Dynamis, Inc. v. BB & TT
Claim Number: FA1012001364095
Complainant is Dynamis, Inc. (“Complainant”), represented by Thomas G. Southard, Maryland, USA. Respondent is BB & TT (“Respondent”), represented by Jeremy Lack of ALTENBURGER LTD, Switzerland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dynamis.com>, registered with Network Solutions.
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.
Charles A. Kuechenmeister
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 17, 2010; the National Arbitration Forum received payment on December 17, 2010.
On December 20, 2010, Network Solutions confirmed by e-mail to the National Arbitration Forum that the <dynamis.com> domain name is registered with Network Solutions and that Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 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 22, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 11, 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@dynamis.com. Also on December 22, 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.
A timely Response was received and determined to be complete on January 11, 2011.
On January 14, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Charles A. Kuechenmeister as Panelist.
Complainant filed an Additional submission on January 18, 2011. This Additional Submission was timely filed in accordance with the Forum’s Supplemental Rule 7, and was considered by the Panel.
Respondent filed an Additional submission on January 24, 2011. This Additional Submission was timely filed in accordance with the Forum’s Supplemental Rule 7, and was considered by the Panel.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant holds U.S. federal common law rights in the mark DYNAMIS due to Complainant’s continuous use of this mark in commerce since at least as early as February 2008 in connection with research and analysis for others in the field of national security. It has applied for but has not yet received registration for that mark with the U.S. Patent and Trademark Office (USPTO).
Complainant advertises its services to the world via a website located at www.dynamisusa.net.
The disputed domain name, <dynamis.com> (the Domain Name), is identical to and thus confusingly similar to Complainant’s DYNAMIS mark.
Complainant has not given any license, consent or other authorization for Respondent to use its DYNAMIS mark.
The Respondent, BB & TT, is not known by the name “Dynamis.”
Respondent has not built a website associated with the Domain Name. The website referenced by the Domain Name is merely a holding page, not an active web page. Respondent is not using the Domain Name in connection with a bona fide offering of goods or services, nor is Respondent making a legitimate non-commercial or fair use of the Domain Name.
Respondent is using the website associated with the Domain Name to direct internet users to third-party commercial websites and to display revenue-generating links. This demonstrates bad faith.
Respondent renewed its registration of the Domain Name on or after June 3, 2010, after acquiring actual knowledge of Complainant’s rights in the DYNAMIS mark and after Complainant had offered to purchase it from Respondent, such offers beginning in August 2009. This also constitutes bad faith.
Beginning in August 2009, Complainant attempted in good faith to purchase the Domain Name. At one point, Respondent agreed to sell the Domain Name to Complainant for $2,500 but later breached that agreement, refused to sell the Domain Name to Complainant, and announced its intention to keep the same until it could sell it on eBay.
Mr. Richard Debrot, a representative of Respondent, told Complainant’s representative that Respondent was not using the Domain Name and was only holding onto it to sell it.
Prior to Complainant’s contacting Respondent, Respondent was passively holding the Domain name, which also indicates bad faith registration and use.
Respondent stated to Complainant that it would not sell the Domain Name for less than $2,500, a sum far in excess of its out-of pocket expenses directly related to the Domain Name. This also indicates bad faith.
B. Respondent
Complainant has failed to demonstrate that it has rights in any trademark on which it can bring a UDRP proceeding. The World Intellectual Property Organisation (WIPO) Overview of Panel Views on Selected UDPR Questions, in its statement on Question 1.7, sets forth the consensus position regarding what needs to be shown for a complainant to successfully assert common-law or unregistered trademark rights. Complainant fails to meet those requirements in that it failed to provide evidence of the word DYNAMIS being used as a mark to distinctively indentify its goods or services. It provided no evidence of the length or amount of its sales using that word as a mark, the nature or extent of any advertising of goods or services associated with that mark, any customer surveys supporting acquired secondary meaning, or any media recognition of the word as a brand, all as specified by the WIPO Overview.
