a timely Additional Submission which was received and determined to be complete on November 3, 2008.   Respondent submitted a timely “Objection and Reply to Complainant’s Additional Submission” which was determined to be complete on November 10, 2008.

 

On November 4, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.   Respondent consents to the transfer of <brady-id.com>  and <bradyipal.com>, but objects to the transfer of <bradyworldwide.com>. 

 

PRELIMINARY DISCUSSION REGARDING <brady-id.com>  and <bradyipal.com>

 

            Because Respondent has not contested the transfer of <brady-id.com>  and <bradyipal.com> but instead agrees to transfer these domain names to Complainant, the Panel chooses to forego the traditional UDRP analysis and order the transfer of these domain names.  See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).

PARTIES' REMAINING CONTENTIONS (Including those made in the additional submissions)

 

            A.  Complainant makes the following assertions:

 

1.      Respondent’s <bradyworldwide.com> domain name is confusingly similar to Complainant’s BRADY mark.   Even though the word “Brady” may be a surname, Complainant’s registration of its mark establishes its rights and the addition of the word “worldwide” does not avoid confusion with the mark.

 

2.      Respondent does not have any rights or legitimate interests in the <bradyworldwide.com> domain name.  Respondent is not known by the BRADY mark or Brady Worldwide and offers no services under those names.  The use of the BRADY mark as part of a pay-per-click business does not confer any rights on Respondent.

 

3.      Respondent registered and used the <bradyworldwide.com> domain name in bad faith.  Respondent’s bad faith registration and use is not excused because of Respondent’s inability to control the use of its website.

 

B.     Respondent makes the following assertions with respect to the <bradyworldwide.com> domain name.

 

1.        Although Complainant has right in the mark BRADY, Complainant does not have rights for the trade name “Brady World.”

 

2.        “Brady” is a common surname and that name should not be protected under the UDRP.

 

3.        Respondent’s use of the site to which the domain resolves for click-through services is a legitimate use.  Respondent contracts with another party which connects its own websites to the domain name and Respondent has no control over which advertisers appear on its website.

 

4.        Complainant has not demonstrated that the domain name was registered in bad faith as Respondent had no knowledge of Complainant at the time the domain name was registered.

 

5.        There is no evidence that Respondent has sought to confuse consumers who are seeking out Complainant.

 

6.        Respondent objects to the filing of Complainant’s Additional Submission.[1]

 

FINDINGS

Complainant, Brady Corporation, is a global leader in manufacturing high-performance labels, printers, software, and other related products.  Complainant sells its products under the names “ID Pro” and “ID PAL.”  Complainant was founded in 1914, and owns numerous trademark registrations for the BRADY mark (i.e. Reg. No. 1,070,467 issued Aug. 2, 1977 by the United States Patent and Trademark Office (“USPTO”)).

 

Respondent registered the disputed <bradyworldwide.com> domain name on February 10, 2005.  The disputed domain name resolves to a website that features advertisements for Complainant’s products, as well as the products of Complainant’s competitors.

 

Respondent has been the respondent in other UDRP proceedings in which the disputed domain names have been transferred from Respondent to the respective complainants in those cases.  E.g., United Consumers Club, Inc. v. Tex. Int’l Prop. Assocs., D2007-0987 (WIPO Oct. 5, 2007).

 

DISCUSSION

Paragraph 15(a) of 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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)   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.

 

Identical and/or Confusingly Similar

 

The Panel finds that Complainant’s registration of the BRADY mark with the USPTO constitutes sufficient evidence of Complainant’s rights in the mark in order to grant standing under the UDRP and Policy ¶ 4(a)(i).  See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("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.").

