Brady Corporation v.
Claim Number: FA0808001222442
Complainant is Brady Corporation (“Complainant”), represented by Lars
E. Gulbrandsen, of Quarles & Brady LLP,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bradyworldwide.com>, <brady-id.com> and <bradyipal.com>, registered with Compana, LLC.
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.
Complainant submitted a Complaint to the National Arbitration Forum
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 email@example.com, firstname.lastname@example.org and email@example.com by e-mail.
A timely Response was received and determined to be complete on
Complainant submitted a timely Additional Submission which was received
and determined to be complete on
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
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.
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
Respondent registered the disputed <bradyworldwide.com> domain name on
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.
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.
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.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
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
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.
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
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
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.,
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
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.
Dated: November 25, 2008
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National Arbitration Forum
number of panels have considered the same argument raised
previously by Respondent and have rejected it. E.g., Constellation Wines