national arbitration forum

 

DECISION

 

Brainetics, LLC v. David Zhang

Claim Number: FA1105001389740

 

PARTIES

Complainant is Brainetics, LLC (“Complainant”), represented by Matthew K. Organ, Illinois, USA.  Respondent is David Zhang (“Respondent”), Oregon, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <braineticsdvd.com>, registered with GoDaddy.com.

 

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.

 

Sandra J. Franklin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on May 19, 2011; the National Arbitration Forum received payment on May 19, 2011.

 

On May 23, 2011, GoDaddy.com confirmed by e-mail to the National Arbitration Forum that the <braineticsdvd.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 May 24, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 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@braineticsdvd.com.  Also on May 24, 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 June 15, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 a response from Respondent.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <braineticsdvd.com> domain name is confusingly similar to Complainant’s BRAINETICS mark.

 

2.    Respondent does not have any rights or legitimate interests in the <braineticsdvd.com> domain name.

 

3.    Respondent registered and used the <braineticsdvd.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Brainetics, LLC, creates, markets, and distributes educational DVDs and other educational materials under its BRAINETICS mark.  Complainant holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for its BRAINETICS mark (Reg. No. 3,486,052 issued August 12, 2008).

 

Respondent, David Zhang, registered the <braineticsdvd.com> domain name on February 22, 2011.  Respondent uses the disputed domain name to resolve to a website that sells unauthorized counterfeit copies of Complainant’s DVDs. 

 

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."

 

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.

 

Identical and/or Confusingly Similar

 

As previous panels found in Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) and Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), this Panel concludes that Complainant has established rights in its BRAINETICS mark under Policy ¶ 4(a)(i) by holding a trademark registration with the USPTO (Reg. No. 3,486,052 issued August 12, 2008).

 

The Panel further finds that Respondent’s <braineticsdvd.com> domain name is confusingly similar to Complainant’s BRAINETICS mark pursuant to Policy ¶ 4(a)(i) because Respondent’s addition of the descriptive term “dvd” and the generic top-level domain (“gTLD”) “.com” fail to sufficiently distinguish the disputed domain name from Complainant’s mark.  See Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); see also 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).

 

The Panel finds Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent does not have any rights or legitimate interests in the <braineticsdvd.com> domain name.  The burden shifts to Respondent to prove it does have rights or legitimate interests when Complainant makes a prima facie case in support of its allegations under Policy ¶ 4(a)(ii).  The Panel finds that Complainant makes a sufficient prima facie case in its Complaint.  Respondent’s failure to respond to the Complaint allows the Panel to infer that Respondent does not have rights or legitimate interests in the <braineticsdvd.com> domain name.  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 Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).  Nonetheless, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).

 

Respondent has failed to present any evidence, and the Panel fails to find any evidence in the record that would prove Respondent is commonly known by the <braineticsdvd.com> domain name.  To the contrary, the WHOIS information identifies the domain name registrant as “David Zhang” and Complainant asserts that it has not authorized Respondent’s use of the BRAINETICS mark.  Consequently, the Panel concludes that Respondent is not commonly known by the <braineticsdvd.com> domain name pursuant to Policy ¶ 4(c)(ii).  See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).

 

Complainant alleges that Respondent uses the <braineticsdvd.com> domain name to resolve to a website where counterfeit versions of Complainant’s DVDs are sold.  The Panel determines that such a use is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Nat. Arb. Forum Apr. 12, 2002) (“Respondent’s use of the confusingly similar domain name [<hpmilenium.com>] to sell counterfeit versions of Complainant’s [HP] products is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).”); see also Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell the complainant’s goods without the complainant’s authority, as well as others’ goods, is not bona fide use).

 

The Panel finds Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

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 Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant); see also G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”). 

 

The Panel infers that Respondent commercially benefits from the sale of counterfeit DVDs and that Respondent registered the confusingly similar <braineticsdvd.com> domain name in order to create confusion as to Complainant’s affiliation with the disputed domain name.  Based on these findings, the Panel concludes that Respondent registered and is using the <braineticsdvd.com> domain name in bad faith under Policy ¶ 4(b)(iv).  See Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that the respondent acted in bad faith by registering the <fossilwatch.com> domain name and using it to sell various watch brands where the respondent was not authorized to sell the complainant’s goods); see also Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark).

 

The Panel finds Policy ¶ 4(a)(iii) has been satisfied.

 

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 <braineticsdvd.com> domain name be TRANSFERRED from Respondent to Complainant.

 

Sandra J. Franklin, Panelist

Dated:  June 22, 2011

 

 

 

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