Dallas Project Holdings Limited v. Alexander Halim Putra
Claim Number: FA1101001368692
Complainant is Dallas Project Holdings Limited (“Complainant”), represented by S. Roxanne Edwards of Baker & McKenzie LLP, Texas, USA. Respondent is Alexander Halim Putra (“Respondent”), Indonesia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bearingpoint.asia>, registered with Mesh Digital 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.
Nathalie Dreyfus as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 20, 2011; the National Arbitration Forum received payment on January 20, 2011.
On January 21, 2011, Mesh Digital Limited confirmed by e-mail to the National Arbitration Forum that the <bearingpoint.asia> domain name is registered with Mesh Digital Limited and that Respondent is the current registrant of the name. Mesh Digital Limited has verified that Respondent is bound by the Mesh Digital 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 January 27, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 16, 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@bearingpoint.asia. Also on January 27, 2011, 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 Response was received on February 17, 2011. As this was after the deadline of February 16, 2011 to file a Response, the Response is not considered to be in compliance with ICANN Rule 5(a) and/or the Annex to the Supplemental Rules. However, the Panel can, at its discretion, choose to consider this Response. See Telstra Corp. v. Chu, D2000-0423 (WIPO June 21, 2000) (finding that any weight to be given to the lateness of the Response is solely in the discretion of the Panelist. The Panel considers that the Response is deficient due to its lateness and its form and, thus, decides not to consider it for the purpose of this decision.
On February 23, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Nathalie Dreyfus as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends that the domain name in dispute is identical to its trademark BEARINGPOINT, which are registered both nationally and internationally in connection with a variety of products and services related to management and technology consulting. Therefore, the domain name <bearingpoint.asia> is likely to cause confusion in the marketplace, particularly in Asia, one of the markets in which Complainant provides its goods and/or services.
Complainant further contends that Respondent appears to have registered the disputed domain name for the purpose of resale; <bearingpoint.asia> is indeed operated as a registrar-generated pay-per-click website which does not currently offer any goods or services for sale. Moreover, the domain name is available for sale for a minimum asking price of $500 from <sedo.com>. Additionally, there is no evidence of Respondent’s use of, or demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services. Respondent was not authorized to use Complainant’s marks nor has it been commonly known by the domain name at issue. Finally, Respondent has no legitimate non-commercial or fair use of the domain name.
Complainant finally contends that the circumstances under which Respondent registered the domain name and is currently using it were not in good faith. Moreover, Respondent’s registration of the disputed domain name prevents Complainant from reflecting its trademarks in corresponding domain names important for its business and intentionally disrupts said business. Finally, Respondent’s website intentionally attracts Internet users for commercial gain in the Asian marketplace as it contains numerous advertisements for varied consulting enterprises.
B. Respondent
Respondent contends that it registered the disputed domain name during the .asia landrush period, at a time where anyone could apply for any available .asia domain name.
However, Respondent explains that it agrees to transfer the disputed domain name to Complainant, provided that it receives some compensation for the costs incurred in the registration and renewal of the domain name ($60), payable through its paypal account.
Complainant has been using the trademark BEARINGPOINT, registered in many countries, for about ten years in relation with management and technology consulting activities. Despite the sale and winding-down of the company’s operations in North America, several entities continue to provide consulting services under the BEARINGPOINT brand in Europe, Latin America and the Asia Pacific region.
More specifically, BEARINGPOINT has been serving the needs of the Chinese market since 2001 through its headquarters in Shanghai and its branch in Beijing; it has more than 1,000 employees providing professional services for key industries, such as telecommunications, finance, oil and gas, high tech, or manufacturing and automobile.
Respondent’s <bearingpoint.asia> domain name, which it registered on April 1, 2008, resolves to a registrar-generated pay-per-click website displaying numerous advertisements, including for varied consulting enterprises.
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.
Preliminary issue: consent to transfer
Respondent explains in its Response that it consents to transfer the <bearingpoint.asia> domain name to Complainant; thus, the Panel could decide to forego the traditional UDRP analysis and order an immediate transfer of the <bearingpoint.asia> domain name. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).
However, the Panel highlights that Complainant has not implicitly consented in its Complaint to the transfer of the disputed domain name without a decision on the merits. Moreover, the “consent-to-transfer” approach can become a way for cybersquatters to avoid adverse findings against them. In Graebel Van Lines, Inc. v. Texas Int’l Prop. Assocs., FA 1195954 (Nat. Arb. Forum July 17, 2008), the Panel considered that although Respondent has admitted in his response to the complaint of Complainant that it was ready to offer the transfer without inviting the decision of the Panel in accordance with the Policy, the facts of the case drove the Panel to the view that the transfer of the domain name deserved to be along with the findings in accordance with the Policy.
Therefore, the Panel decides to analyze the case under the elements of the UDRP, rather than ordering the immediate transfer of the <bearingpoint.asia> domain name.
