Brainetics, LLC v. lin fs
Claim Number: FA1101001368915
Complainant is Brainetics, LLC (“Complainant”), represented by Matthew K. Organ, Illinois, USA. Respondent is lin fs (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <braineticslearning.info>, registered with GoDaddy.com, Inc.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 21, 2011; the National Arbitration Forum received payment on January 24, 2011.
On January 24, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <braineticslearning.info> domain name is 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 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@braineticslearning.info. 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 22, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 <braineticslearning.info> domain name is confusingly similar to Complainant’s BRAINETICS mark.
2. Respondent does not have any rights or legitimate interests in the <braineticslearning.info> domain name.
3. Respondent registered and used the <braineticslearning.info> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Brainetics, LLC, is a company that markets and sells learning and education software. Complainant owns a trademark registration for its BRAINETICS mark with United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,486,052 issued August 12, 2008). Complainant uses the mark to support its business functions.
Respondent, lin fs, registered the disputed domain name on June 5, 2010. The disputed domain name resolves to a site that is very similar to Complainant’s own site. Respondent’s site also offers data entry fields for users to provide personal information, the purpose of which is apparently phishing for personal data.
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 contends that it has established its rights in the BRAINETICS mark by registering that mark with the USPTO (Reg. No. 3,486,052 issued August 12, 2008), a federal trademark authority. Previous panels have found that registering a mark with a federal trademark authority provides affirmative evidence of complainant’s rights in said mark. 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 Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations). Thus, the Panel finds that Complainant has affirmatively established its rights in the BRAINETICS mark under Policy ¶ 4(a)(i) by registering the mark with a federal trademark authority.
Complainant also contends that Respondent’s <braineticslearning.info> domain name is confusingly similar to Complainant’s BRAINETICS mark. The disputed domain name incorporates the entire mark while adding the descriptive term “learning,” and the generic top-level domain (“gTLD”) “.info.” The Panel finds that Respondent has failed to sufficiently differentiate its disputed domain name from Complainant’s BRAINETICS mark by adding a descriptive term and gTLD, making them confusingly similar under Policy ¶ 4(a)(i). See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
The Panel finds that the requirements of Policy ¶ 4(a)(i) have been met.
The Panel finds that Complainant has met its burden of proof by making a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain. Previous panels have held that the burden shifts to the respondent to prove that it does in fact retain rights or legitimate interests in a disputed domain name once a complainant has met its prima facie burden. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)). Because Respondent failed to offer an answer to Complainant’s prima facie case, the Panel may then assume that Respondent lacks any rights or legitimate interests in the disputed domain name. 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.”). However, the Panel will still examine the entire record to determine whether Respondent does in fact retain rights or legitimate interests in the disputed domain name according to the factors enumerated in Policy ¶ 4(c).
Complainant asserts that Respondent is not commonly known by the <braineticslearning.info> domain name. Respondent has not offered any evidence to show that it is commonly known by the disputed domain name. The WHOIS information identifies registrant as, “lin fs,” which this Panel finds is not similar to the disputed domain name. Thus, the Panel finds that Respondent is not commonly known by its <braineticslearning.info> domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant also asserts that Respondent is not engaging in a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the <braineticslearning.info> domain name. The disputed domain name resolves to a site that appears to be very similar to Complainant’s own website and offers fields for Internet users to enter their personal information. The Panel finds that Respondent is using the disputed domain name to “phish” for the personal information of diverted Internet users, and that this usage does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (defining “phishing” as “a practice that is intended to defraud consumers into revealing personal and proprietary information”); see also HOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004) (finding that a domain name that “is confusingly similar to Complainant’s mark, redirects Internet users to a website that imitates Complainant’s website, and is used to acquire personal information from Complainant’s potential associates fraudulently” does not fall within the parameters of Policy ¶¶ 4(c)(i) or (iii)).
The Panel finds that the requirements of Policy ¶ 4(a)(ii) have been met.
The Panel finds that the enumerated Policy ¶ 4(b) factors are not exhaustive, and thus the totality of the circumstances may be considered when analyzing bad faith registration and use under Policy ¶ 4(a)(iii). See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence).
Complainant alleges that Respondent registered and is using the <braineticslearning.info> domain name to collect personal information from diverted Internet users, constituting phishing and thereby bad faith registration and use. Respondent’s disputed domain name resolves to a site, similar to Complainant’s own site, offering a data entry form. The Panel finds that Respondent is engaging in “phishing” for the personal information of diverted internet users which constitutes bad faith registration and use under Policy ¶ 4(a)(iii). See Juno Online Servs., Inc. v. Iza, FA 245960 (Nat. Arb. Forum May 3, 2004) (finding that using a domain name that “is confusingly similar to Complainant’s mark, redirects Internet users to a website that imitates Complainant’s billing website, and is used to fraudulently acquire personal information from Complainant’s clients” is evidence of bad faith registration and use); 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 infers that Respondent is attempting to profit from the collection of personal information. The disputed domain name resolves to a site similar to Complainant’s and includes areas where Internet users can enter their personal information. Presumably, Respondent is attempting to profit from the information it gathers. The Panel finds that this usage constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See 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); see also Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (“By use of <yahgo.com> to operate its search engine, a name that infringes upon Complainant’s mark, Respondent is found to have created circumstances indicating that Respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on the website as proscribed in Policy ¶ 4(b)(iv).”).
The Panel finds that the requirements of Policy ¶ 4(a)(iii) have been met.
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.info> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: February 26, 2011
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