national arbitration forum

 

DECISION

 

Brainetics, LLC v. Blaze Media Management / Marie George

Claim Number: FA1105001389741

 

PARTIES

Complainant is Brainetics, LLC (“Complainant”), represented by Matthew K. Organ, Illinois, USA.  Respondent is Blaze Media Management / Marie George (“Respondent”), New Jersey, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <brainetics.biz>, registered with GoDaddy.com, Inc.

 

PANEL

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.

 

Houston Putnam Lowry, Chartered Arbitrator, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on May 19, 2011; the National Arbitration Forum received payment on May 19, 2011.

 

On May 21, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <brainetics.biz> 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 May 25, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 14, 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@brainetics.biz.  Also on May 25, 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 June 16, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

Complainant Brainetics, LLC ("Complainant") is a growing company that creates, markets and distributes educational DVDs and other educational materials including workbooks, manuals, playing cards and flashcards, all sold under the trademark BRAINETICS (the "Mark").

 

Complainant has been using the Mark and various logos in connection with the foregoing products since at least as early as 2007.  Given the importance and value of its Mark, Complainant obtained a registration for the Mark with the United States Patent and Trademark Office, U.S. Reg. No. 3,486,052.  Complainant's registration is in full force and effect.

 

The original content on Complainant's DVDs and other educational materials are protected under the Copyright Laws of the United States, 17 U.S.C. §101, et seq.

 

Complainant has expended considerable time, money and resources developing, promoting and advertising its Mark through various media in interstate commerce, such that the Mark has met with widespread public approval.  As a result of the extensive sales, advertising and promotion of Complainant's products and the Mark, and as a result of Complainant's quality standards, the Mark has earned significant goodwill and public recognition.

 

Complainant promotes and advertises its DVDs and other educational materials on its website located at brainetics.com, commercials and infomercials broadcast throughout the United States and abroad, on direct to consumer broadcast networks such as the Home Shopping Network, and in nationwide print media.

 

The Mark is a fanciful word-mark which is inherently distinctive and, therefore, strong.  That strength has been enhanced by Complainant's extensive advertising and promotion, as well as its widespread sales of DVDs and other educational materials.  Complainant has sold hundreds of thousands of its DVDs and other educational materials.

 

FACTUAL AND LEGAL GROUNDS

 

This Complaint is based on the following factual and legal grounds:

Confusing Similarity Exists Between Complainant's Mark and Respondent's Domain Name

Respondent has registered the domain name brainetics.biz (the "Domain Name").  Respondent registered the Domain Name on February 15, 2011 – years after Complainant began using, and obtained a registration for the Mark.  Respondent's second-level domain name is confusingly similar to Complainant's Mark because the Domain Name is identical to Complainant's Mark.  Respondent's use of the ".biz" top-level domain name does not alleviate any confusion.  See, e.g., Orange Glo Int'l, Inc. v. Green, FA0501000404469 (Nat. Arb. Forum Feb. 28, 2005) ("the addition of a generic top-level domain [did] not distinguish the <oxyclean.info> domain name from Complainant's OXICLEAN mark."); Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO Jun. 25, 2000) (top-level domain names like ".net" or ".com" do not affect domain names for the purpose of determining whether they are identical or confusingly similar).

 

The confusion that necessarily exists between Respondent's brainetics.biz domain name and Complainant's Mark is magnified by the fact that the brainetics.biz webpage was a direct copy of Complainant's legitimate website prior to the time that Complainant placed Registrant on notice of its intention to bring this action.  Any consumer arriving at brainetics.biz would naturally be misled into believing that he or she was dealing directly with Complainant.

 

Respondent Has No Legitimate Interest In The Domain Name

Upon information and belief, neither Respondent nor any business operated by Respondent, nor any product offered by Respondent, has been commonly known by the Domain Name.  Respondent's use of the Mark on Respondent's webpages is wholly unauthorized.  Respondent, therefore, has no legitimate rights in the Domain Name.  See Gallup Inc. v. Amish Country Store, FA96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that respondent did not have rights in a domain name where respondent was not known by the mark).

 

Further, Respondent should be considered to have no rights or legitimate interest in the Domain Name because Respondent's registration of the Domain Names is confusingly similar to Complainant's federally registered Mark.  See Slep-Tone Entertainment Corp. v. Dremann, FA2002000093636 (Nat. Arb. Forum Mar. 13, 2000) (finding, based on respondent's infringement of complainant's mark, that respondent had no rights or legitimate interest).

 

Respondent's Bad Faith Conduct

On or about May 4, 2011, counsel for Complainant sent an email to Respondent demanding that Respondent cease its unauthorized and infringing conduct.  As of the date of this filing, Complainant has received no response from Respondent, and thus Respondent has refused, without justification, to take the requisite steps to transfer the Domain Name to Complainant.  Respondent's decision to willfully ignore and disregard Complainant's rights is evidence of bad faith registration and use.  See Digi Int’l v. DDI Sys., FA124506 (Nat. Arb. Forum Oct. 24, 2002) (finding that "there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively").