Complainant asserts that it is the owner of numerous trademarks for or including “BEARINGPOINT” that are registered both nationally and internationally for a variety of products and services related to management and technology consulting. The Panel particularly notes the following national registrations with the Indonesian Industrial Property Office:
· Reg. No. 563,198 issued February 13, 2004;
· Reg. No. 563,199 issued February 13, 2004;
· Reg. No. 563,200 issued February 13, 2004;
· Reg. No. 563,201 issued February 13, 2004;
· Reg. No. 563,202 issued February 13, 2004;
· Reg. No. 563,203 issued February 13, 2004; and
· Reg. No. 563,204 issued February 13, 2004.
The Panel finds that these trademark registrations adequately demonstrate Complainant’s rights in the mark under Policy ¶ 4(a)(i). See Morgan Stanley v. Fitz-James (CT2341-RSC) Cititrust Grp. Ltd, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (“The Panel finds from a preponderance of the evidence that Complainant has registered its mark with national trademark authorities. The Panel has determined that such registrations present a prima facie case of Complainant’s rights in the mark for purposes of under Policy ¶ 4(a)(i).”); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority).
Complainant argues that Respondent’s <bearingpoint.asia> domain name is identical to Complainant’s BEARINGPOINT mark because the only inconsequential difference is the addition of the sponsored top-level domain (“sTLD”) “.asia.” The Panel may find that the addition of the sTLD “.asia” does not remove the disputed domain name from the realm of confusing similarity. See Australia & New Zealand Banking Grp. Ltd. v. Nguyen The Anh, FA 1351993 (Nat. Arb. Forum Dec. 1, 2010) (finding the addition of the sTLD “.asia” to be irrelevant to a Policy ¶ 4(a)(i) analysis); see also Acton Educ. Servs., Inc. v. Smith, FA 1238865 (Nat. Arb. Forum January 29, 2009) (concluding that the top-level domain “.asia” did not prevent the <westcoastuniversity.asia> domain name from being deemed identical to Complainant’s WEST COAST UNIVERSITY mark).
The Panel therefore concludes that Respondent’s <bearingpoint.asia> domain name is identical to Complainant’s BEARINGPOINT mark pursuant to Policy ¶ 4(a)(i).
Complainant contends that Respondent is not authorized to use Complainant’s BEARINGPOINT mark in the <bearingpoint.asia> domain name and that the disputed domain name is neither a nickname of Respondent nor otherwise identified with or related to Respondent. Indeed, the WHOIS information for the disputed domain name lists the registrant as “Alexander Halim Putra,” a name which the Panel determines has no facial association to the disputed domain name. The Panel accordingly finds that Respondent is not commonly known by the disputed domain name and thus lacks rights and legitimate interests under Policy ¶ 4(c)(ii). See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response).
Complainant further asserts that Respondent is using the <bearingpoint.asia> domain name to host pay-per-click links. Complainant argues that other than the links, there are no goods or services offered for sale at the disputed domain name. A directory of pay-per-click links is not a bona fide offering of goods or services according to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that redirecting Internet users interested in Complainant’s products and services to its own website for commercial gain was 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 also Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant).
Complainant also alleges that Respondent registered the <bearingpoint.asia> domain name for the purpose of resale, as the disputed domain name is currently available for sale through <sedo.com> for a minimum asking price of $500.00. The Panel may find that efforts to sell the disputed domain name indicate a lack of rights and legitimate interests pursuant to Policy ¶ 4(a)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name); 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).
The Panel finds that Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and that the burden shifts to Respondent to show 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 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 interests in the subject domain names.”).
Complainant alleges that Respondent registered the <bearingpoint.asia> domain name for the purpose of resale because the disputed domain name is advertised for sale for a minimum asking price of $500 on <sedo.com>. The Panel finds that Respondent’s apparent intention to sell the disputed domain name indicates Respondent’s bad faith registration and use according to Policy ¶ 4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name); see also 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).”).
The Panel notes that in its Response, Respondent offers to transfer the disputed domain name in exchange for some compensation, i.e., for the costs incurred in the registration and renewal of the domain name, which amount to $60. The Panel deplores that Respondent waited until after the proceedings were engaged before making such an offer. The Panel decides that considering its timing, the offer does not eliminate any inference of bad faith arising from the circumstances of the case.
Complainant further contends that Respondent’s <bearingpoint.asia> domain name resolves to a website populated with generic pay-per-click links to third-party websites. Complainant argues that the fame and goodwill associated with its BEARINGPOINT mark likely drives traffic to Respondent’s website, creates a likelihood of confusion, and increases the profits generated from the click-through fees. The Panel finds that such activities in connection with the misappropriated domain name indicate bad faith registration and use for the purposes of Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites).
As such, this Panel finds that Respondent did act in bad faith when it registered Respondent’s domain name, and Respondent continues to act in bad faith by maintaining its ownership.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bearingpoint.asia> domain name be TRANSFERRED from Respondent to Complainant.
Nathalie Dreyfus, Panelist
Dated: March 9, 2011
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