Interbond Corporation of America d/b/a Brandsmart U.S.A. v. Above.com Domain Privacy
Claim Number: FA1210001469343
Complainant is Interbond Corporation of America d/b/a Brandsmart U.S.A. (“Complainant”), represented by Scott R. Austin of Gordon & Rees, LLP, Florida, USA. Respondent is Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <brandsmartstore.com>, registered with ABOVE.COM PTY LTD.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically October 26, 2012; the National Arbitration Forum received payment October 30, 2012.
On October 29, 2012, ABOVE.COM PTY LTD. confirmed by e-mail to the National Arbitration Forum that the <brandsmartstore.com> domain name is registered with ABOVE.COM PTY LTD. and that Respondent is the current registrant of the name. ABOVE.COM PTY LTD. verified that Respondent is bound by the ABOVE.COM PTY LTD. registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 7, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 27, 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@brandsmartstore.com. Also on November 7, 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 December 11, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.
Complainant is a consumer electronics retailer and uses the BRANDSMART U.S.A. mark in connection with its retail store services. Complainant opened its first store in 1977, and currently operates stores both online at its website at the <brandsmart.usa.com> domain name and at storefront locations. Complainant provides evidence of a trademark registration for its BRANDSMART U.S.A. mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,754,384 registered February 23, 1993). See Annex 1.
Respondent registered the <brandsmartstore.com> domain name, which resolves to a website that is parked and includes links to third party websites, some of which resolve to appliance manufacturers and retailers that compete with Complainant’s business. Respondent is the parking services provider of the parked webpage itself. Respondent does not use the <brandsmartstore.com> domain name to make a bona fide offering of goods or services or a legitimate noncommercial or fair use. The WHOIS information for the <brandsmartstore.com> domain name demonstrates that Respondent is not commonly known by the domain name. Respondent registered and uses the <brandsmartstore.com> domain name in bad faith by reaping a commercial gain as a result of Respondent’s unfair capitalization of Complainant’s BRANDSMART U.S.A. mark. Respondent is the parking services provider of the parked webpage itself.
The Panel notes that Respondent registered the <brandsmartstore.com> domain name on May 31, 2012.
The Complainant established that it has rights in the mark used in its entirety within the disputed domain name.
The disputed domain name is confusingly similar to Complainant’s protected mark.
The Respondent has no rights to or legitimate interests in the disputed domain name containing Complainant’s protected mark.
The Respondent registered and used the disputed domain name in bad faith.
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 Complainant to 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.
Given 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 will draw such inferences as the Panel 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.”).
Identical to or Confusingly Similar:
Complainant asserts that it owns rights in the BRANDSMART U.S.A. mark due to its trademark registration with the USPTO (Reg. No. 1,754,384 registered February 23, 1993). In Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005), the panel stated that trademark registration with the USPTO adequately established rights under the Policy. The Panel likewise finds that Complainant’s rights in the BRANDSMART U.S.A. mark are shown by its USPTO registration pursuant to Policy ¶ 4(a)(i). Further, the Panel determines that Complainant is not required, under Policy ¶ 4(a)(i), to register its mark in the country of Respondent’s residence. See 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 contends that the <brandsmartstore.com> domain name is confusingly similar to Complainant’s BRANDSMART U.S.A. mark, because the domain name uses the BRANDSMART portion of Complainant’s mark, and adds the generic term “store.” The Panel observes that the domain name removes the word “U.S.A.” from Complainant’s mark and includes the generic top-level domain (“gTLD”) “.com.” The Panel finds that removal of the “U.S.A.” portion of complainant’s mark, and addition of the generic term “store” and a gTLD, to the <brandsmartstore.com> domain name do not distinguish the disputed domain name; it is confusingly similar to Complainant’s BRANDSMART U.S.A. mark pursuant to Policy ¶ 4(a)(i). See WestJet Air Ctr., Inc. v. W. Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding that the <westjets.com> domain name is confusingly similar to the complainant’s mark, where the complainant holds the WEST JET AIR CENTER mark); see also Body Shop Int’l PLC v. CPIC NET, D2000-1214 (WIPO Nov. 26, 2000) (finding that the domain name <bodyshopdigital.com> is confusingly similar to the complainant’s THE BODY SHOP trademark); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (holding that attaching a gTLD is “unable to create a distinction capable of overcoming a finding of confusing similarity”).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights to or Legitimate Interests:
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 of proof shifts to Respondent to show it does have such 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.”).
Complainant alleges that Respondent could not be commonly known by the <brandsmartstore.com> domain name due to the registrant being identified by a nominally different identity in the WHOIS information. The Panel notes that the WHOIS information discloses “Above.com Domain Privacy” as the registrant. See Annex 6. The Panel finds that the WHOIS information provides evidence that Respondent is not commonly known by the <brandsmartstore.com> domain name under Policy ¶ 4(c)(ii). See 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 makes the assertion also that Respondent’s use of the <brandsmartstore.com> domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use, because Respondent uses a monetized, parked webpage that links to websites of Complainant’s competitors, from which Respondent makes a profit. The panel in H-D Mich. Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) found that the respondent did not use the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use, because the respondent created a website resolving from the domain names featuring links to various third parties whose products and services competed with those of the complainants. The Panel similarly finds that Respondent’s use of its resolving website, featuring hyperlinks to many of Complainant’s competitors, is 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).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant alleges that Respondent registered and used the <brandsmartstore.com> domain name in bad faith because Respondent attempts to generate revenue by driving traffic to its website through its use of a confusingly similar domain name to Complainant’s registered mark. Complainant argues that Respondent improperly capitalizes on consumer confusion between Respondent’s domain name and Complainant’s mark that draws Internet users to Respondent’s website, where “pay-per-click” hyperlinks are displayed. The Panel finds that Respondent’s activity at the resolving website to earn a commercial profit by confusing consumers and attracting Internet traffic to its website is evidence that Respondent registered and uses the <brandsmartstore.com> domain name in bad faith under Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be misled to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”).
Complainant contends as well that Respondent uses a parking service to host the webpage found at the <brandsmartstore.com> domain name, and further, that Respondent is also the owner of the parking service hosting the website. Complainant argues that the domain name parking was done in bad faith to purposefully increase traffic to the resolving website. In Gold Medal Travel Grp. plc v. Kruzicevic, D2007-1902 (WIPO Mar. 12, 2008), the panel held that where a domain name is parked, the registrant is responsible for the content appearing at the resolving website. The Panel finds that Respondent, as both the registrant and the parking services provider, is ultimately responsible for the hyperlinks posted at the resolving website and the Panel therefore finds that Respondent registered and uses the <brandsmartstore.com> domain name in bad faith under Policy ¶ 4(a)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and uses the disputed domain name in bad faith; Complainant satisfied the elements of ICANN 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 <brandsmartstore.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: December 19, 2012.
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page