The mere use of a company’s name does not automatically give rise to a trade mark or goodwill associated with it. Complainant has not used DYNAMIS as a mark in connection with its goods or services. It is nothing more than its corporate name, or a trade name; this is insufficient to confer upon Claimant any trademark rights in the word DYNAMIS for the purposes of a UDRP proceeding.
Complainant’s trademark application with the USPTO is filed under the section of federal law providing for applications for “intent to use,” not for “prior use.” This application was filed on December 3, 2010 just 14 days prior to Complainant’s filing this proceeding. Complainant did not disclose these facts in its filing here. This is manifest evidence of its own bad faith in filing this UDRP proceeding, and Respondent seeks a finding of Reverse Domain Name Hijacking, as more fully set forth below.
Complainant has failed to demonstrate the existence of its alleged trademark, which is a prerequisite to filing this case.
Respondent is a consulting company, specializing in training, coaching, management and conflict resolution services. It was organized by Mr. Rudi Brenner in March 2003, but he started the business before that, operating first under the name DYNAMIS, and then as BRENNER & PARTNER.
In July 1997, while operating under the name DYNAMIS, Mr. Brenner registered the Domain Name and used it to advertise his business. In that connection he used DYNAMIS as a brand name, describing his goods and services. Using that name he created considerable goodwill which has been maintained since. The DYNAMIS name is still a distinctive mark to several key individuals among Respondent’s clients.
When Mr. Brenner organized Respondent in 2003, he was unable to use DYNAMIS as a corporate name because several other entities were already using it. He therefore settled on the name BRENNER & PARTNER and developed a website using the domain name “brenner-partner.com,” which he uses to this day, as his primary website.
He did not wish to discontinue using the Domain Name, however, because of the goodwill he had generated earlier, so he arranged for the Domain Name automatically to forward clients to his new, and current, website.
The automatic forwarding mechanism may not currently be functioning correctly. Respondent was not aware of this prior to receiving the Complaint in this case. Because of the Christmas holiday season and the relatively short response time, he has not been able to investigate the reasons for this. Respondent’s understanding and intent are that the Domain Name should automatically be forwarding any visitors to Respondent’s home page.
In any event, the Domain Name does not lead to counterfeit or “click-through” sites, and there is no intent for inappropriate commercial gain or to mislead or divert consumers away from any entities who have a right in the DYNAMIS mark.
The Domain Name has been consistently used to advertise Mr. Brenner’s professional services and those of Respondent.
Respondent’s estimated out-of-pocket costs directly related to the Domain Name are far in excess of $2,500 and Respondent would never have agreed to sell it for that amount.
The Domain Name was not registered to prevent any owner of any mark in the word DYNAMIS from registering that website.
Respondent’s use of the Domain Name has never disrupted anyone, nor does it create any likelihood of confusion.
Respondent has not tried to use the Domain Name to attract unknown clients or to generate revenues from any click-through pages.
Respondent never agreed to sell the Domain Name to Complainant, at any price. There were email messages in July through September 2009 in which Complainant inquired whether Respondent would be open to selling the name but no understanding was reached regarding the matter at that time. Complainant asserts that the alleged agreement to sell arose from a telephone call in September 2010, a whole year later, but there was no contemporaneous follow-up in writing or by email, and Complainant’s assertions of an agreement are simply not true.
Mr. Debrot never told Complainant’s representative that Respondent was not using the Domain Name and was only holding onto it to sell it. This is pure fabrication.
Because Complaint cannot support any one of the three elements necessary to make out a case for transfer of the Domain Name, and should have known that when it filed this proceeding, the Panel should find that the filing was attended by circumstances of bad faith and that Complainant is guilty of Reverse Domain Name Hijacking.
C. Additional Submission by Complainant
Complainant has used its corporate name as a service mark. The screen shots of its website clearly use the name DYNAMIS and this is sufficient evidence of “secondary meaning” to confer upon Complainant trademark rights in that name.
