Brainetics, LLC v. lin fusheng
Claim Number: FA1102001371913
Complainant is Brainetics, LLC (“Complainant”), represented by Matthew K. Organ of GOLDBERG KOHN LTD., Illinois, USA. Respondent is lin fusheng (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <braineticslearning.net>, registered with Hichina Zhicheng Technology Ltd.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 8, 2011; the National Arbitration Forum received payment on February 8, 2011. The Complaint was received in both English and Chinese.
On February 9, 2011, Hichina Zhicheng Technology Ltd. confirmed by e-mail to the National Arbitration Forum that the <braineticslearning.net> domain name is registered with Hichina Zhicheng Technology Ltd. and that Respondent is the current registrant of the name. Hichina Zhicheng Technology Ltd. has verified that Respondent is bound by the Hichina Zhicheng Technology Ltd. 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 February 11, 2011, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of March 3, 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.net. Also on February 11, 2011, the Chinese language 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 March 10, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <braineticslearning.net> domain name is confusingly similar to Complainant’s BRAINETICS mark.
2. Respondent does not have any rights or legitimate interests in the <braineticslearning.net> domain name.
3. Respondent registered and used the <braineticslearning.net> domain name 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 under the BRAINETICS mark. Complainant also holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the BRAINETICS mark (e.g., Reg. No. 3,486,052 issued August 12, 2008).
Respondent, lin fusheng, registered the <braineticslearning.net> domain name on May 21, 2010. The disputed domain name resolves to a website that replicates portions of Complainant’s official website, including Complainant’s mark and logo. The resolving website also purports to offer for sale Complainant’s educational 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 claims rights in the BRAINETICS mark through its registration of the mark with the USPTO (e.g., Reg. No. 3,486,052 issued August 12, 2008). The Panel finds this trademark registration sufficiently proves Complainant’s rights in the BRAINETICS mark under Policy ¶ 4(a)(i). 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 Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”). The Panel further finds that it is not necessary for Complainant to hold a trademark registration with the trademark authority in the country in which Respondent resides. See 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 argues that the <braineticslearning.net> domain name is confusingly similar to its BRAINETICS mark. Respondent replicates Complainant’s mark in the disputed domain name and then merely attaches the descriptive term “learning.” Respondent also affixes the generic top-level domain (“gTLD”) “.net” to Complainant’s mark in the disputed domain name. The Panel finds these additions do not negate a finding of confusingly similar. 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 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 Katadyn N. Am. v. Black Mountain Stores, FA 520677 (Nat. Arb. Forum Sept. 7, 2005) (“[T]he addition of the generic top-level domain (gTLD) “.net” is irrelevant for purposes of determining whether a domain name is identical to a mark.”). Consequently, the Panel holds that Respondent’s <braineticslearning.net> domain name is confusingly similar to Complainant’s BRAINETICS mark under Policy ¶ 4(a)(i).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Pursuant to Policy ¶ 4(a)(ii), Complainant must first make a prima facie case showing Respondent lacks rights and legitimate interests in the <braineticslearning.net> domain name. The burden then shifts to Respondent to prove it has rights or legitimate interests in the disputed domain name. The Panel may view Respondent’s failure to submit a Response as evidence that Respondent lacks rights or legitimate interests. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also 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.”). Although Respondent has failed to submit a Response, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
The WHOIS information lists “lin fusheng” as the registrant of the disputed domain name, which the Panel finds is not similar to the <braineticslearning.net> domain name. Without evidence to the contrary, the Panel concludes that Respondent is not commonly known by the <braineticslearning.net> domain name under Policy ¶ 4(a)(i). 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 M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant submits screen shots of the website resolving from the <braineticslearning.net> domain name. These images show a website that prominently features Complainant’s mark and logo. The resolving website also contains text that reads, “Brainetics is a revolutionary system that uses mathematics to teach you how to use two parts of your brain at the same time; one part processes information while the other part stores information.” In addition, Respondent purports to sell Complainant’s educational products. The resolving website provides fields for Internet users to submit their personal and financial information, including fields for a user’s name, address, contact information, and credit card information. The Panel finds that Respondent attempts to offer for sale counterfeit versions of Complainant’s goods. The Panel also finds that Respondent uses the disputed domain name to phish for Internet users’ personal and financial information. Accordingly, the Panel holds that Respondent does not use the <braineticslearning.net> domain name to make a bona fide offering of goods or services under Policy ¶ 4(a)(i). See Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Nat. Arb. Forum Apr. 12, 2002) (“Respondent’s use of the confusingly similar domain name [<hpmilenium.com>] to sell counterfeit versions of Complainant’s [HP] products is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).”); see also Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (finding that using a domain name in a fraudulent scheme to deceive Internet users into providing their credit card and personal information is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use).
As previously discussed, the website resolving from the <braineticslearning.net> domain name displays Complainant’s mark and logo. The resolving website also contains text that describes Complainant’s products. Based on the evidence in the record, the Panel finds that Respondent uses the disputed domain name in an attempt to pass itself off as Complainant. The Panel finds this behavior provides further evidence that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Nokia Corp. v. Eagle, FA 1125685 (Nat. Arb. Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
The <braineticslearning.net> domain name redirects Internet users seeking Complainant’s products and services to a website that offers for sale counterfeit versions of Complainant’s educational goods. As a result, the Panel finds that Respondent’s domain name disrupts Complainant’s business, which constitutes registration and use in bad faith under 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 DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
The Panel presumes that Respondent attempts to profit from its use of the disputed domain name by fraudulently acquiring Internet users’ personal and financial information and offering for sale counterfeit versions of Complainant’s goods. In addition, Respondent creates confusion between its website and Complainant’s mark by prominently displaying Complainant’s mark and logo on the website resolving from the disputed domain name. Finally, Respondent’s <braineticslearning.net> domain name is confusingly similar to Complainant’s BRAINETICS mark. Therefore, the Panel finds that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s BRAINETICS mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. As a result, the Panel finds this behavior provides additional evidence of Respondent’s registration and use of the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See Capital One Fin. Corp. & Capital One Bank v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (“The <capitalonebank.biz> domain name is confusingly similar to Complainant’s mark, it is being used to redirect Internet users to a website that imitates Complainant’s credit application website, and it is being used to fraudently [sic] acquire personal information from Complainant’s clients. Respondent’s use of the domain name supports findings of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”); see also Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that the respondent acted in bad faith by registering the <fossilwatch.com> domain name and using it to sell various watch brands where the respondent was not authorized to sell the complainant’s goods).
The Panel also finds Respondent’s use of a confusingly similar domain name to attempt to phish for Internet users’ personal and financial information amounts to registration and use in bad faith under Policy ¶ 4(a)(iii). See Wells Fargo & Co. v. Maniac State, FA 608239 (Nat. Arb. Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers); 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).
Finally, the Panel finds Respondent’s attempt to pass itself off as Complainant constitutes registration and use in bad faith pursuant to Policy ¶ 4(a)(iii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”); see also Target Brands, Inc. v. JK Internet Servs., FA 349108 (Nat. Arb. Forum Dec. 14, 2004) (finding bad faith because the respondent not only registered Complainant’s famous TARGET mark, but “reproduced . . . Complainant’s TARGET mark . . . [and] added Complainant’s distinctive red bull’s eye [at the domain name] . . . to a point of being indistinguishable from the original.”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
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.net> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: March 21, 2011
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