Amusement Art, LLC v. zarathustra james / bomit
Claim Number: FA1312001536201
Complainant is Amusement Art, LLC (“Complainant”), represented by Maurice B. Pilosof of Law Offices of Maurice B. Pilosof, California, USA. Respondent is zarathustra james / bomit (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mrbrainwashclothing.com>, registered with GoDaddy.com, 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.
Ho Hyun Nahm as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 26, 2013; the National Arbitration Forum received payment on December 26, 2013.
On December 26, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <mrbrainwashclothing.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 December 30, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 21, 2014 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@mrbrainwashclothing.com. Also on December 30, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 22, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho Hyun Nahm 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
i. Respondent is not commonly known by the disputed domain name.
ii. Respondent’s website is being used to promote a hooded sweatshirt emblazoned with the slogan “I AM BANKSY.”
i. Respondent registered the domain name at issue in order to falsely mislead consumers as to a purported association or affiliation with Complainant.
ii. Complainant has been using the MR BRAINWASH mark since at least as early as 2008 in association with its services and products and has acquired a great amount of fame in the MR BRAINWASH mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant established that it had rights in the mark contained in the disputed domain name.
Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
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 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.”).
Complainant contends that it sells a wide variety of merchandise under the MR BRAINWASH trademark, including but not limited to prints, canvases, plates, and t-shirts. Complainant is the owner of trademark registrations with the USPTO for the MR BRAINWASH mark (e.g., Reg. No. 3,695,896, registered October 13, 2009). See Complainant’s Exhibit A. The Panel observes that Respondent appears to reside and operate within the United States. Therefore, the Panel holds that Complainant’s registration of the MR BRAINWASH mark with the USPTO sufficiently establishes its rights in the mark pursuant to Policy ¶ 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
Complainant asserts that Respondent’s <mrbrainwashclothing.com> domain name incorporates the entire federally registered and famous MR BRAINWASH mark, in its entirety, and merely adds the generic word “clothing.” The Panel determines that Respondent’s addition of a generic term does not distinguish the disputed domain name from Complainant’s mark under Policy ¶ 4(a)(i). See 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). Complainant claims that Respondent’s disputed domain name uses the gTLD “.com.” The Panel also notes that Respondent removes the space in Complainant’s MR BRAINWASH mark for its disputed domain name. The Panel finds that Respondent’s omission of spaces and addition of a gTLD is irrelevant to a Policy ¶ 4(a)(i) determination. See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”). Consequently, the Panel finds that Respondent’s <mrbrainwashclothing.com> domain name is confusingly similar to Complainant’s MR BRAINWASH mark under Policy ¶ 4(a)(i).
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 argues that Respondent is not commonly known by the <mrbrainwashclothing.com> domain name. Complainant contends that Respondent is in no way affiliated with Complainant and Respondent does not promote Complainant’s services or goods. Complainant asserts that Respondent is not associated with, affiliated with, or sponsored by Complainant and has no legitimate interest in using the MR BRAINWASH mark. The Panel observes that the WHOIS information identifies “zarathustra james / bomit” as the registrant of the disputed domain name. See Complainant’s Exhibit E. In Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006), the panel concluded that 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 respondent was commonly known by the disputed domain name. Thus, the Panel holds that Respondent is not commonly known by the <mrbrainwashclothing.com> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant asserts that Respondent’s website is being used to promote a hooded sweatshirt emblazoned with the slogan “I AM BANKSY.” The Panel observes that Respondent’s <mrbrainwashclothing.com> domain name resolves to a website that features a picture of the “I AM BANKSY” sweatshirt. See Complainant’s Exhibit F. Complainant argues that Respondent’s disputed domain name creates a false association with Complainant and generates initial confusion by tricking Internet users into visiting Respondent’s website. Id. Prior panels have determined that a respondent’s use of a disputed domain name to promote competing services is not a bona fide offering of goods or services or legitimate noncommercial or fair use. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”). Accordingly, the Panel finds that Respondent is not using the <mrbrainwashclothing.com> domain name in connection with a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶4(c)(iii) legitimate noncommercial or fair use.
Complainant alleges that Respondent registered the <mrbrainwashclothing.com> domain name at issue in order to falsely mislead consumers as to a purported association or affiliation with Complainant. Complainant asserts that Respondent’s website is being used to promote a hooded sweatshirt emblazoned with the slogan “I AM BANKSY.” See Complainant’s Exhibit F. The Panel notes that Respondent presumably commercially benefits from the disputed domain name. Consequently, the Panel finds that Respondent’s use of the disputed domain name to attract consumers to its own website from which it financially benefits demonstrates bad faith use and registration under Policy ¶ 4(b)(iv). See Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶ 4(b)(iv) because the respondent initially used the disputed domain name to sell educational services that targeted the complainant’s market).
Complainant contends that it has been using the MR BRAINWASH mark since at least as early as 2008 in association with its services and products and has acquired a great amount of fame in the MR BRAINWASH mark. Accordingly, the Panel finds that, due to the fame of Complainant’s MR BRAINWASH mark, Respondent had actual knowledge of Complainant's mark and rights upon registration of the disputed domain name, and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mrbrainwashclothing.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Panelist
Dated: January 29, 2014
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