Respondent has not used the Domain Name for more than four years, based upon the printout from The Internet Archive’s Way-Back Machine. Panels have held that 3 or more years of non-use is prima facie evidence that a holder has no legitimate rights in a domain name.
Respondent has not shown that Mr. Brenner ever transferred his rights to the Domain Name to BB & TT, the Respondent, nor is there any other evidence to explain how BB & TT, as opposed to Rudi Brenner or Brenner & Partner, has any legitimate rights in the name.
Respondent’s bad faith can be shown from the totality of circumstances present in this case, in addition to the specific factors set forth in the Complaint.
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."
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 have registered trademark rights in the mark DYNAMIS, but trademark registration is not necessary to demonstrate rights in a mark. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
Complainant asserts that it holds common law rights in the DYNAMIS mark since it has used the mark in a continuous and uninterrupted manner since February 2008 in connection with its research and analysis in the national security industry. Respondent maintains that Complainant has not established common law rights in the DYNAMIS mark under Policy ¶ 4(a)(i), arguing that Complainant has failed to establish secondary meaning of the DYNAMIS mark as recognized by consumers and has failed to provide evidence of the mark being used to distinctively identify its goods and services within the national security industry. Respondent also argues that Complainant does not have rights to the DYNAMIS mark since Complainant only utilized the mark as a trade name and not as a trademark to describe Complainant’s products or services. The screenshots of Complainant’s website at <dynamisusa.net> clearly demonstrate, however, that Complainant uses the name DYNAMIS to advertise its services at least by that medium. There may be circumstances in which a company’s corporate or trade name, in and of itself, would not automatically entitle the company to claim trademark rights in that name e.g., where a company keeps its corporate name substantially out of sight in its advertising, but those circumstances are not present here. Complainant openly and prominently uses its DYNAMIS name to identify its services on the website. In doing so, Complainant has established a secondary meaning of its DYNAMIS mark within the field of national security, and the Panel finds that Complainant has common law rights in the DYNAMIS mark under Policy ¶ 4(a)(i). See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Kahn Dev. Co. v. RealtyPROshop.com, FA 568350 (Nat. Arb. Forum June 23, 2006) (holding that the complainant’s VILLAGE AT SANDHILL mark acquired secondary meaning among local consumers sufficient to establish common law rights where the complainant had been continuously and extensively promoting a real estate development under the mark for several years).
The <dynamis.com> Domain Name is identical to Complainant’s DYNAMIS mark. It incorporates Complainant’s entire mark and only differs by the addition of a generic top-level domain (“gTLD”) “.com.” The addition of a gTLD does not properly distinguish the disputed domain name from Complainant’s mark. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”); see also Reebok Int’l Ltd. v. Ohno, FA 511463 (Nat. Arb. Forum Aug. 23, 2005) (holding that the <reebok.net> domain name was identical to the complainant’s REEBOK mark because it fully incorporates the mark and merely adds a generic top-level domain). The Panel may determine that Respondent’s disputed domain name is identical to Complainant’s mark under Policy ¶ 4(a)(i).
The Panel finds that the Domain Name is identical or confusingly similar to the DYNAMIS mark, in which the Complainant has substantial and demonstrated rights.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interest in the Domain Name under Policy ¶ 4(a)(ii). If it does so the burden shifts to Respondent to show it does have rights or legitimate interest. 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 interest 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 interest 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 interest 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 interest in the subject domain names.”).
Complainant alleges that Respondent has no right or legitimate interest in the Domain Name because (i) it is not commonly known by the name DYNAMIS, (ii) it has never been licensed by Complainant to use its DYNAMIS mark, and (iii) the website referenced by the Domain Name is merely a holding page provided by the registrar—there is no active web page associated with the Domain Name so Respondent cannot be using it in connection with a bona fide offering of goods and services or for legitimate non-commercial or fair uses. Taking all of these allegations as true, the Panel finds that Complainant has established a prima facie case of no right or legitimate interest, and the burden shifts to Respondent to demonstrate that it does have such right or legitimate interest.
