national arbitration forum

 

DECISION

 

Brainetics, LLC v. lin fs

Claim Number: FA1009001346155

 

PARTIES

Complainant is Brainetics, LLC ("Complainant"), represented by Matthew K. Organ, Illinois, USA.  Respondent is lin fs ("Respondent"), China.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <brainetics-dvd.com> and <brainetics-dvd.net>, registered with Godaddy.com, Inc.

 

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.

 

Terry F. Peppard as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on September 14, 2010; the National Arbitration Forum received payment on September 14, 2010.

 

On September 14, 2010 and September 15, 2010, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <brainetics-dvd.com> and <brainetics-dvd.net> domain names are registered with Godaddy.com, Inc. and that Respondent is the current registrant of the names.  Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On September 23, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 13, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@brainetics-dvd.com and postmaster@brainetics-dvd.net.  Also on September 23, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On October 22, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.

 

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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

Complainant is a manufacturer and distributor of mathematics instructional books and videos as well as other educational materials. 

 

Complainant owns a trademark registration with the United States Patent and Trademark Office ("USPTO") for its BRAINETICS mark (Reg. No. 3,486,052, issued August 12, 2008). 

 

Respondent registered the <brainetics-dvd.com> and <brainetics-dvd.net> domain names on May 11, 2010. 

 

Respondent’s domain names resolve to a website that markets educational products competing with the business of Complainant.

 

Respondent’s <brainetics-dvd.com> and <brainetics-dvd.net> domain names are confusingly similar to Complainant’s BRAINETICS mark.

 

Respondent is not commonly known by either of the <brainetics-dvd.com> and <brainetics-dvd.net> domain names. 

 

Respondent's use of the BRAINETICS mark on Respondent's webpages is wholly unauthorized. 

 

Respondent does not have any rights to or legitimate interests in the <brainetics-dvd.com> and <brainetics-dvd.net> domain names.

 

Respondent registered and uses the <brainetics-dvd.com> and <brainetics-dvd.net> domain names in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

(1)   the domain names registered by Respondent are confusingly similar to a trademark in which Complainant has rights; and

(2)   Respondent has no rights to or legitimate interests in respect of the domain names; and

(3)   the domain names were registered and are being used by Respondent in bad faith.

 

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."

 

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 a 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:

 

i.         the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

ii.       Respondent has no rights or legitimate interests in respect of the domain name; and

iii.      the domain name has been registered and is being used in bad faith.

 

 

 

 

Identical and/or Confusingly Similar

 

Complainant has established rights in its BRAINETICS mark under Policy ¶ 4(a)(i) by virtue of its trademark registration with the USPTO.  See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007):

 

As the [complainant’s] mark is registered with the USPTO, complainant has met the requirements of Policy ¶ 4(a)(i).

 

Complainant need not own a trademark registration within the country of Respondent’s residence in order to establish rights under Policy ¶ 4(a)(i).  See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for purposes of paragraph 4(a)(i) of the Policy whether a complainant’s mark is registered in a country other than that of a respondent’s place of business).

 

The <brainetics-dvd.com> and <brainetics-dvd.net> domain names are confusingly similar to Complainant’s BRAINETICS mark.  Both of the domain names contain Complainant’s entire BRAINETICS mark in addition to a hyphen, the descriptive term “dvd” (for “digital video disc,” an obvious reference to a component of Complainant’s business) and the generic top-level domain (“gTLD”) “.com” or “.net.”  These additions to Complainant’s mark are not sufficient to distinguish the domain names from the mark under Policy ¶ 4(a)(i), thus rendering the disputed domain names confusingly similar.  See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003):

 

[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).

 

See also Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained a complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”);  further see Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of a 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 to a competing mark).

