Brainetics, LLC v. Alyssa Shen
Claim Number: FA1101001368926
Complainant is Brainetics, LLC (“Complainant”), represented by Matthew K. Organ of GOLDBERG KOHN LTD., Illinois, USA. Respondent is Alyssa Shen (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <braineticsdeaker.net>, <braineticsstore.info>, and <brainetics-dvdstore.info>, registered with Godaddy.Com, Inc.
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 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 <braineticsdeaker.net>, <braineticsstore.info>, and <brainetics-dvdstore.info> domain names are 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 26, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 15, 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@braineticsdeaker.net, postmaster@braineticsstore.info, and postmaster@brainetics-dvdstore.info. Also on January 26, 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 18, 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <braineticsdeaker.net>, <braineticsstore.info>, and <brainetics-dvdstore.info> domain names are confusingly similar to Complainant’s BRAINETICS mark.
2. Respondent does not have any rights or legitimate interests in the <braineticsdeaker.net>, <braineticsstore.info>, and <brainetics-dvdstore.info> domain names.
3. Respondent registered and used the <braineticsdeaker.net>, <braineticsstore.info>, and <brainetics-dvdstore.info> domain names 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 for the BRAINETICS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,486,052 issued August 12, 2008).
Respondent, Alyssa Shen, registered the <braineticsdeaker.net> and <brainetics-dvdstore.info> domain names on June 11, 2010 and the <braineticsstore.info> domain name on July 2, 2010. The disputed domain names promote websites, products, and the sale of DVDs, including DVDs that compete with Complainant’s products.
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 for the BRAINETICS mark with the USPTO (Reg. No. 3,486,052 issued August 12, 2008). The Panel finds that Complainant’s registration with the USPTO sufficiently establishes its rights in the mark pursuant to Policy ¶ 4(a)(i), even when Complainant’s mark is registered outside Respondent’s country of business. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); 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 alleges that Respondent’s <braineticsdeaker.net>, <brainetics-dvdstore.info> and <braineticsstore.info> domain names are confusingly similar to Complainant’s BRAINETICS mark because each disputed domain name makes one or more of the following additions: generic or descriptive terms, hyphen, and generic top-level domain (“gTLD”). The Panel finds that adding a generic or descriptive term to Complainant’s mark does not alleviate confusing similarity. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding the addition of generic terms to Complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names). The Panel also finds that neither adding a hyphen nor a gTLD is a significant change that sufficiently alters Complainant’s mark. See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also InfoSpace.com, Inc. v. Ofer, D2000-0075 (WIPO Apr. 27, 2000) (finding that “[t]he domain name ‘info-space.com’ is identical to Complainant’s INFOSPACE trademark. The addition of a hyphen and .com are not distinguishing features”). The Panel therefore concludes that Respondent’s <braineticsdeaker.net>, <brainetics-dvdstore.info>, and <braineticsstore.info> domain names are confusingly similar to Complainant’s BRAINETICS mark according to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
In alleging that Respondent lacks rights and legitimate interests in the disputed domain names, Policy ¶ 4(a)(ii) requires that Complainant put forth a prima facie case against Respondent. As the Panel finds that Complainant has satisfied this obligation in the instant proceeding, the burden to demonstrate rights and legitimate interests now shifts to Respondent. By defaulting, Respondent has not adequately met this burden and therefore the Panel determines that it may accept Complainant’s allegations as true and conclude that Respondent lacks rights and legitimate interests in the disputed domain names. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“[Rule 14(b)] expressly provide[s] that the Panel ‘shall draw such inferences’ from the Respondent’s failure to comply with the rules ‘as it considers appropriate.”); see also BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name”). In the interest of fairness, however, the Panel elects to consider all of the evidence in the record according to the Policy ¶ 4(c) factors.
Complainant contends that neither Respondent nor any business operated by Respondent has been commonly known by the <braineticsdeaker.net>, <brainetics-dvdstore.info>, and <braineticsstore.info> domain names. Complainant also argues that Respondent is not authorized to use Complainant’s mark in any domain name. The WHOIS information for the disputed domain name lists the registrant as “alyssa shen,” a name with no apparent connection to the disputed domain names. The Panel accordingly finds that Respondent is not commonly known by the disputed domain names and consequently lacks rights and legitimate interests under Policy ¶ 4(c)(ii). See 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); see also 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).
Complainant argues that Respondent uses the <braineticsdeaker.net>, <brainetics-dvdstore.info>, and <braineticsstore.info> domain names to promote websites, products and the sale of DVDs, including DVDs that compete with Complainant’s product line. The Panel finds that using disputed domain names to direct Internet users to competing websites or products does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii). See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees); see also G.D. Searle & Co. v. Pelham, FA 117911 (Nat. Arb. Forum Sept. 19, 2002) (finding that because the respondent is using the infringing domain name to sell prescription drugs, the panel could infer that the respondent is using the complainant’s mark to attract Internet users to its website for commercial benefit).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleges that Respondent uses the <braineticsdeaker.net>, <brainetics-dvdstore.info>, and <braineticsstore.info> domain names to compete with Complainant by promoting other websites and DVDs that are similar to Complainant’s product line. The Panel finds that this use disrupts Complainant’s business and thus shows bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Complainant asserts that Respondent uses Complainant’s BRAINETICS mark in the disputed domain names in order to profit from Complainant’s mark and the confusion created among Internet users about an association between Respondent and Complainant. Complainant argues that Respondent incorporated Complainant’s mark into the disputed domain names in order to attract Internet users. By promoting competing websites and products, Respondent intends to commercially gain from this increased traffic resulting from its use of Complainant’s mark. The Panel finds this is evidence of bad faith registration and use pursuant to 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 AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website which resolved from the disputed 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 <braineticsdeaker.net>, <braineticsstore.info>, and <brainetics-dvdstore.info> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: March 2, 2011
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