B'nai B'rith d/b/a B'nai B'rith International v. Bnaibrith SPb, OO / Legal Department Bnaibrith SPb, OO
Claim Number: FA1012001363636
Complainant is B'nai B'rith d/b/a B'nai B'rith International (“Complainant”), represented by Sheldon H. Klein of Arent Fox LLP, Washington D.C., USA. Respondent is Bnaibrith SPb, OO / Legal Department Bnaibrith SPb, OO (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bnaibrith.com>, registered with DomReg Ltd. d/b/a Libris.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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 15, 2010; the National Arbitration Forum received payment on December 15, 2010.
On December 20, 2010, DomReg Ltd. d/b/a Libris.com confirmed by e-mail to the National Arbitration Forum that the <bnaibrith.com> domain name is registered with DomReg Ltd. d/b/a Libris.com and that Respondent is the current registrant of the name. DomReg Ltd. d/b/a Libris.com has verified that Respondent is bound by the DomReg Ltd. d/b/a Libris.com 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 27, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 18, 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@bnaibrith.com. Also on December 27, 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 January 19, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <bnaibrith.com> domain name is confusingly similar to Complainant’s B’NAI B’RITH mark.
2. Respondent does not have any rights or legitimate interests in the <bnaibrith.com> domain name.
3. Respondent registered and used the <bnaibrith.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant owns a trademark registration with the United States Patent and Trademark Office (“USPTO”) for its B’NAI B’RITH mark (Reg. No. 1,631,938 issued January 15, 1991). Complainant uses its B’NAI B’RITH mark to promote the interests of members of the Jewish religion by providing counseling programs, sporting events, social programs, and information on issues concerning human rights and inter-faith relations.
Respondent registered the <bnaibrith.com> domain name on April 8, 2004. Prior to Respondent’s receipt of the cease and desist letter from Complainant, the disputed domain name resolves to a website that offers to sell the disputed domain name and offers instructions for how to purchase the disputed domain name. Currently, the disputed domain name fails to resolve to an active website.
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.
The Panel determines that a federal trademark registration is sufficient to establish rights in a mark under Policy ¶ 4(a)(i), even if the Respondent does not reside in the country the mark was registered in. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Complainant holds a trademark registration with the USPTO for its B’NAI B’RITH mark (Reg. No. 1,631,938 issued January 15, 1991). Thus, the Panel holds that Complainant has established rights in its B’NAI B’RITH mark under Policy ¶ 4(a)(i).
The Panel finds that the removal of a space and apostrophes and the addition of a generic top-level domain (“gTLD”) fail to adequately distinguish a disputed domain name from a complainant’s mark. See Chi-Chi’s, Inc. v. Rest. Commentary, D2000-0321 (WIPO June 29, 2000) (finding the domain name <chichis.com> to be identical to the complainant’s CHI-CHI’S mark, despite the omission of the apostrophe and hyphen from the mark); see also Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). Respondent’s <bnaibrith.com> domain name removes the space separating the two terms in the mark, removes the apostrophes featured in the mark, and adds the gTLD “.com.” Therefore, the Panel concludes that Respondent’s <bnaibrith.com> domain name is confusingly similar to Complainant’s B’NAI B’RITH mark under Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have any rights or legitimate interests in the <bnaibrith.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain name. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”).
The Panel holds that a respondent is not known by a disputed domain name if the WHOIS information is not similar to the disputed domain name, the complainant alleges that it did not authorize the respondent to use the mark, and the respondent failed to offer any evidence. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name). The WHOIS information identifies the domain name registrant as “Bnaibrith SPb, OO / Legal Department Bnaibrith,” which is not similar to the <bnaibrith.com> domain name. Complainant contends that it did not authorize or license Respondent to use its B’NAI B’RITH mark. Respondent has failed to respond to these proceedings and the Panel finds no evidence in the record that would demonstrate that Respondent is commonly known by the disputed domain name. Consequently, the Panel concludes that Respondent is not commonly known by the <bnaibrith.com> domain name under Policy ¶ 4(c)(ii).
The Panel determines that an offer to sell a disputed domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“UDRP precedent is clear that auctioning domains does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use of domains.”); see also Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name). Prior to receiving Complainant’s cease and desist letter, Respondent used the <bnaibrith.com> domain name to operate a website that provided instructions for purchasing the disputed domain name. On the resolving website, Respondent explicitly offered to sell the domain name. As a result, the Panel finds that Respondent’s offer to sell is evidence that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial fair use under Policy ¶ 4(c)(iii).
Moreover, the Panel finds the failure to make an active use of a domain name is evidence that a respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”); see also Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (finding that a respondent’s non-use of a domain name that is identical to a complainant’s mark is 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)). After receipt of the cease and desist letter, Respondent changed the resolving website to a blank page. The Panel holds Respondent’s failure to make an active use of the <bnaibrith.com> domain name demonstrates that Respondent is not making 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).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that an offer to sell a disputed domain name constitutes bad faith registration and use under Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”); see also Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where the respondent offered domain names for sale). Respondent formerly used the disputed domain name to resolve to a website offering to sell the <bnaibrith.com> domain name and providing instructions for how to purchase it. Accordingly, the Panel determines that Respondent’s offer to sell the disputed domain name constitutes bad faith registration and use under Policy ¶ 4(b)(i).
Finally, the Panel determines that the failure to make an active use is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith). Currently, Respondent does not make an active use of the disputed domain name. Therefore, the Panel holds that Respondent’s failure to make an active use demonstrates Respondent’s bad faith registration and use of the <bnaibrith.com> domain name under Policy ¶ 4(a)(iii).
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 <bnaibrith.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: February 1, 2011
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