 

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

 

Rights or Legitimate Interests

 

Complainant has alleged that Respondent does not possess rights to or legitimate interests in the <brainetics-dvd.com> and <brainetics-dvd.net> domain names under Policy ¶ 4(a)(ii).  Complainant is required to produce a prima facie case in support of these allegations.  Once Complainant has produced such a prima facie case, the burden of proof shifts to Respondent to show that it does possess rights to or legitimate interests in the disputed domain names.  See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if a complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”);  see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must first make out a prima facie case that a respondent lacks rights and legitimate interests in a disputed domain name before the burden shifts to that respondent to show that it does have rights or legitimate interests in a domain name). 

 

Complainant has established a prima facie case that Respondent lacks rights to or legitimate interests in the contested <brainetics-dvd.com> and <brainetics-dvd.net> domain names, and Respondent has failed to respond to these proceedings.  We are therefore free to conclude that Respondent lacks rights to or legitimate interests in the disputed domain names.  See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002):

 

[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.

 

See also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000):

 

[Rule 14(b)] expressly provide[s] that the Panel ‘shall draw such inferences’ from the Respondent’s failure to comply with the rules ‘as it considers appropriate. 

 

Nonetheless, we will examine the evidence of record, in light of the criteria set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain names which are cognizable under the Policy. 

 

We begin by noting that Complainant contends, and Respondent does not deny, that Respondent is not commonly known by the <brainetics-dvd.com> and <brainetics-dvd.net> domain names and that Respondent’s use of the BRAINETICS trademark is entirely unauthorized.  Moreover, the WHOIS information for each domain name identifies the registrant only as “lin fs”, which does not resemble the disputed domain names.  On this record, we must conclude that Respondent is not commonly known by the disputed domain names so as to have demonstrated that it has rights to or legitimate interests in the domains under Policy ¶ 4(c)(ii).  See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names where the pertinent WHOIS information, as well as all other information in the record, gave no indication that that respondent was commonly known by the disputed domain names, and where a complainant had not authorized the respondent to register a domain name containing its registered mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information, and where a complainant asserted that it did not authorize or license that respondent’s use of its mark in a domain name).

 

We also observe that Complainant argues, without objection from Respondent, that Respondent is using the disputed domain names to market educational products competing with the business of Complainant.  Such use 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 Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003):

 

Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.

 

See also Or. State Bar v. A Special Day, Inc., FA 99657 (Nat. Arb. Forum Dec. 4, 2001) (“Respondent's advertising of legal services and sale of law-related books under Complainant's name is not a bona fide offering of goods and services because Respondent is using a mark confusingly similar to the Complainant's to sell competing goods.”). 

 

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

 

Registration and Use in Bad Faith

 

Respondent is using the disputed domain names to market educational products to Internet users in competition with the business of Complainant.  Respondent’s diversion of Internet users who are seeking Complainant’s website and products to Respondent’s own competing website is evidence of bad faith registration and use of the contested domain names under Policy ¶ 4(b)(iii).  See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005):

 

Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business.  The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).

 

See also Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that a respondent registered and used the domain name <classicmetalroofing.com> in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to that respondent’s competing website).

 

Respondent uses the disputed domain names to attract Internet users to Respondent’s website by creating a likelihood of confusion as to the possibility of Complainant’s sponsorship of or affiliation with Respondent’s website. This it does for commercial gain.  Respondent’s use of the disputed domain names to redirect Internet users seeking Complainant’s products to Respondent’s competing products is also evidence of bad faith registration and use of the contested domain names under Policy ¶ 4(b)(iv).  See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that a respondent’s use of the <saflock.com> domain name to offer goods competing with a complainant’s illustrates that respondent’s bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv));  see also Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding bad faith pursuant to Policy ¶ 4(b)(iv) because a respondent and a complainant were in the same line of business and that respondent was using a domain name confusingly similar to that complainant’s FITNESS WAREHOUSE mark to attract Internet users to a website resolving from its domain name).

 

For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.

 

Accordingly, it is Ordered that the <brainetics-dvd.com> and <brainetics-dvd.net> domain names be TRANSFERRED forthwith from Respondent to Complainant.

 

 

 

Terry F. Peppard, Panelist

Dated:  October 29, 2010

 

 

 

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