 

Respondent's Domain Name should be considered to have been registered and used in bad faith because Respondent failed to discharge its responsibility to select, register and use a domain name that does not infringe the rights of a third-party, namely Complainant, in violation of Paragraph 2 of the ICANN Policy.  See Slep-Tone Entertainment Corp. v. Dremann, FA2002000093636 (Nat. Arb. Forum Mar. 13, 2000).

 

Respondent's unauthorized reproduction and display of Complainant's website content originally published at www.brainetics.com is in violation of Complainant's copyrights, including its rights under 17 U.S.C. §101, et seq., and other international copyright laws.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant Brainetics LLC is a provider of educational materials for schools and individuals.  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).  Complainant has used its mark continuously and in support of its marketing and promotional materials for years.

 

Respondent Blaze Media Management / Marie George registered the disputed domain name on February 15, 2011.  The disputed domain resolves to a site which mimics Complainant own website and even copies the logos and company name, displaying them prominently on the site. 

 

DISCUSSION

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 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.

 

Identical and/or Confusingly Similar

 

Complainant contends 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). Complainant has provided the registration certificate from the USPTO verifying that it owns the registration.  Therefore, the Panel finds Complainant has established its rights in the BRAINETICS mark under Policy ¶4(a)(i) by registering the mark with the USPTO.  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.”).

 

Complainant also contends Respondent’s disputed domain name is identical to its BRAINETICS mark.  The disputed domain name includes the entire mark, while only adding the top-level domain “.biz.”  The Panel finds the addition of a top-level domain name does not sufficiently differentiate the disputed domain name from the mark, making the two identical under Policy ¶4(a)(i).  See Continental Airlines, Inc. v. Vartanian, FA 1106528 (Nat. Arb. Forum Dec. 26, 2007) (finding that the domain name <continentalairlines.biz> is identical to the complainant’s CONTINENTAL AIRLINES mark); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).

 

The Panel finds Policy ¶4(a)(i) established.

 

Rights or Legitimate Interests

 

Under Policy ¶4(a)(ii), the burden of proving rights or legitimate interests may shift if Complainant is able to make its initial prima facie case showing Respondent lacks rights or legitimate interests in the disputed domain name.  The Panel finds Complainant has met that burden in this case and Respondent now bears the burden of proving it has rights or legitimate interests in the disputed domain name.  See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”).  Respondent has not only failed to rebut Complainant’s prima facie case, but Respondent has failed to file any response whatsoever.  This allows the Panel to assume Respondent lacks 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.”).  The Panel will still examine the record in its entirety to determine whether Respondent has rights or legitimate interests in the disputed domain name according to the factors listed in Policy ¶4(c).

 

Complainant asserts Respondent is not commonly known by the disputed domain name.  The WHOIS information identifies the registrant as “Blaze Media Management / Marie George,” which the Panel finds does not demonstrate any kind of relationship between Respondent and the disputed domain name. Thus, the Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶4(c)(ii) based upon the WHOIS information and the lack of additional evidence in the record showing that it is commonly known as such.  See 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); 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 also asserts Respondent is not making a bona fide offer of goods or services or a legitimate noncommercial or fair use from the disputed domain name.  Respondent’s disputed domain name resolves to a site which is virtually identical to Complainant’s own commercial website in an apparent attempt to pass itself off as Complainant.  The Panel finds this usage does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶4(c)(i) and Policy ¶4(c)(iii).  See Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as 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 pursuant to Policy ¶4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website); see also MO Media LLC v. NeXt Age Technologies LTD, FA 220031 (Nat. Arb. Forum Feb. 18, 2004) (finding the respondent lacked rights and legitimate interests in the disputed domain name when the respondent copied the complainant’s websites in their entirety at the disputed domain names).

 

The Panel finds Policy ¶4(a)(ii) established.

 

Registration and Use in Bad Faith

 

Under Policy ¶4(a)(iii), Complainant is required to prove bad faith registration and use on the part of Respondent.  To do so, Complainant may use the elements enumerated in Policy ¶4(b).  However, the Panel finds this is not an exclusive list and is merely an illustration of factors that may support such a finding.  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”).  Complainant may use the totality of the circumstances surrounding the registration and use of a disputed domain name to prove Respondent did register and is using it in bad faith.  See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (“The requirement in the ICANN Policy that a complainant prove that domain names are being used in bad faith does not require that it prove in every instance that a respondent is taking positive action. Use in bad faith can be inferred from the totality of the circumstances even when the registrant has done nothing more than register the names.”).

 

Complainant claims Respondent’s attempts to pass itself off as Complainant provide affirmative evidence of Respondent’s bad faith registration and use of the disputed domain name.  Respondent’s disputed domain name resolves to a site which is identical to Complainant’s own website, prominently displaying marks associated with Complainant and Complainant’s logo.  Respondent’s web site appears to have ecommerce capability, suggesting it is used for phishing.  The Panel finds Respondent’s use of the disputed domain name under these conditions constitutes bad faith registration and use under Policy ¶4(a)(iii).  See 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.”); see also DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that the respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that the complainant endorsed and sponsored the respondent’s website).

 

The Panel finds Policy ¶4(a)(iii) established.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <brainetics.biz> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Houston Putnam Lowry, Chartered Arbitrator, Panelist

Dated: June 23, 2011