Berenson & Company, Inc. v. Berenson Corp. c/o Babij, Terry
Claim Number: FA0909001283183
Complainant is Berenson & Company, Inc. (“Complainant”), represented by Scott
D. Brown, of Skadden, Arps, Slate, Meagher & Flom
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <berenson.com> (hereinafter: “the Domain Name”), registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicd.
The undersigned certifies that he 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.
Hugues G. Richard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 4, 2009; the National Arbitration Forum received a hard copy of the Complaint on September 8, 2009.
On September 14, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 5, 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 firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on
The Respondent submitted a response to the Complainant’s additional
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
Complainant, Berenson & Company, Inc., and its predecessors in interest have been providing services using the Berenson name since at least as early as 1990. On the basis of this use, in addition to Complainant’s extensive advertising and promotion of the Berenson Mark, the Berenson name has become internationally famous and associated with Complainant’s business.
Complainant has a federally
registered trademark for the mark BERENSON & COMPANY in the
Respondent’s <berenson.com> domain name is confusingly similar to Complainant’s mark because it incorporates and mimics Complainant’s famous Berenson mark.
Respondent, Berenson Corp. c/o Terry Babij, has no rights or legitimate interests in the Domain Name as upon information and belief the current WHOIS contact information is false and Whois Watchdog is in fact the entity who controls the Domain Name.
Respondent’s name first appeared in the WHOIS database after Complainant served and filed the initial UDRP complaint in this action. Previous registrants of the Domain Name were Whois Watchdog and Jake Berenson c/o Whois Watchdog. Upon information and belief, these changes to the WHOIS contact information are fictitious and intended to provide a potential defense to a UDRP proceeding.
Whois Watchdog has never operated any bona fide or legitimate business under the Domain Name, and is not making a protected non-commercial or fair use of the Domain Name. At the time of the filing of the initial UDRP complaint, the Domain Name resolved to a website displaying links to sponsored listings for services competing with Complainant’s business.
Given the considerable fame and international prominence, Whois Watchdog was undoubtedly aware of the Berenson mark prior to the registration of the Domain Name, and since Whois Watchdog had notice of Complainant’s marks when registering a domain name identical and confusingly similar to those marks, Whois Watchdog has no rights or legitimate interests in the Domain Name.
Complainant has not granted Respondent any license, permission, or authorization by which Respondent could own or use any domain name registrations nearly identical and confusingly similar to Complainant’s mark.
Respondent should be considered as having registered and used the Domain Name in bad faith. Whois Watchdog registered the Domain Name solely to capitalize on Complainant’s goodwill and user errors in searching for Complainant’s legitimate website. Moreover, given the considerable fame of the Berenson mark, Whois Watchdog knew or should have known of that mark at all relevant times. The famousness of the Berenson mark also support the likeliness that Internet users can be induced to believe that the Domain Name connects to a website associated with or sponsored by Complainant.
Finally, there is evidence that Whois Watchdog generates revenue by registering (and potentially reselling) domain names confusingly similar to popular trademarks and that it provided false WHOIS contact information in an attempt to create a potential defense to a UDRP proceeding.
Respondent should be allowed to
retain registration and use of the Domain Name as Respondent has for more than
21 years operated a privately owned business selling decorative hardware to
distributors and other customers and its products are known in the industry by
the name Berenson. Respondent has applied for a federal trademark of the name
“Berenson” in May of 2009. Respondent also has common law trademark rights
based on its continuous use of the Berenson name in commerce in the
There are distinct differences in the goods Respondent sells (decorative hardware) and the services offered by the Complainant (financial services).
Respondent has not acquired the Domain Name for the purpose of selling, renting, or otherwise transferring the Domain Name registration to anyone.
Respondent has lost potential business due to not having the Domain Name as many customers and potential customers have gone to <berenson.com> for the sole purpose of locating Berenson products.
C. Additional Submissions of Complainant
Respondent’s Response fails to demonstrate any legitimate interest in the Domain Name as Respondent’s assertions are not supported with documentary support.
Respondent’s Response also fails to explain the highly suspect manner in which Respondent came to control the Domain Name within hours after Complainant filed its UDRP Complaint.
Respondent erroneously asserts that it
applied for a federal trademark for the name Berenson in May 2009 as the
application is for a logo mark rather than the Berenson name. Furthermore, on
its application, Respondent identified
D. Additional Submissions of Respondent
was given the Domain Name as a gift on
has applied for a federal trademark for the Berenson mark. The application
reflects the timeframe in regard to the use of the particular logo that is the
subject of the application. That specific Berenson logo has been used as early
supporting Respondent's assertions pertaining to its legitimate interests in
the mark are its incorporation in the
Respondent's business channel is very different from Complainant's business channel, and is highly unlikely to cause any confusion in business.
