WPP Properties and Burson-Marsteller v. LvYi
Claim Number: FA1207001452768
Complainant is WPP Properties and Burson-Marsteller (“Complainant”), California, USA. Respondent is LvYi (“Respondent”), Czech Republic.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <burson-marsteller.asia>, registered with Dynadot, LLC.
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 July 10, 2012; the National Arbitration Forum received payment on July 10, 2012.
On July 11, 2012, Dynadot, LLC confirmed by e-mail to the National Arbitration Forum that the <burson-marsteller.asia> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, LLC 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 July 12, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 1, 2012 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@burson-marsteller.asia. Also on July 12, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 August 7, 2012, 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.
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
Complainant makes the following allegations:
1. Complainant, WPP Properties, is the parent company of Complainant, Burson-Marsteller.
2. Complainant owns federal trademark registrations for the MARSTELLER and BURSON-MARSTELLER marks with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,063,412 registered May 20, 19978) and the Office for Harmonization in the International Market (“OHIM”) (Reg. No. 008675341 registered October 5, 2010). See Exhibit A.
3. The services Complainant offers under the BURSON-MARSTELLER mark include public relations, public affairs, digital media, and advertising. Complainant has enjoyed wide recognition of the BURSON-MARSTELLER mark and maintains an Internet presence at the website, <burson-marsteller.com>. Complainant’s domain name was registered in 1999 and is used to conduct global public relations and communications through a network of worldwide offices linking financial and commercial centers.
4. Respondent registered the <burson-marsteller.asia> domain name on May 22, 2012 and the domain name is identical to Complainant’s BURSON-MARSTELLER mark.
5. Respondent has no rights or legitimate interests in the <burson-marsteller.asia> domain name, is not commonly known by the disputed domain name and does not have permission to use Complainant’s BURSON-MARSTELLER mark.
6. Respondent uses the <burson-marsteller.asia> domain name to redirect visitors to a page containing generic hyperlinks to third-party websites. See Exhibit D. Respondent presumably collects “pay-per-click” fees by posting the hyperlinks, which shows that Respondent does not use the domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use.
7. The links Respondent posts at its resolving website compete directly with Complainant’s business. Respondent had actual and constructive knowledge of Complainant’s rights in the <burson-marsteller.asia> domain name.
8. Respondent registered and uses the disputed domain name in bad faith, as demonstrated by Respondent’s efforts to give the impression that it is affiliated with Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a prominent United States company that has been engaged in public relations and related services for many years.
2. Complainant owns federal trademark registrations for the MARSTELLER and BURSON-MARSTELLER marks with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,063,412 registered May 20, 19978) and the Office for Harmonization in the International Market (“OHIM”) (Reg. No. 008675341 registered October 5, 2010).
3. Respondent registered the <burson-marsteller.asia> domain name on May 22, 2012. It resolves to a website offering services competing with those offered by 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."
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.
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.”).
Preliminary Issue – Multiple Complainants
There are two Complainants in this matter: WPP Properties and Burson-Marsteller. Complainants contend that Complainant, WPP Properties, owns Complainant, Burson-Marsteller.
The relevant rules governing multiple complainants are UDRP Rule 3(a) and the National Arbitration Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Organizing Committee for the 2010 Olympic and Paralymic Games and International Olympic Committee v. Hardeep Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Investments, Inc. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in American Family Health Services Group, LLC v. Logan, FA 220049 (Nat. Arb. Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark. But see AmeriSource Corp. v. Park, FA 99134 (Nat. Arb. Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).
As the Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, it will treat them all as a single entity in this proceeding. Nonetheless and for convenience, in this decision the Complainants will be collectively referred to as “Complainant.”
The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant asserts that its trademark registrations with the USPTO (Reg. No. 2,063,412 registered May 20, 19978) and its registration with the OHIM (Reg. No. 008675341 registered October 5, 2010) establish its rights in the BURSON-MARSTELLER mark. The panel in Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005), held that the complainant secured rights in its mark through registration with the USPTO. Likewise, in Orange Glo Int’l, Inc. v. Roswell Int’l Ltd, FA 440119 (Nat. Arb. Forum Apr. 21, 2005), the panel determined that the complainant’s rights in its mark were established by virtue of its registration with the OHIM. The Panel finds the Complainant’s registrations of its BURSON-MARSTELLER mark with the USPTO and the OHIM demonstrate Complainant’s rights in the mark pursuant to Policy ¶ 4(a) (i).