Respondent asserts that its founder, Mr. Rudi Brenner, started the consulting service which ultimately became Respondent in 1997, first under the name DYNAMIS, and then as BRENNER & PARTNER. In July 1997, while operating under the name DYNAMIS, Mr. Brenner registered the Domain Name and used it to advertise his business. Mr. Brenner organized Respondent in 2003. At that time he was unable to use DYNAMIS as a corporate name because several other entities were already using it. He therefore settled on the name BRENNER & PARTNER and developed a website using the domain name <brenner-partner.com>, which he uses to this day as Respondent’s primary website. Respondent further states that Mr. Brenner did not wish to discontinue using the Domain Name when he incorporated in 2003 because of the goodwill he had generated earlier with it, so he arranged for the Domain Name automatically to forward clients to his new, and current, website. Respondent states that the DYNAMIS name is still a distinctive mark to several key individuals among its clients.
The automatic forwarding mechanism may not currently be functioning correctly. Respondent was not aware of this prior to receiving the Complaint in this case. Because of the Christmas holiday season and the relatively short response time Respondent has not been able to investigate the reasons for this. Respondent’s understanding and intent are, however, that the Domain Name should automatically be forwarding any visitors to Respondent’s home page. (See Declaration of Richard Debrot, Attachment 9 to Response.)
Based upon the foregoing, the Panel concludes that Respondent is in fact, and has since 1997 been using the Domain Name in connection with a bona fide offering of services, under Policy ¶ 4(c)(i). See Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name); see also Digital Interactive Sys. Corp. v. Christian W, FA 708968 (Nat. Arb. Forum July 3, 2006) (concluding that the complainant failed to satisfy Policy ¶ 4(a)(ii) because the respondent provided sufficient evidence to convince the panel that it was using the disputed domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i)).
The Panel also concludes that Respondent is commonly known by the <dynamis.com> name within the meaning of Policy ¶ 4(c)(ii), based upon the fact that Respondent has maintained good will and recognition for its consulting services under the Domain Name since 2003. See Digitronics Inventioneering Corp. v. @Six.Net Registered, D2000-0008 (WIPO Mar. 1, 2000) (finding that the respondent was commonly known by the <six.net> and <sixnet.com> domain names even though the complainant had registered the SIXNET trademark because the respondent demonstrated that its customers associated the respondent’s company with the domain names); see also AST Sportswear, Inc. v. Hyken, D2001-1324 (WIPO Mar. 26, 2002) (finding that the respondent was commonly known by the <johnnyblaze.com> domain name because it “submitted conclusive documentary evidence that he used the stage name Johnny Blaze . . . during his career” and the panel should refrain from examining whether the type of use of the domain name was legitimate and simply determine whether the respondent was commonly known by the domain name under Policy ¶ 4(c)(ii)).
Complainant disputes the fact of Respondent’s use of the Domain Name as alleged, based upon screenshots of Respondent’s website (Exhibit C to Complaint) and Way Back Machine Reports (Exhibit E to Complaint) indicating that the Domain Name does not forward visitors to the Brenner & Partner website but instead directs then to third-party commercial websites and displays revenue-generating links. This evidence is contradicted by WayBack Machine reports submitted by Respondent, however, that do show forwarding to the Brenner & Partner website (Attachments 3 and 7 to Response). Thus, while there is some uncertainty about exactly what an internet visitor to the website hosted by the Domain Name may see at any given time, there is substantial evidence that Respondent’s has used the Domain Name as it alleges.
