Brainetics, LLC v. Tamara Session
Claim Number: FA1108001401954
Complainant is Brainetics, LLC (“Complainant”), represented by Matthew K. Organ, Illinois, USA. Respondent is Tamara Session (“Respondent”), Oklahoma, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <brainetics4u.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 Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 4, 2011; the National Arbitration Forum received payment on August 4, 2011.
On August 5, 2011, GoDaddy.com confirmed by e-mail to the National Arbitration Forum that the <brainetics4u.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 August 8, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 29, 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@brainetics4u.com. Also on August 8, 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.
A Response was received on August 30, 2011 but was determined to be deficient. The Response was deficient in that it was received late, and the annexes were not separated from the Response document.
A timely Additional Submission was received from Complainant on September 6, 2011 according to The Forum's Supplemental Rule 7.
On September 6, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant Brainetics, LLC contends that:
1. The domain name <brainetics4u.com>, which is registered in the name of Respondent, is confusingly similar to Complainant’s registered trademark BRAINETICS (“the BRAINETICS mark”) in which Complainant has rights.
2. Respondent does not have any rights or legitimate interests in the <brainetics4u.com> domain name.
3. Respondent registered and is using the domain name <brainetics4u.com> in bad faith.
B. Respondent
Respondent Tamara Session makes no challenge to the Complainant’s registered BRAINETICS mark or to other aspects of Respondent’s case. However, she contends that when she acquired the disputed domain name and certain products to sell, she believed that she was doing so legitimately. She has since realized that this was not the case and that she had been misled. She is now willing to transfer the disputed domain name to Complainant.
C. Additional Submissions
Complainant in its Additional Submission objects to the admission of the Response on technical grounds and in addition contends that Respondent has in substance admitted the essential elements of Complainant’s case.
Complainant is a company that creates, markets and distributes educational DVDs.
Complainant is the registered owner of the trademark Registration Number 3,486,052 in the United States Patent and Trademark Office for BRAINETICS and registered on August 12, 2008.
Respondent registered the <brainetics4u.com> domain name on March 27, 2011.
Preliminary Issue: Deficient Response
Respondent’s Response was received late in the required electronic format and the exhibits were not separated from the Response. Thus the National Arbitration Forum did not consider the Response to be in compliance with ICANN Rule 5. However, the Panel, in its discretion, may choose whether or not to accept and consider this Response. See Six Continental Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003) (holding that the respondent’s failure to submit a hard copy of the response and its failure to include any evidence to support a finding in its favor placed the respondent in a de facto default posture, permitting the panel to draw all appropriate inferences stated in the complaint); see also J.W. Spear & Sons PLC v. Fun League Mgmt., FA 180628 (Nat. Arb. Forum Oct. 17, 2003) (finding that where respondent submitted a timely response electronically but failed to submit a hard copy of the response on time, “[t]he Panel is of the view that given the technical nature of the breach and the need to resolve the real dispute between the parties that this submission should be allowed and given due weight”).
In the exercise of its discretion, the Panel has on this occasion decided to accept and consider the Response as it contains information that is useful for the Panel to consider in coming to its conclusion and it is in the interests of both parties to have this matter finalised as quickly as possible.
Complainant’s Additional Submission
The Panel has also taken into account the timely Additional Submission of Complainant and it has influenced its decision, as it contains information that is useful for the Panel to consider in coming to its conclusion.
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."
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.
However, it is clear from the Complaint and the above summary of the Response that this matter is now a request for a consent order that the disputed domain name be transferred from Respondent to Complainant. That is so because, first, Complainant asks for an order that the disputed domain name be transferred to it for the reasons summarized above in its contentions and expanded in the Complaint and evidence submitted with it. Secondly, Respondent for her part has said that when she acquired the disputed domain name and certain products to sell, she believed that she was doing so legitimately. She has since realized that this was not the case and that she had been misled. She is now willing to transfer the disputed domain name to Complainant. She has expressed this view in the following words: “ I am more than willing to take the site down and give them (Complainant) the name however the domain name is locked due to this case.” The Panel takes that statement as an unequivocal acceptance that Respondent agrees that there should be an order transferring the domain name to Complainant. Both parties have therefore consented to this course being followed.
The question then arises as to whether the Panel can and should make such an order.
The same issue came before the Panel as presently constituted in Victoria’s Secret Stores Brand Mgmt., Inc. v. Diarrhea Leona, FA 393866 (Nat.
Arb. Forum, June 28, 2011), and on that occasion the Panel cited and applied the following statement from the similar decision in Digg Inc. v. Overeem, FA 836770 (Nat. Arb. Forum Dec. 20, 2006), in which the present panelist also participated and which is adopted here:
“It is open to the Panel when faced with such a situation to forgo the usual UDRP analysis of the three issues set out above and simply make an order for the transfer of the domain name to Complainant. That course was followed in Boehringer Ingelheim Int’l GmbH v. modern Ltd-Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003). It was also followed in PSC Mgmt. Ltd. P’ship v. PSC Mgmt. Ltd. P’ship, FA 467747 (Nat. Arb. Forum June 6, 2005), and in Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat. Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant…Since the requests of the parties in this case are identical, the panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”). The same course was followed recently by the panel as presently constituted in Norgren, Inc. v. Norgren, Inc., FA 670051 (Nat. Arb. Forum May 23, 2006), and Diners Club Int’l Ltd. v. Nokta Internet Techs., FA 720824 (Nat. Arb. Forum July 24, 2006), and also by the panel in Body Shop Int’l plc v. Agri, Lacus, & Caelum LLC, FA 679564 (Nat. Arb. Forum May 25, 2006). The Panel respectfully adopts the position as expressed in Body Shop Int’l plc v. Agri, Lacus, & Caelum LLC, supra:
Consistent with a general legal principle governing arbitrations as well as national court proceedings, this Panel holds that it cannot issue a decision that would be either less than requested, or more than requested by the parties. Because both Complainant and Respondent request the transfer of the disputed domain name to Complainant, the Panel must recognize the common request of the two parties.
Indeed, as has often been said, it would be unwise to make any other findings in case the same issues were to arise in later proceedings. Accordingly, the Panel will not make any findings of fact or compliance or otherwise with respect to the detailed provisions of the Policy, but will make the only order that is appropriate in the circumstances, which is an order for the transfer of the domain name to Complainant.
For the foregoing reasons which are equally applicable to the present case the Panel will not make any findings but will make the only order that is appropriate in this case, which is an order transferring the disputed domain name to Complainant.
The Panel concludes that for the above reasons relief shall be GRANTED.
Accordingly, it is Ordered that the <brainetics4u.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC,
Panelist
Dated: September 7, 2011
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