Brainetics, LLC v. Mike Man
Claim Number: FA1106001394518
Complainant is Brainetics, LLC (“Complainant”), represented by Matthew K. Organ, Illinois, USA. Respondent is Mike Man (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <braineticsshop.com>, registered with GoDaddy.com.
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 June 20, 2011; the National Arbitration Forum received payment on June 20, 2011.
On June 22, 2011, GoDaddy.com confirmed by e-mail to the National Arbitration Forum that the <braineticsshop.com> domain name is registered with GoDaddy.com and that Respondent is the current registrant of the name. GoDaddy.com has verified that Respondent is bound by the GoDaddy.com 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 June 23, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 13, 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@braineticsshop.com. Also on June 23, 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 July 18, 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 <braineticsshop.com> domain name is confusingly similar to Complainant’s BRAINETICS mark.
2. Respondent does not have any rights or legitimate interests in the <braineticsshop.com> domain name.
3. Respondent registered and used the <braineticsshop.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Brainetics, LLC, owns the BRAINETICS mark which it uses in connection with the creation, marketing, and distribution or educational DVDs and other educational materials. Complainant uses the <brainetics.com> domain name in connection with these goods and services. Complainant has registered the BRAINETICS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,486,052 registered August 12, 2008).
Respondent, Mike Man, registered the <braineticsshop.com> domain name on May 29, 2011. The disputed domain name resolves to a website which sells counterfeit products while attempting to pass itself off as Complainant.
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.
Panels have found that the registration of a mark with a federal trademark authority is sufficient to establish rights in a mark. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark office (‘USPTO’)”). Furthermore, the registration need not be in the respondent’s jurisdiction to maintain rights there. 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); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Complainant has provided the Panel with evidence of registration with the USPTO (Reg. No. 3,486,052 issued August 12, 2008). The Panel finds that Complainant has established rights in the BRAINETICS mark under Policy ¶ 4(a)(i).
Complainant contends that the disputed domain name is confusingly similar to the BRAINETICS mark. The addition of a generic top-level domain (“gTLD”) makes no difference in determining whether a domain name is confusingly similar to a complainant’s mark. See Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”); 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 addition of a generic term is likewise insufficient to distinguish a domain name from a mark. See L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the generic word “shop” with the complainant’s registered mark “llbean” does not circumvent the complainant’s rights in the mark nor avoid the confusing similarity aspect of the ICANN Policy); 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)). Respondent’s <braineticsshop.com> domain name is only differentiated from Complainant’s BRAINETICS mark by the addition of the gTLD “.com” and the addition of the generic term “shop.” As such, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) is met.
Complainant contends that Respondent lacks rights and legitimate interests in the disputed domain name. Once a complainant makes an assertion and makes a prima facie case in support of the assertion, the burden shifts to the respondent to refute the claims against it. 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 F. Hoffmann-La Roche AG v. Di Salvatore, D2006-1417 (WIPO Feb. 1, 2007) (“Proper analysis of paragraph 4(a)(ii) of the Policy shows that the burden of proof shifts from the Complainant to the Respondent once the Complainant has made out a prima facie case that the Respondent has no rights or interests in the domain names.”). Given Respondent’s failure to submit a response to the Complaint, the Panel infers that Respondent lacks rights and 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.”); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”). Nevertheless, as Complainant has made a prima facie case, the Panel will review the evidence on record to determine if Respondent does have rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent is not commonly known by the disputed domain name. Respondent is not affiliated with Complainant or Complainant’s mark and is not authorized to be using the BRAINETICS mark in any way. Additionally, the WHOIS information for the <braineticsshop.com> domain name lists “Mike Man” as the domain name registrant. See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); see also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”). The Panel thus finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
The use of a domain name must be for either a bona fide offering of goods or services or a legitimate noncommercial or fair use. Panels have found that the use of a disputed domain name to sell counterfeit products is neither of the protected uses of domain names. See Skechers U.S.A., Inc. and Skechers U.S.A, Inc. II v. Zheng, FA 1388961 (Nat. Arb. Forum July 1, 2011) (finding that a respondent’s attempt to use a disputed domain name to sell counterfeit goods was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use); see also Max Mara Fashion Grp. S.r.l. v. Lee, FA 1391129 (Nat. Arb. Forum July 7, 2011)(“Respondent’s sale of counterfeit versions of Complainant’s merchandise via the disputed domain name is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.”). Respondent’s use of the disputed domain is solely for the sale of products which falsely purport to be Complainant’s products. The Panel therefore finds that Respondent’s use of the disputed domain name was neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Panels have found that a respondent attempting to pass itself off as the complainant is evidence of bad faith and is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. See 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); see also Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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).”). Respondent displays Complainant’s mark prominently on the <braineticsshop.com> domain name and advertises counterfeit products as though they are products associated with the BRAINETICS mark. Therefore, the Panel finds that Respondent’s use of the disputed domain name was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii).