In further support of its position, Complainant alleges that Respondent agreed at one point to sell the <dynamis.com> domain name to Complainant for the sum of $2,500, an amount in excess of its out of pocket costs, and that this demonstrates Respondent’s lack of rights or legitimate interests under Policy ¶ 4(a)(ii). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)); 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). Respondent absolutely and categorically denies any such agreement, however, and the evidence submitted fails to persuade the Panel that there was any such agreement, or even an offer by Respondent to sell the Domain Name at all.
Complainant also asserts that Respondent failed to explain how the Respondent, named as BB & TT on the records of the registrar and in the pleadings in this case, ever acquired any right to the Domain Name that Mr. Brenner or Brenner & Partner may have had in that name. Complainant points to the lack of evidence of an assignment of the Domain Name from any of these persons to an entity named BB & TT. Nevertheless, the Declaration of Richard Debrot (Attachment 9 to the Response), states that he has knowledge of the history of the company, and that it was called Dynamis and “we registered and used the domain name as one way of marketing our services.” Additionally, the Response clearly states that “Respondent (emphasis supplied) is a consulting company . . . . [that] was founded by its sole owner, Mr. Rudi Brenner.” Respondent is the successor to the business begun in 1997 under the name DYNAMIS. Finally, the Swiss Commercial Register showing Respondent’s registration with that agency (Attachment 2 to Response) identifies the entity as “BB & TT Beratung & Training,” and gives its address exactly the same as the address shown for Respondent on the domain name registration printout attached to the Complaint as Exhibit B. It seems clear from this that notwithstanding a lack of precise correlation among the various entity names relating to Respondent and a lack of specific details of the relationship of BB & TT with Rudi Brenner and Brenner & Partner, the principals involved regard the names “BB & TT” and “Brenner & Partner” as covering and referring to the same business entity, and the Panel is satisfied that it is in fact the same entity for the purposes of this proceeding.
In summary, the Panel finds and determines that the Respondent has rights and legitimate interest in respect of the Domain Name.
In light of the Panel’s finding and determination with respect to the Right or Legitimate Interest element of the Complaint, the Panel declines to review or comment upon the allegations regarding bad faith. 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)
Complainant having failed to establish one or more of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <dynamis.com> domain name REMAIN WITH RESPONDENT.
REVERSE DOMAIN NAME HIJACKING
Respondent requests the Panel to enter a finding that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding. ICANN Rule 15(e) provides for such a finding if the Panel concludes that the proceeding was brought in attempt at reverse domain name hijacking or was brought primarily to harass the domain name holder. Respondent’s primary argument in this regard is that Complainant knew or should have known that it could not prove any of the three elements required by the Policy. Respondent is also incensed by Complainant’s timing in bringing the case when because of people’s travel plans around the Christmas holidays it might be extremely difficult for Respondent to respond. Respondent also alleges bad faith in the selective use of Way Back Machine reports—some reports did not show active use of the Domain Name by Respondent, some did, and Complainant brought forward only those that did not. Finally, Respondent asserts that Complainant acted in bad faith by bringing a case when it knew that Respondent had registered the Domain Name in 1997, well before Complainant was organized and began using the name DYNAMIS in 2008.
The Panel declines the relief requested by Respondent. In the first place, the Panel found and determined that Complainant does have rights in the name DYNAMIS. Secondly, it is not clear from the record what information about Respondent’s use of the Domain Name was reasonably available to Complainant prior to filing its Complaint. Additionally, it is not insignificant that there is no precise correlation between the Respondent’s name as shown on the Domain Name registration report, BB & TT, and the names “Rudi Brenner” and “Brenner & Partner.” The Panel concluded that BB & TT is in fact interested in the consulting business conducted under the name Brenner & Partner, to which the Domain Name is supposed to refer internet traffic, but was able to do so only on the basis of evidence presented by Respondent, and even then the connection is not precisely shown. To conclude, the evidence presented in this case falls short of demonstrating a bad faith filing, that the relief requested by Respondent in this regard is DENIED.
Charles A.
Kuechenmeister, Panelist
Dated: January 26, 2011
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