Briefing.com, Inc. v. ROIQuest.com SPRL
Claim Number: FA0906001267236
Complainant is Briefing.com,
Inc. (“Complainant”), represented by Melise
R. Blakeslee, of McDermott Will & Emery LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <briefing.mobi>, registered with GoDaddy.com.
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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 9, 2009; the National Arbitration Forum received a hard copy of the Complaint on June 10, 2009.
On June 9, 2009, GoDaddy.com confirmed by e-mail to the National Arbitration Forum that the <briefing.mobi> domain name is registered with GoDaddy.com and that Respondent is the current registrant of the name. GoDaddy.com has verified that Respondent is bound by the GoDaddy.com 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 June 11, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 1, 2009 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@briefing.mobi by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 7, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <briefing.mobi> domain name is confusingly similar to Complainant’s BRIEFING.COM mark.
2. Respondent does not have any rights or legitimate interests in the <briefing.mobi> domain name.
3. Respondent registered and used the <briefing.mobi> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Briefing.com, Inc., and its
predecessors-in-interest have used the BRIEFING.COM mark since at least as
early as September 1, 1995. Complainant
uses its BRIEFING.COM mark in connection with the provision of independent,
live market analysis of
Respondent registered the <briefing.mobi>
domain name on September 26, 2006. The
disputed domain name resolves to a website featuring click-through links that
promote other commercial websites, many of which offer services that compete
with Complainant’s services. The titles
of the various third-party links include “Stock Market,” “Finance,” “Stock
Market Investing,” and “News,” all topics for which Complainant provides
information under its BRIEFING.COM mark.
On February 23, 2009, Complainant emailed Respondent and expressed
interest in possibly purchasing the <briefing.mobi> domain
name. On March 6, 2009, Respondent
replied and quoted its asking price as “€13,500.00 Euro + 3% Sedo.com
fee.” Using the exchange rate as of May
8, 2009, the asking price was approximately equivalent to $18,399 in
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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
Complainant does not posses a trademark registration for the BRIEFING.COM mark. However, if Complainant can demonstrate adequate common law rights in the mark, this is sufficient for the purposes of a Policy ¶ 4(a)(i) analysis. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”).
Complainant contends that its predecessor-in-interest began using its BRIEFING.COM mark in commerce at least as early as September 1, 1995, and since that time the mark has been used extensively to promote financial market services. Since 1995, Complainant has acquired more than 20,000 subscribers worldwide, all of which pay a fee in order to receive Complainant’s latest market analysis information. In 2008, Complainant grossed more than $10 million in revenue in connection with the BRIEFING.COM mark through subscriptions and partnership arrangements. Complainant has partnered with thirty-eight financial corporations, including Yahoo! Finance, Charles Schwab, E*TRADE, and MSN Money, which are licensed to disseminate Complainant’s financial analysis information. Complainant contends that it has acquired substantial prestige and goodwill in the financial market industry based on its quality market analysis and reliable subscription services. Thus, Complainant contends that its BRIEFING.COM mark has acquired secondary meaning sufficient to establish common law rights in the mark. Based on this information, and the continuous and exclusive use of the BRIEFING.COM mark since 1995, the Panel concludes that Complainant has established common law rights in the BRIEFING.COM mark pursuant to Policy ¶ 4(a)(i). See Quality Custom Cabinetry, Inc. v. Cabinet Wholesalers, Inc., FA 115349 (Nat. Arb. Forum Sept. 7, 2002) (finding that the complainant established common law rights in the mark through continuous use of the mark since 1995 for the purpose of Policy ¶ 4(a)(i)); see also BroadcastAmerica.com, Inc. v. Quo, DTV2000-0001 (WIPO Oct. 4, 2000) (finding that the complainant has common law rights in BROADCASTAMERICA.COM, given extensive use of that mark to identify the complainant as the source of broadcast services over the Internet, and evidence that there is wide recognition with the BROADCASTAMERICA.COM mark among Internet users as to the source of broadcast services).
Respondent’s <briefing.mobi> domain name contains the distinctive portion of Complainant’s BRIEFING.COM mark with the substitution of the generic top-level domain (“gTLD”) “.com” element for the alternate gTLD “.mobi.” The Panel finds that the substitution of generic top-level domains in a mark is insufficient to distinguish the disputed domain name from Complainant’s mark. Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s BRIEFING.COM mark pursuant to Policy ¶ 4(a)(i). See Starkey v. Bradley, FA 874575 (Nat. Arb. Forum Feb. 12, 2007) (“The suffix .mobi should be treated the same way as .com and should be ignored when comparing the mark and the disputed domain name.”); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the addition of “.mobi” was a functional change and thus the <gwbakeries.mobi> domain name was identical to the GW BAKERIES mark under Policy ¶ 4(a)(i)).
