Certplex, Ltd. v. Rashid Mehnas
Claim Number: FA1407001572362
Complainant is Certplex, Ltd. (“Complainant”), represented by Robert A. Auchter of McKool Smith, P.C., District of Columbia, USA. Respondent is Rashid Mehnas (“Respondent”), Pakistan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <abraindumps.com>, registered with GODADDY.COM, LLC.
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.
Bruce E. O'Connor as Panelist.
This decision is being rendered in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the National Arbitration Forum’s UDRP Supplemental Rules (the “Supplemental Rules”).
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 30, 2014; the National Arbitration Forum received payment on July 30, 2014.
On July 30, 2014, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <abraindumps.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 the Policy”.
On July 31, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 20, 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@abraindumps.com. Also on July 31, 2014, 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 August 20, 2014.
On August 25, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. O'Connor as Panelist.
On August 26, 2014, the Forum received an Additional Submission from Complainant that was determined to be in compliance with Supplemental Rule 7.
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 "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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is in the business of selling IT certification test prep materials over the Internet, and has been doing so continuously from its primary website at www.braindumps.com since at least November 30, 2001, following its registration of the <braindumps.com> domain in December 11,1997.
The <braindumps.com> website and the BRAINDUMPS® mark (the "Trademark") are well known to computer software certification examination organizations and to purchasers of computer software certification examination preparation materials throughout the world and are associated with the creation and sale of exceptional study guides and exam preparation materials in the area of information technology. To protect the Trademark, Complainant registered the mark in the United States, U.S. Trademark Registration No. 4,562,695 registered July 8, 2014. The registration states a date of first use of April 23, 1998, reflecting that Complainant has continuously used the Trademark in commerce since that time.
Respondent operates a website at <abraindumps.com> (the "Domain Name") selling practice tests and preparation materials using the Trademark that directly compete with Complainant and that are designed to be difficult for the consumer to distinguish from those marketed and sold by Complainant. Notably, Respondent's website was not registered until almost twelve years after <braindumps.com> domain was registered and in commercial use. Respondent uses its website to sell a portfolio of knock-off products in the same marketplace as Complainant in an attempt to trade on the goodwill of the Trademark built over many years by Complainant.
The Domain Name is confusingly similar to the Trademark, differing only by the addition of (1) the letter "a" before the Trademark, and (2) the generic top level domain (gTLD") ".com." These minor differences fail to distinguish the Domain Name from the Trademark.
Complainant has established rights in the Trademark by registration in the United States. Respondent is not a licensee of Complainant, nor has Complainant ever authorized Respondent to use its Trademark in any manner. Accordingly, the Respondent has no rights or legitimate interests in the Domain Name.
Furthermore, Respondent does not use the Domain Name or a corresponding name in connection with a bona fide offering of goods and services. In fact, the Domain Name is used to misleadingly divert consumers and to dilute the Trademark by passing Respondent off as Complainant in the marketplace as set forth above.
Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website, by creating a likelihood of confusion with the Trademark as to the source, sponsorship, affiliation, and endorsement of Respondent's web site or location or of a product or service on Respondent's web site or location. As set forth above, Complainant was first to use the Trademark in commerce as associated with practice certification exams. Almost twelve years after <braindumps.com> started to do business, Respondent began offering competing knock-off products at the <abraindumps.com> site. Respondent thereafter engaged and still engages in a pattern of selling goods designed to directly compete with Complainant's point of sale website and products in a brazen attempt to knock-off Complainant's goods and trademarks. Respondent has intentionally attempted to create - and has created - a likelihood of confusion with the Trademark in bad faith.
B. Respondent
Brain dumps is a generic keyword by definition as in Wikipedia.
The phrase brain dump refers to these things:
Generally, the transfer of a large quantity of information from one person to another or to a piece of paper can be referred to as a 'brain dump'.
In slang, it can describe a hurried explanation of a system, job, skillset, or other software engineering subject.
In computing, the phrase describes the taking of a snapshot of the internal state of a knowledge database for transfer or archiving purposes. Thus, the copying of any dataset might be called a 'brain dump' if its contents could be colloquially referred to as a 'brain'.
"[B]rain dumps" is just a generic keyword like "web hosting" as per web hosting keyword there are many domains with the keyword of Web Hosting. Another example is the website address http://www.ixwebhosting.com as using web hosting keyword in the URL.
By the date the Domain Name was registered, there was no registration of the keyword "braindumps" as a trademark. So it cannot be considered as bad faith.
