national arbitration forum

 

DECISION

 

Brainetics LLC v. Profile Group / DNS Manager

Claim Number: FA1302001486915

 

PARTIES

Complainant is Brainetics LLC (“Complainant”), represented by Lindsay M. Hagy of Goldberg Kohn Ltd., Illinois, USA. Respondent is Profile Group / DNS Manager (“Respondent”), represented by G. Hammock, Delaware, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <brain-etics.com>, registered with eNom, 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.

 

Beatrice Onica Jarka as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 25, 2013; the National Arbitration Forum received payment on February 25, 2013.

 

On February 25, 2013, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <brain-etics.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 February 26, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 18, 2013 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@brain-etics.com. Also on February 26, 2013, 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.

 

A timely Response was received and determined to be complete on March 18, 2013.

 

On April 2, 2013, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Beatrice Onica Jarka 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.  Complainant alleges;

·         Complainant has rights in the BRAINETICS mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,486,052 registered August 12, 2008).

·         Complainant has earned significant goodwill and public recognition for the BRAINETICS mark through the time, money and resources that Complainant has spent on its business.

·         Respondent’s <brain-etics.com> domain name is confusingly similar to Complainant’s BRAINETICS mark.

·         Respondent registered the disputed domain name on January 31, 2011.

·         Respondent’s <brain-etics.com> domain name incorporates Complainant’s BRAINETICS mark in its entirety with the addition of a hyphen separating “brain” and “etics.”

·         Respondent also adds the generic top-level domain (“gTLD”) “.com.”

·         Respondent has no rights or legitimate interests in the <brain-etics.com> domain name.

·         Respondent is not commonly known by the disputed domain name.

·         Respondent’s sole purpose in using the <brain-etics.com> domain name is to financially profit from redirecting Internet users to third-party websites.

·         Respondent’s page is a parked page featuring only third-party websites.

·         Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial fair use.

·         Respondent is earning pay-per-click fees through the links present on its website.

·         Respondent is engaging in typo squatting when it attempts to take advantage of a common error that Internet users may make when attempting to find Complainant’s business online.

·         Respondent registered and uses the <brain-etics.com> domain name in bad faith.

·         Respondent’s typo squatting behavior indicates bad faith.

·         Respondent is using the <brain-etics.com> domain name to redirect Internet users to third party websites and away from Complainant’s business.

·         Respondent is attempting to profit from Internet user’s confusion and is thus disrupting Complainant’s business.

·         Respondent failed to respond to the cease and desist letter sent by Complainant, dated January 31, 2013.

B.  By his Response, Respondent alleges;

·         Respondent was unaware that its <brain-etics.com> domain name allegedly infringes on Complainant’s business.

·         Respondent has not received any communications from Complainant prior to its filing this UDRP complaint.

·         If Respondent would have known about Complainant’s concerns, it would have taken immediate action to address them.

·         Respondent replied to Complainant asking it to accept its offer of free and immediate transfer of the <brain-etics.com> domain name.

·         Complainant’s response indicated that they would not accept the transfer unless certain unduly burdensome conditions were met.

·         Respondent has acted in good faith by immediately attempting to contact Complainant and offering free and immediate transfer of the disputed domain name.

 

FINDINGS

Respondent registered a domain name that is confusingly similar to the Complainant’s trademark. Respondent’s use of the disputed domain name attempts to profit from Internet user’s confusion and thus disrupts Complainant’s business.

 

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."

 

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.

 

PRELIMINARY ISSUE – CONSENT TO TRANSFER

 

Respondent consents to transfer the <brain-etics.com> domain name to Complainant. However, after the initiation of this proceeding, eNom, Inc. placed a hold on Respondent’s account and therefore Respondent cannot transfer the disputed domain name while this proceeding is still pending. On the other side, the Complainant has not implicitly consented in its Complaint to the transfer of the disputed domain name without a decision on the merits by the Panel.