Complainant has satisfied Policy ¶ 4(a)(i).
Pursuant to Policy ¶ 4(a)(ii), Complainant must first establish a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name. If the Panel finds that Complainant’s allegations establish such a prima facie case, the burden shifts to Respondent to show that it does indeed have rights or legitimate interests in the disputed domain name pursuant to the guidelines in Policy ¶ 4(c). The Panel finds that Complainant’s allegations are sufficient to establish a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). Since no response was submitted in this case, the Panel may presume that Respondent has no rights or legitimate interests in the disputed domain name. However, the Panel will still examine the record in consideration of the factors listed in Policy ¶ 4(c). See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see also 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).”).
Complainant contends that Respondent is not commonly known by the <briefing.mobi> domain name under Policy ¶ 4(c)(ii). The WHOIS information lists the registrant as “ROIQuest.com SPRL.” The Panel finds no evidence in the record suggesting that Respondent is commonly known by the disputed domain name. Thus, the Panel concludes that Respondent is not commonly known by the disputed domain name 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’s <briefing.mobi> domain name
resolves to a website containing click-through links that advertise financial
and stock market businesses in direct competition with Complainant. The Panel concludes that Respondent’s use of
a confusingly similar domain name to direct Internet users to a website
containing links to Complainant’s competitors does not constitute a bona fide offering of goods or services
or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or
(iii), respectively. See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb.
Forum Aug. 30, 2005) (finding that the respondent’s use of the
<expediate.com> domain name to redirect Internet users to a website
featuring links to travel services that competed with the complainant was not a
bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or
a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Wal-Mart Stores, Inc. v.
Power of Choice Holding Co., FA
621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of
domain names confusingly similar to the complainant’s WAL-MART mark to divert
Internet users seeking the complainant’s goods and services to websites
competing with the complainant did not constitute 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)).
Furthermore, Complainant contends that Respondent’s willingness to sell the disputed domain name to Complainant and the general public is evidence that Respondent lacks rights and legitimate interests in the <briefing.mobi> domain name under Policy ¶ 4(a)(ii). The Panel agrees and finds that Respondent’s intent to sell the disputed domain name for a price that exceeds Respondent’s out-of-pocket costs in connection with the registration of the domain name provides additional evidence that Respondent has no rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (holding that where a respondent makes a “disproportionate” offer to sell its domain name registration to the complainant for more than its out-of-pocket registration costs, there is additional evidence that the respondent lacks rights and legitimate interests in the disputed domain name).
Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent has engaged in bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(i) based on Respondent’s offer to sell the disputed domain name for an amount in excess of Respondent’s registration costs. In communication with Complainant, Respondent offered to sell the disputed domain name for $18,399. Additionally, Respondent listed the <briefing.mobi> domain name for sale to the general public with Sedo.com. The Panel finds that Respondent has engaged in bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(i). See Matmut v. Tweed, D2000-1183 (WIPO Nov. 27, 2000) (finding bad faith under Policy ¶ 4(b)(i) where the respondent stated in communication with the complainant that it would be ready to sell the <matmut.com> domain name registration for $10,000); see also Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (“Respondent is advertising the <bigtow.com> domain name for sale for $5,000. Furthermore, Respondent offered to sell the disputed domain name to Complainant for $4,000. The Panel finds that these offers to sell the disputed domain name constitute bad faith registration and use pursuant to Policy ¶ 4(b)(i).”).
Complainant alleges that Respondent is using a domain name,
which is confusingly similar to Complainant’s BRIEFING.COM mark, to attract
Internet users to a website containing click-through links resolving to websites
that directly compete with Complainant.
Respondent is using the <briefing.mobi> domain name to
divert Internet users to Complainant’s competitors. The Panel finds that such use likely disrupts
Complainant’s business and constitutes bad faith registration and use pursuant
to Policy ¶ 4(b)(iii).
See EBAY, Inc. v. MEOdesigns, D2000-1368 (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 Am.
Airlines, Inc. v.
The website that resolves from the <briefing.mobi> domain name displays links to websites that are in direct competition with Complainant’s business. The Panel infers that Respondent is profiting from such use through click-through fees. Since the disputed domain name is confusingly similar to Complainant’s BRIEFING.COM mark, Internet users are likely to become confused as to Complainant’s affiliation or sponsorship of the disputed domain name and resolving website. Respondent is seeking to profit from this confusion by hosting click-through links on the resolving website. The Panel finds that such use constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website which resolved from the disputed domain name).
Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <briefing.mobi> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: July 20, 2009
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