 

The disputed domain name <bradyworldwide.com> includes Complainant’s BRADY mark, along with the generic and descriptive word “worldwide,” and the generic top-level domain “.com.”  Because Complainant’s mark remains the dominant element, the Panel finds that this alteration does not constitute a sufficient distinction with Complainant’s mark.  Therefore, the Panel finds that the domain name <bradyworldwide.com> is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).  See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark); see also Sutton Group Fin. Servs. Ltd. v. Rodger, D2005-0126 (WIPO June 27, 2005) (finding that the domain name <suttonpromo.com> is confusingly similar to the SUTTON mark because the addition of descriptive or non-distinctive elements to the distinctive element in a domain name is immaterial to the analysis under Policy ¶ 4(a)(i)).

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant has alleged that Respondent lacks rights and legitimate interests in <bradyworldwide.com>.  When Complainant sets forth a prima facie case supporting its allegations as it has in the current case, the burden shifts to Respondent to prove that it has rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).

 

Respondent has not produced evidence in the record that allows for the conclusion that it is or ever was commonly known by the domain name <bradyworldwide.com>.   While the WHOIS information lists the registrant of record as “Texas International Property Associates- NA NA,” there is no evidence that Respondent was known by the domain name.  Therefore, the Panel finds that Respondent is not commonly known by the domain name <bradyworldwide.com> under Policy ¶ 4(c)(ii).  See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).

 

Respondent is using the disputed domain name, through a contract with a third party, to resolve to a website that, among other things, displays commercial links to Complainant’s direct competitors, which the Panel presumes profits Respondent via the receipt of referral fees.  The Panel finds that this is not 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 Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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 also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees).

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

Preliminarily, it should be noted that Respondent’s assertion that it had no knowledge of Complainant’s mark before it registered the domain name does not refute Complainant’s assertion of bad faith.  Indeed, Respondent is presumed to have constructive knowledge of Complainant's federally-registered mark.  See Opus Nw. Constr. Corp. v. Opus Realty, FA 318960 (Nat. Arb. Forum Oct. 19 2004).

The Panel finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iii) by disrupting Complainant’s business through the provision of competitive third-party advertisements on the resolving website.  See EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business).

 

Complainant alleges, and the Panel so finds, that Respondent engaged in bad faith registration and use under Policy ¶ 4(b)(iv) by creating a likelihood of confusion as to Complainant’s affiliation or endorsement of Respondent’s website and domain name for commercial gain.  See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (holding that the respondent was taking advantage of the confusing similarity between the <lilpunk.com> domain name and the complainant’s LIL PUNK mark by using the contested domain name to maintain a website with various links to third-party websites unrelated to Complainant, and that such use for the respondent’s own commercial gain demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).

 

Respondent has been the respondent in other UDRP proceedings in which domain names have been transferred from Respondent to the respective complainants in those cases.  E.g., United Consumers Club, Inc. v. Tex. Int’l Prop. Assocs., D2007-0987 (WIPO Oct. 5, 2007).  The Panel therefore finds that Respondent has engaged in a pattern of bad faith registration and use under Policy ¶ 4(b)(ii).  See Armstrong Holdings, Inc. v. JAZ Assocs., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names that infringe upon others’ famous and registered trademarks); see also Australian Stock Exch. v. Community Internet (Australia) Pty Ltd, D2000-1384 (WIPO Nov. 30, 2000) (finding bad faith under Policy ¶ 4(b)(ii) where the respondent registered multiple infringing domain names containing the trademarks or service marks of other widely known Australian businesses).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

 

Because the Respondent consents to the transfer of the domain names <brady-id.com> and <bradyipal.com> it is Ordered that these domain names be TRANSFERRED from Respondent to Complainant.

 

It is further Ordered that, with respect to <bradyworldwide.com>, Complainant has established all three elements required under the ICANN Policy. 

 

Accordingly, it is Ordered that relief shall be GRANTED and the <bradyworldwide.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Bruce E. Meyerson, Panelist
Dated: November 25, 2008

 

 

 

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[1] A number of panels have considered the same argument raised previously by Respondent and have rejected it. E.g., Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 16, 2007).