C. Additional Submissions
1. Complainant
Respondent has not shown that it has legitimate rights or interests in respect of the Domain Name.
Respondent argues that its use of the Trademark is not in bad faith on the basis that the Domain Name was registered before the Trademark was registered on the principal register. However, this argument is irrelevant and misleading, Complainant first used the Trademark on April 23, 1998 through its predecessors in interest-long before Respondent's first use of the Domain Name. As such, Complainant has rights to the Trademark prior to the misuse of the mark by Respondent, and a complainant need not even have a registered mark to prevail in a UDRP proceeding. As such, the fact that the Domain Name was registered before the USTPO registered the Trademark on the principal register is not a basis for good faith use.
Respondent has copied the Trademark by using its website to compete directly with Complainant in the same market. Respondent has not disputed that it has done so in order to dilute the Trademark, to confuse customers as to the source of its goods, and to improperly divert customers from Complainant.
Complainant has shown rights in the Trademark by reason of its U.S. Registration No. 4,562,695. Previous panels have found that evidence of a registration with the USPTO for a given mark is sufficient to establish rights in that mark. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO). The Panel also concludes that Complainant has rights in the Trademark dating back to its filing date of July 24, 2013. See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”).
Complainant has not established any common law or other rights in the Trademark resulting from use. Complainant's proofs supporting its contention of trademark use since 1998 consist of a page from the Wayback archive that shows the use of <braindumps.com> as a domain name in conjunction with certification practice questions on November 30, 2001, and a WHOIS record showing registration of that domain name on December 11, 1997. No evidence of trademark use is in the record.
Respondent registered the Domain Name on July 16, 2013.
Respondent's arguments as to the genericness of "brain dumps" gets no sympathy from the Panel. As Complainant has pointed out, the Trademark is registered and has a presumption of validity. Respondent's citations to Wikipedia (which actually support Complainant's position because none of the definitions match Complainant's & Respondent's goods and services), and its irrelevant discussion of the generic nature of "web hosting", do not overcome this presumption.
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:
(i) the domain name registered by respondent is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
The Panel notes that the Domain Name adds the letter “a” and the generic top-level domain ("gTLD") “.com” to the Trademark. These changes are insufficient to avoid Policy paragraph 4(a)(i) confusing similarity. The letter "a" connotes a version of the Trademark or an obvious attempt to emulate the Trademark by preceding it with the first letter of the alphabet. Neither that letter nor the gTLD add anything to the Domain Name to distinguish it from the Trademark. See, e.g., Google Inc. v. N/A/ k gautam, FA 1524232 (Nat. Arb. Forum Nov. 18, 2013) (finding that the disputed domain name is confusingly similar to the at-issue mark despite the misspelling of the mark by omitting letters, the addition of a generic term, and the addition of a generic top-level domain).
The Panel finds that Complainant has met its burden of proof under paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy lists three circumstances in particular, without limitation, that demonstrate rights or legitimate interest of a domain name registrant to a domain name for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services; or
(ii) the Respondent, as an individual, business, or other organization, has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or
(iii) the Respondent is making a legitimate non‑commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy paragraph 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 paragraph 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.”).
Although Complainant makes no allegations under Policy paragraph 4(c)(ii), Respondent does not allege that it is commonly known as the Domain Name. And neither party disputes that Respondent's use is commercial and thus is not subject to the paragraph 4(c)(iii) defense.
Regarding paragraph 4(c)(i), notice of this dispute occurred on service of the Complaint on July 31, 2014. Prior to that date, Respondent was using the Domain Name at a web site that offers for sale access to IT certification exam questions. This business is identical to and competitive with the business of Complainant conducted under the Trademark. As such, such use infringes the rights of Complainant in the Trademark. Complainant has thus made a prima facie showing that the pre-notice use by Respondent is not bona fide.
Respondent counters this showing by asserting that the term "brain dumps" is in the Domain Name. The Panel has rejected this assertion. Further, Respondent's use at its web site belies its contention, in that Respondent uses both the term "abraindumps" and "braindumps" as trademarks, either in stylized form ("ABRAINDUMPS") or as proper adjectives modifying descriptive nouns ("Abraindumps certification", "Braindumps questions", and "Braindumps package").
The Panel finds that Complainant has met its burden of proof under paragraph 4(a)(ii) of the Policy.
The circumstances of paragraph 4(b) of the Policy are illustrative but not exhaustive of the circumstances under which bad faith registration and use under Policy paragraph 4(a)(iii) can be established.
