Brainetics, LLC v. lin fusheng
Claim Number: FA1012001362744
Complainant is Brainetics, LLC (“Complainant”), represented by Matthew K. Organ of Goldberg Kohn Ltd, Illinois, USA. Respondent is lin fusheng (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <braineticslearning.com>, registered with HiChina Zhicheng Technology Limited.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 9, 2010; the National Arbitration Forum received payment on December 9, 2010. The Complaint was submitted in both Chinese and English.
On December 12, 2010, HiChina Zhicheng Technology Limited confirmed by e-mail to the National Arbitration Forum that the <braineticslearning.com> domain name is registered with HiChina Zhicheng Technology Limited and that Respondent is the current registrant of the name. HiChina Zhicheng Technology Limited has verified that Respondent is bound by the HiChina Zhicheng Technology Limited 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 December 14, 2010, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of January 3, 2011 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@braineticslearning.com. Also on December 14, 2010, the Chinese language 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 January 7, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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" 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.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <braineticslearning.com> domain name is confusingly similar to Complainant’s BRAINETICS mark.
2. Respondent does not have any rights or legitimate interests in the <braineticslearning.com> domain name.
3. Respondent registered and used the <braineticslearning.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Brainetics, LLC, creates, markets, and distributes educational DVDs and other educational materials, including workbooks, manuals, playing cards and flashcards. Complainant owns a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the BRAINETICS mark (Reg. No. 3,486,052 issued August 12, 2008).
Respondent, lin fusheng, registered the <braineticslearning.com> domain name on May 21, 2010. The disputed domain name attempts to pass itself off as Complainant by imitating Complainant’s actual website and is used to acquire consumers’ personal and financial information through a phishing scheme.
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 owns a trademark registration with the USPTO for the BRAINETICS mark (Reg. No. 3,486,052 issued August 12, 2008). The Panel finds that a USPTO trademark registration provides conclusive evidence of Complainant’s rights in the BRAINETICS mark for the purposes of Policy ¶ 4(a)(i). See Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that the complainant had established rights in the BLOOMBERG mark through registration with the United States Patent and Trademark Office). The Panel also finds that the USPTO trademark registration is sufficient to show rights, even when Respondent lives or operates outside the U.S. See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the complainant has rights to the name when the mark is registered in a country even if the complainant has never traded in that country).
Complainant argues that Respondent’s <braineticslearning.com> domain name is confusingly similar to Complainant’s BRAINETICS mark because the disputed domain name merely combines Complainant’s mark with the descriptive term “learning” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that adding a term descriptive of Complainant’s goods to Complainant’s mark to form the disputed domain name does not negate, and likely even increases, the confusing similarity. See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights. The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”); see also Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005) (“Therefore, the Panel concludes that the addition of a term descriptive of Complainant’s business, the addition of a hyphen, and the addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain name from Complainant’s mark.”). The Panel also finds that the addition of the gTLD does not differentiate the disputed domain name from Complainant’s mark. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i). The Panel accordingly finds that Respondent’s <braineticslearning.com> domain name is confusingly similar to Complainant’s BRAINETICS mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
After Complainant puts forth a prima facie case against Respondent, alleging Respondent’s lack of rights and legitimate interests, Policy ¶ 4(a)(ii) dictates that the burden to show such rights and interests transfers to Respondent. As Complainant has made a sufficient prima facie case in these proceedings, the burden transferred to Respondent. Respondent, however, has defaulted on its obligation by not providing a Response. The Panel thus concludes that Complainant’s allegations may be regarded as true and that Respondent does not possess rights and legitimate interests in the disputed domain name. See Compañia de Radiocomunicaciones Móviles S.A. v. Bolinhas, D2000-0915 (WIPO Oct. 5, 2000) (finding that because Respondent defaulted and did not demonstrate that it had any rights or legitimate interests, the “Panel assumes that there were no other motives for Respondent having registered the three domain names at issue but Respondent’s actual or most likely knowing of the famous or well known marks MOVICOM and BELL SOUTH”); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names). To make a complete determination on the issue of rights and interests, however, the Panel will consider all the evidence in the record in light of the Policy ¶ 4(c) factors.
Complainant contends that Respondent has no business or product that is commonly known by the <braineticslearning.com> domain name. Complainant also alleges that Respondent is not authorized to use Complainant’s BRAINETICS mark in any domain name. The WHOIS information for the <braineticslearning.com> domain name identifies the registrant as “lin fusheng,” a name which has no apparent connection to the disputed domain name. The Panel thus finds that Respondent is not commonly known by the disputed domain and consequently lacks rights and legitimate interests in the <braineticslearning.com> domain name under Policy ¶ 4(c)(ii). See 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 as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name); see also Medline, Inc. v. Domain Active Pty. Ltd., FA 139718 (Nat. Arb. Forum Feb. 6, 2003) (“Considering the nonsensical nature of the [<wwwmedline.com>] domain name and its similarity to Complainant’s registered and distinctive [MEDLINE] mark, the Panel concludes that Policy ¶ 4(c)(ii) does not apply to Respondent.”).
Complainant alleges that Respondent attempts to pass itself off as Complainant by mimicking the design and format and even reproducing Complainant’s website content at the <braineticslearning.com> domain name. Complainant argues that Respondent uses this fraudulent and misleading appearance for a phishing scheme that tricks consumers into ordering products at Respondent’s resolving website, which enables Respondent to collect personal and financial data. The Panel finds that Respondent’s efforts to pass itself off as Complainant in connection with a fraudulent phishing scheme does not satisfy the Policy ¶¶ 4(c)(i) and (iii) requirements of a bona fide offering of goods and services or a legitimate noncommercial or fair use. See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (finding that using a domain name in a fraudulent scheme to deceive Internet users into providing their credit card and personal information is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Complainant argues that Respondent uses Complainant’s BRAINETICS mark and Complainant’s website content and design at the <braineticslearning.com> domain name in an effort to confuse consumers into placing orders at Respondent’s resolving website. Complainant alleges that Respondent financially benefits from this acquisition of Internet users’ personal and financial data. The Panel therefore finds that Respondent’s misappropriation of Complainant’s mark in order to mislead Internet users for profit shows bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
Complainant also alleges that Respondent aims to pass itself off as Complainant by mimicking the format and design of Complainant’s website and replicating Complainant’s original website content at the <braineticslearning.com> domain name. Complainant asserts that Respondent attempts to depict itself in this way in order to mislead Internet users into believing that Respondent is Complainant so that Respondent can collect consumers’ personal and financial data when the consumers try to place orders for what they believe to be Complainant’s products. The Panel finds that Respondent’s actions of passing itself off as Complainant in order to facilitate a phishing website indicates bad faith registration and use under Policy ¶ 4(a)(iii). See Wells Fargo & Co. v. Mihael, FA 605221 (Nat. Arb. Forum Jan. 16, 2006) (“Complainant asserts,…that soon after the disputed domain name was registered, Respondent arranged for it to resolve to a web site closely resembling a legitimate site of Complainant, called a ‘doppelganger’ (for double or duplicate) page, the purpose of which is to deceive Complainant’s customers into providing to Respondent their login identification, social security numbers, and/or account information and Personal Identification Numbers…. The Panel finds that Respondent’s behavior, as alleged, constitutes bad faith registration and use of the subject domain name pursuant to Policy ¶ 4(a)(iii).”); see also Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (finding that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <braineticslearning.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: January 31, 2011
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