Panels have previously found that the use of a disputed domain name to sell counterfeit versions of a complainant’s products disrupts the complainant’s business. See Brainetics, LLC v. Zhang, FA 1389740 (Nat. Arb. Forum June 22, 2011) (“The Panel finds that respondent’s use of the disputed domain name to sell counterfeit versions of Complainant’s products constitutes bad faith registration and use under Policy ¶ 4(b)(iii).”); see also CliC Goggles, Inc. v. iPage Hosting / Domain Manager, FA 1389736 (Nat. Arb. Forum June 28, 2011) (finding that resolving Internet users to a website selling counterfeit versions of a complainant’s products was disruptive to the complainant’s business and thus evidence of the respondent’s bad faith registration and use of the domain name under Policy 4(b)(iii)). Respondent uses the <braineticsshop.com> domain name to sell counterfeit versions of Complainant’s educational goods and services. Therefore, the Panel finds that Respondent’s registration and use of the disputed domain name has disrupted Complainant’s business in accordance with Policy ¶ 4(b)(iii).
Complainant contends that Respondent’s registration and use of the disputed domain name was for commercial gain. Respondent’s confusingly similar domain name resolves to a website which sells counterfeit versions of Complainant’s products. Panels have previously held that selling counterfeit goods on a domain name which seeks to take advantage of Internet users’ mistake of presumed association with a complainant shows bad faith registration and use. See C. & J. Clark Int’l Ltd. v. Shanhua, FA 1388854 (Nat. Arb. Forum June 17, 2011) (finding the respondent to have registered and used the disputed domain name in bad faith by selling counterfeit products and capitalizing on the likelihood that Internet users may find a respondent’s website whilst searching for the complainant’s website, become confused as to the affiliation with or sponsorship of the disputed domain name to the complainant, and purchase goods through the disputed domain name rather than through the complainant); see also CliC Goggles, Inc. v. iPage Hosting / Domain Manager, FA 1389736 (Nat. Arb. Forum June 28, 2011) (finding that where a respondent benefits from the confusion caused by the registration and use of a confusingly similar domain name by selling counterfeit versions of the complainant’s goods and services is evidence of bad faith registration and use of the domain name under Policy ¶ 4(b)(iv)). The Panel thus finds that Respondent’s registration and use of the disputed domain name was done for commercial gain under Policy ¶ 4(b)(iv).
Panels have found that respondents demonstrate bad faith where the disputed domain name registered and used attempts to pass off as the complainant’s website or as being affiliated with or sponsored by the complainant. See C. & J. Clark Int’l Ltd. v. Shanhua, FA 1388854 (Nat. Arb. Forum June 17, 2011) (finding that a respondent’s actions constituted bad faith under Policy ¶ 4(a)(iii) where the respondent intended to pass off the disputed domain names and resolving website as being affiliated with the complainant’s mark); see also Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith). Respondent displays Complainant’s mark and logo prominently on the disputed domain name. Additionally, the layout of the resolving website as well as much of the content is similar and is intended to instill confusion in Internet users as to the affiliation of the disputed domain name and Complainant. Therefore, the Panel finds that Respondent’s attempt to pass off the <braineticsshop.com> domain name further demonstrates bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Policy ¶ 4(a)(iii) is 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 <braineticsshop.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: August 2, 2011
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