In the UDRP Panels practice, there are different approaches of the consent-to-transfer going from considering that such consent represents the sufficient sole basis for a transfer without findings of fact or conclusions under Policy 4(a), as the Respondent in these proceedings requests, to the consideration of such consent as an element in the appreciation of all the Policy elements.

 

 Neither the Policy nor the Rules or the Supplemental Rules provide for criteria to rule on this issue. On the other side, the scope of the Policy is to deal with cybersquatting.  Cybersquatting is the deliberate, bad faith, abusive registration of domain names in violation of others rights.  Final Report of the WIPO Internet Domain Name Process 29 (1999), available at http://www.wipo.int/amc/en/processes/process1/report/finalreport.html.

 

In this sense, the Panel finds as in other prior cases, that the consent-to-transfer approach is but one way for cybersquatters to avoid adverse findings against them.  See Graebel Van Lines, Inc. v. Tex. Intl Prop. Assocs., FA 1195954 (Nat. Arb. Forum July 17, 2008); see also Amegy Bank Natl Assoc. v. Admin, LLC, FA 132547  (Nat. Arb. Forum June 29, 2010).

 

Therefore, the Panel decides that it will analyze the case under the elements of the UDRP.

 

Identical and/or Confusingly Similar

 

Complainant contends that it has rights in the BRAINETICS mark pursuant to Policy ¶ 4(a)(i). Complainant provides the Panel with evidence of its registration with the USPTO (Reg. No. 3,486,052 registered August 12, 2008). Previous panels have found that evidence of registration with a trademark agency is sufficient to establish rights in a given mark. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). Based on this evidence the Panel may find that Complainant has rights in the BRAINETICS mark according to Policy ¶ 4(a)(i).

 

Complainant argues that Respondent’s <brain-etics.com> domain name is confusingly similar to Complainant’s BRAINETICS mark. Complainant contends that Respondent’s <brain-etics.com> domain name incorporates Complainant’s BRAINETICS mark in its entirety with the addition of a hyphen to separate the words “brain” and “etics.” Complainant further contends that Respondent added the gTLD “.com.” Previous panels have found that these variations are insufficient to differentiate a disputed domain name from a given mark. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark); see also Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark").

 

Respondent makes no contentions with regards to Policy ¶ 4(a)(i).

 

Based on Complainant’s arguments, the Panel finds that Respondent’s <brain-etics.com> domain name is confusingly similar to Complainant’s BRAINETICS mark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

It is common practice under UDRP that the 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.”).

 

Complainant alleges that Respondent has never been commonly known by the disputed domain name. Complainant claims that it has not authorized Respondent to use its mark on its website or in any way. The Panel notes that according to the WHOIS information the registrant is listed as “Profile Group.” The Panel determines that there is no connection between Respondent and the <brain-etics.com> domain name or Complainant’s BRAINETICS mark when there is no evidence on the record indicating otherwise. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).

 

Complainant claims that Respondent has no rights or legitimate interests in the disputed domain name as it does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant claims that Respondent is using the disputed domain name to resolve to a website featuring third party links, that redirect Internet users to competing third party websites. Complainant alleges that Respondent is receiving click-through fees from the links present on its resolving website. The Panel notes that some of the links present on Respondent’s resolving website include; “Geometry Math Tutor,” “Geometry Math Help,” “Math Problem solving,” “3rd Grade Math Games,” “Math Answers for Algebra,” “Pre Algebra Worksheets,” “Mathematics Worksheets,” “Calculator Math Outline,” “Math Practice,” and “Free Math Answers.” which sells similar products as those of the Complainant. Previous panels have found that using a confusingly similar domain name to profit from links for third parties competing with Complainant’s business is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use). Based on Complainant’s contentions and previous UDRP cases, the Panel finds that Respondent’s use of the disputed domain name to feature pay-per-click links for competing services does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial fair use under Policy ¶ 4(c)(iii).