The Panel finds that Complainant has successfully established that the Domain Name is identical or confusingly similar to a Trademark or service mark in which Complainant has rights under Policy 4(a)(i), but failed to establish that Respondent has no rights or legitimate interests in respect of the Domain Name under Policy 4(a)(ii). Having reached this conclusion, the Panel declines to discuss the last element of the Policy.
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.
its rights in the BERENSON & COMPANY mark through its trademark
registration with the United States Patent and Trademark Office (“USPTO”) (Reg.
No. 2,924,546 issued
The Panel also finds that Respondent’s <berenson.com> domain name is confusingly similar to Complainant’s BERENSON & COMPANY mark for the purposes of Policy ¶ 4(a)(i). The Domain Name incorporates the distinctive portion of Complainant’s BERENSON & COMPANY mark with the omission of the ampersand, the omission of the term “company,” and the affixation of the generic top-level domain “.com.” These are minor alterations that do not eliminate the risk of confusion. See Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000) (finding that the domain name <asprey.com> is confusingly similar to the complainant’s ASPREY & GARRARD and MISS ASPREY marks); see also Am. Eagle Outfitters, Inc. v. Admin, FA 473826 (Nat. Arb. Forum June 22, 2005) (finding the <americaneaglestores.com> domain name to be confusingly similar to the complainant’s AMERICAN EAGLE OUTFITTERS mark); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
Having reached the above conclusions, the Panel therefore finds that Complainant met its burden of proof regarding Paragraph 4(a)(i) of the Policy.
As it has been many times decided, the Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Policy ¶ 4(a)(ii). The burden then shifts to Respondent to show that it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interests in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”)
The Panel finds that such a prima facie case was made by Complainant. It asserts that Respondent has no legitimate rights or interests in the Domain Name as upon information and belief the current WHOIS contact information is false and Whois Watchdog is in fact the entity who controls the Domain Name. According to Complainant, recent changes to the WHOIS database are fictitious and intended to provide a potential defense to a UDRP proceeding since Whois Watchdog has never operated any bona fide or legitimate business under the Domain Name, and is not making a protected non-commercial or fair use of the Domain Name.
However, while the Panel finds it surprising that the Domain Name at issue was transferred after an initial complaint was filed, it must rule considering the actual state of affairs. The actual owner of the <berenson.com> domain name is Respondent, Berenson Corp. c/o Babij, Terry, as confirmed by Directi Internet Solutions Pvt. Ltd. d/b/a, and that is the entity that must be considered when analysing whether Respondent has legitimate interests in the Domain Name or not.
It appears from the Respondent’s response to Complainant’s additional submission that the Complainant was the original registrant of the Domain Name and has been for a significant period. It would appear that the Complainant lost ownership of the Domain Name under circumstances unknown to the Panel. The Panel wishes to emphasize that UDRP proceedings are not meant to regain ownership of a domain name that was lost.
Respondent provides evidence that it has been operating as a
privately-owned decorative hardware manufacturing business since at least as
early as 1988 using the Berenson name. The Domain Name currently redirects
Internet users to <berensonhardware.com> which is Respondent’s commercial
website. The Panel finds that such
evidence is sufficient to prove that Respondent is using the Domain Name in
connection with a bona fide offering of goods or services and concludes
that Respondent possesses rights and legitimate interests in the <berenson.com>
domain name under Policy ¶ 4(c)(i). See
Modern Props, Inc. v. Wallis, FA 152458 (Nat. Arb.
Forum June 2, 2003) (finding that the respondent’s operation of a bona fide
business of online prop rentals for over two years was evidence that the
respondent had rights or legitimate interests in the disputed domain name); see also Invicta Watch Co. of Am.,
Inc. v. Santana, FA 727672 (Nat. Arb. Forum
Having reached the above conclusions, the Panel therefore finds that Complainant did not met its burden of proof regarding Paragraph 4(a)(ii) of the Policy.
Having found that
Complainant has not satisfied Policy ¶ 4(a)(ii), the
Panel declines to analyze this last element of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd.,
FA 116765 (Nat. Arb. Forum
Sept. 20, 2002) (finding that because the complainant must prove all three
elements under the Policy, the complainant’s failure to prove one of the
elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard
Protected, FA 836538 (Nat. Arb.
Having failed to establish the elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Hugues G. Richard, Panelist
Dated: October 23, 2009
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