The second question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s BURSON-MARSTELLER mark. Complainant contends that the <burson-marsteller.asia> domain name is identical to its BURSON-MARSTELLER mark because the disputed domain name contains its entire mark. The Panel also notes that the disputed domain name includes the sponsored top-level domain (“sTLD”) “.asia.” The Panel finds that, by using Complainant’s entire mark and attaching only an sTLD, the <burson-marsteller.asia> domain name is identical to the BURSON-MARSTELLER mark under Policy ¶ 4(a) (i). See Novartis Corp. v. PrivateManagementGroup, FA 1366724 (Nat. Arb. Forum February 24, 2011) (stating that the <ritalin.asia> mark was identical to the complainant’s RITALIN mark because the only added component was the top-level domain “.asia”).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a) (ii) and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a) (ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s BURSON-MARSTELLER trademark and to use it in its domain name;
(b) Respondent has then decided to use the domain name to resolve to an unauthorized website with links to other providers of services in competition with those of Complainant;
(c) Respondent has engaged in these activities without the consent or approval
of Complainant;
(d) Complainant contends that Respondent has not been commonly known by the <burson-marsteller.asia> domain name. Complainant argues that the WHOIS information associated with the disputed domain name suggests that Respondent is known by a name other than the disputed domain name. The Panel observes that the WHOIS information identifies “LvYi” as the domain name registrant. Complainant further alleges that Respondent does not have authority to use the BURSON-MARSTELLER mark in any way. In IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006), the panel stated that the respondent did not have rights and legitimate interests in the domain name where it lacked authorization to register domain names using the complainant’s mark. In Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), the panel concluded that the respondent’s WHOIS information did not indicate that the respondent was commonly known by the disputed domain name. The Panel finds that, without authorization from Complainant to use the BURSON-MARSTELLER mark and considering the WHOIS information, Respondent is not commonly known by the <burson-marsteller.asia> domain name under Policy ¶ 4(c) (ii).
(e) Complainant also argues that Respondent uses the <burson-marsteller.asia> domain name to divert Internet traffic to a website containing third-party hyperlinks to competing business and claims that such use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. The Panel finds that posting hyperlinks to commercial entities that compete with Complainant’s business does not demonstrate a bona fide offering of goods or services under Policy ¶ 4(c) (i) or a legitimate noncommercial or fair use under Policy ¶ 4(c) (iii). See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent lists the <burson-marsteller.asia> domain name for sale and provides evidence of screenshots that offer the domain name for sale. See Exhibit D. The panel in Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) held that offering a domain name for sale demonstrates bad faith. Accordingly, the Panel concludes that, by offering the <burson-marsteller.asia> domain name for sale at the resolving website, Respondent registered and uses the disputed domain name in bad faith pursuant to Policy ¶ 4(v) (i).
Secondly, Complainant alleges that Respondent’s registration and use of the <burson-marsteller.asia> domain name is in bad faith because Respondent makes a profit by displaying hyperlinks on which its website visitors may click. Complainant argues that receiving pay-per-click fees as a result of using Complainant’s mark improperly to increase traffic to the resolving website constitutes bad faith. In AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000), the panel concluded that, because the respondent’s domain name resolved to a website that featured hyperlinks to websites whose offered services were similar to those of complainant’s, the respondent registered and used the domain name in bad faith. The Panel determines that, by taking advantage of Complainant’s mark by registering a confusingly similar domain name in order to attract Internet users and make a commercial profit, Respondent registered and uses the <burson-marsteller.asia> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Thirdly, Complainant contends that Respondent was or should have been aware of the BURSON-MARSTELLER mark and Complainant’s rights in the mark. Complainant argues that its brand is well-recognized and that it is inconceivable that Respondent would have been unaware of Complainant’s mark. Further, Complainant alleges that its multiple registrations of the mark should have been apparent if Respondent performed a “Google” search of the mark prior to registering the <burson-marsteller.asia> domain name. The Panel finds that mere constructive knowledge of a mark does not adequately support a finding of bad faith registration under Policy ¶ 4(a) (iii). See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith). The Panel determines, however, that the disputed domain name is identical to the BURSON-MARSTELLER mark belonging to Complainant. Based on this determination, the Panel concludes that Respondent had actual knowledge of the BURSON-MARSTELLER mark and the Panel consequently finds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a) (iii). See Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii).").
Fourthly, Complainant claims that the disputed domain name is “so obviously connected with such a well-known name and service” that Respondent’s registration demonstrates opportunistic bad faith. The Panel concludes that the clear connection of the <burson-marsteller.asia> domain name with Complainant’s BURSON-MARSTELLER mark is evidence that Respondent acted with opportunistic bad faith under Policy ¶ 4(a)(iii) when it registered the disputed domain name. See Parfums Christian Dior v. Quintas & Christiandior.net, D2000-0226 (WIPO May 17, 2000) (stating that the disputed domain names were “so obviously connected with such a well-known name and products that its very use by someone with no connection with the products suggests opportunistic bad faith.”)
Fifthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the BURSON-MARSTELLER mark and in view of the conduct that Respondent engaged in when using it, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <burson-marsteller.asia> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: August 8, 2012
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