 

Complainant claims that Respondent’s <brain-etics.com> domain name is a typo squatted version of Complainant’s BRAINETICS mark. Complainant claims that by inserting a hyphen into Complainant’s mark, Respondent is attempting to take advantage of a common error that internet users may make when searching for Complainant’s business on the Internet. Previous panels have found that typo squatting in itself indicates lack of rights and legitimate interests under Policy ¶ 4(a)(ii). See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, the respondent had “engaged in typo squatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”) The Panel agrees with this assertion and finds that Respondent’s disputed domain name is a typo squatted version of Complainant’s mark

 

Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).

 

The Panel finds that Respondent therefore has no rights or legitimate interests in the disputed domain name and that the Complainant has proven the second element under Policy ¶ 4(a)(i).

 

Registration and Use in Bad Faith

 

Complainant argues that Respondent has registered and is using the <brain-etics.com> domain name in bad faith under Policy ¶ 4(b)(iii). Complainant claims that Respondent is using a confusingly similar disputed domain name to divert Internet users away from Complainant’s business and to a site featuring competing services and products as Complainant. Previous panels have found that diverting internet users to a site featuring competing links for the purpose of disrupting a complainant’s business is evidence of bad faith use and registration under Policy ¶ 4(b)(iii). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (“Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business.

 

Complainant claims that Respondent demonstrates bad faith use and registration under Policy ¶ 4(b)(iv). Complainant argues that Respondent is intentionally attracting, for commercial gain, Internet users to its online site, thereby creating a likelihood of confusion with Complainant’s mark. Complainant further states that Respondent is redirecting Internet users to a site with pay-per-click links that connect to competing websites. The Panel notes that Respondent presumably earns revenue in the form of pay-per-click commissions. Previous panels have found bad faith registration under Policy ¶ 4(b)(iv) when a respondent registers a confusingly similar domain name containing a complainant’s mark in order to attract consumers to a website offering links to competing third-party websites in order to profit from those links. See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”)

 

Complainant alleges that Respondent’s use of the <brain-etics.com> domain name is typo squatting and therefore bad faith use and registration under Policy ¶ 4(a)(iii). Previous panels have found that using a domain name with intentional typographical errors to confuse individuals as to complainant’s association with a domain name is typo squatting and therefore bad faith use and registration. See Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that the respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typo squatting in its purest form).

 

On the other side; the Respondent claims that it acted in good faith when dealing with Complainant and the <brain-etics.com> domain name. Respondent claims it was unaware that its <brain-etics.com> domain name infringed on any third party rights. Respondent also claims that it was unaware of Complainant’s concerns about Respondent registering the <brain-etics.com> domain name until Respondent received the UDRP complaint. The Panel cannot accept this defense. The Panel finds it is unlikely that the Respondent has chosen the Complainant’s trademark for registration of a domain name which resolves to a website featuring competing links to third parties that are in the same business as the Complainant.

 

Respondent further contends that its use of the privacy service protects them from unsolicited communications and is not intended for any use in bad faith. Respondent contends that it offered to immediately transfer the disputed domain to Complainant free of charge. Respondent provides evidence of email correspondence between it and Complainant in which Complainant demands that respondent reimburse the $1,300 filing fee in order that Complainant drop the NAF proceeding. See Annex F. Respondent claims that Complainant’s complaint only lists a remedy of transferring the domain name to Complainant. Respondent claims that it has repeatedly attempted to make contact with Complainant in order to transfer the domain. The Panel has already stated its position regarding consent to transfer on the preliminary issue above and does not consider that the assertions of the Respondent preclude a finding on bad faith registration and use under the Policy. As already stated, the scope of the Policy is to deal with cybersquatting and the consent-to-transfer approach is but one way for cybersquatters to avoid adverse findings against them.

 

In this sense, considering the allegations of the Complainant and the content of the website under the disputed domain name, the Panel finds that the Complainant has proven the bad faith use and registration element under Policy ¶ 4(a)(iii).

 

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 <brain-etics.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Beatrice Onica Jarka, Panelist

Dated: April 16, 2013

 

 

 

 

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