Paragraph 4(b) of the Policy reads:
[T]he following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
In each of the circumstances listed in Policy paragraph 4(b), or otherwise, the Complainant must establish that Respondent intentionally and actively registered and used the Domain Name in bad faith as provided under the Policy. And, the Respondent must have known or should have known of the Trademark.
Lack of rights or legitimate interests under Policy paragraph 4(a)(ii) does not automatically translate into a finding of bad faith under Policy paragraph 4(a)(iii). A sufficient showing under Policy paragraph 4(a)(iii) requires more and must convince the Panel that the Respondent is in fact a cybersquatter.
Respondent registered the Domain Name before the effective date of rights in the Trademark (when Complainant filed its application for trademark registration)[1].
A literal reading of paragraph 4(a)(iii) mandates that in a case such as this, no bad faith can be found because domain name registration predates acquisition of trademark rights. See John Ode d/ba ODE and ODE - Optimum Digital Enterprises v. Intership Limited, D2001-0074 (WIPO May 1, 2001)("There are ample authorities supporting the view that a trademark that did not exist at the time the disputed domain name was registered cannot serve as the basis for a claim under the ICANN Policy, since it is impossible for the domain name to have been registered in bad faith (citing cases)").
As the Panel has found, Complainant has not demonstrated the existence of rights in the Trademark apart from its U.S. Trademark Registration. How could have Respondent known of the Trademark before it was registered, particularly since Respondent is a national of Pakistan? Complainant has established no prior trademark rights or any analogous rights that predate registration of the Domain Name.
Is Respondent's use in bad faith? Respondent is providing identical test score services. Respondent's price for those services ($29.99 for unlimited access) mimics that of Complainant's price ($29.99 per month). Respondent liberally uses the term "Brain Dumps" throughout its web site, and also mimics the text of Complainant's web site. Respondent thus appears to be infringing the rights of Complainant in the Trademark. These acts certainly come under the circumstances found in paragraph 4(b)(iv). See, e.g., Toyota Motor Sales U.S.A. Inc. v. Clelland, FA 198018 (Nat. Arb. Forum Nov. 10, 2003) (“Respondent used <land-cruiser.com> to advertise its business, which sold goods in competition with Complainant.") And, the Panel takes notice that Respondent's web site using the Domain Name now redirects to a web site at <www.dumpsportal.com> (viewed on August 25, 2014) at which similar examination preparation materials are sold and the term "Dumps Portal" replaces the term "Abraindumps." This redirection seems to be an admission of prior infringing use by Respondent.
The Panel cannot agree with Complainant's contention, however, that Respondent engaged in a "brazen attempt to knock-off Complainant's goods and trademarks." Respondent has not copied the presentation or appearance of Complainant's web site. And, Respondent has submitted a defense as to why its use is in good faith, based on its contention that "brain dumps" is a generic term (albeit a contention not accepted by the Panel).
Thus, Respondent has failed to prove that Respondent knew or should have known of the Trademark prior to its registration of the Domain Name, with the intent to injure Complainant and to divert business through likelihood of confusion with its Trademark.
Respondent may now be an intentional and knowledgeable infringer. But, trademark infringement is not equivalent to the cybersquatting prohibited by the Policy[2].
The Panel finds that Complainant has not met its burden of proof under paragraph 4(a)(iii) of the Policy.
Complainant having not established all three elements required under the Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <abraindumps.com> domain name REMAIN WITH Respondent.
Bruce E. O'Connor, Panelist
Dated: September 1, 2014
[1] Under 15 U.S.C. §1057(c), the nationwide rights under a U.S. Trademark Registration commence on the day on which the application that led to that registration was filed.
[2] If Complainant can show substantial evidence of trademark rights that are prior to registration of the Domain Name, Complainant may be able to institute another Policy proceeding. See Creo Products Inc. v. Website In Development, D2000-1490 (WIPO January 19, 2001)("[A] Refiled Complaint concerning acts which formed the basis of the previous complaint is one which should be entertained under the Uniform Policy in specific, relatively narrowly-defined, circumstances. (These circumstances include, but are not limited to, serious misconduct on the part of a panelist, party or legal representative of a party to the complaint; perjured or fraudulent evidence having been submitted to the administrative panel deciding the previous complaint; the discovery of credible and material evidence which could not have been reasonably foreseen or known at the time of the previous complaint; and a breach of natural justice occurring in the previous complaint)").
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