Certplex, Ltd. v. Muhammad Nawaz / Advanced Learning Systems
Claim Number: FA1407001572418
Complainant is Certplex, Ltd. (“Complainant”), represented by Robert A. Auchter of McKool Smith, P.C., District of Columbia, USA. Respondent is Muhammad Nawaz / Advanced Learning Systems (“Respondent”), represented by John Berryhill, Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <surebraindumps.com>, registered with GODADDY.COM, LLC.
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Honorable Daniel B. Banks, Jr., Honorable Karl V. Fink and Petter Rindforth as Panelists.
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 31, 2014, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <surebraindumps.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 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@surebraindumps.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.
An Additional Submission from the Complainant was received on August 25, 2014, and determined to have been received in a timely manner according to The Forum's Supplemental Rule #7.
An Additional Submission from the Respondent was received on September 2, 2014, and determined to have been received in a timely manner according to The Forum's Supplemental Rule #7.
On August 27, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Daniel B. Banks, Jr., Karl V. Fink and Petter Rindforth (presiding) as Panelists.
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The Complainant uses the BRAINDUMPS trademark for computer software aides with respect to tests and standardized exams. Complainant has registered the BRAINDUMPS trademark with the United States Patent and Trademark Office ("USPTO") (Reg. No. 4,562,695 registered July 8, 2014, filed July 24, 2013). Complainant has used BRAINDUMPS as a trademark since it launched the <braindumps.com> domain in December 1997 (WHOIS information provided by Complainant as Annex Ex. C of the Complaint).
The <surebraindumps.com> domain name is confusingly similar to the BRAINDUMPS mark.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent uses <surebraindumps.com> to sell competing practice tests and prep materials.
Respondent has registered and used the disputed domain name in bad faith. Respondent is profiting from the likelihood Internet users may confuse the offerings on the <surebraindumps.com> domain name with official BRAINDUMPS products sold through <braindumps.com>.
B. Respondent
Complainant makes false statements about its history. The entity of the Complainant was formed on August 30, 2006. There is no way it was doing business before that date. Mere allegations of use are not enough, secondary meaning requires substantial evidence showing a continuous operation under a particular domain name. Complainant’s inability to tell an accurate story of its own company history places its allegations of use into doubt, and thus a finding of rights is not appropriate here.
Respondent has rights in the disputed domain name. The term “Brain Dumps” has long existed on the Internet and means a collection of exam questions that are posted for future exam takers (Exhibit C of the Response shows an article dating back to 2003 using the term). Respondent further notes that there are even books published using the term “Braindumps” that have been on the market for a number of years. Respondent has used the domain name to sell such products, and Complainant’s claim of seniority to use this term “braindumps” is without merit.
Respondent did not register or use the domain name in bad faith. Given the broad use of the phrase “braindumps” there is little basis for concluding Respondent had any bad faith intent when registering the domain name.
According to the Respondent, Respondent registered the disputed domain name <surebraindumps.com> in 2005.
C. Additional Submissions
Complainant’s Additional Submission:
Complainant argues that the Response should be stricken for failing to comply with UDRP Rule 5(b)(vii), as the Respondent did not provide Complainant with a copy of the Response or any annexes.
Complainant states that Complainant is entitled to claim first use of the trademark - dating back to 1998 - based on the activities of its predecessors in interest.
Further, the Respondent’s evidence does not constitute a “powerful showing” that the BRAINDUMPS trademark is “obviously and convincingly” generic.
Respondent’s Additional Submission:
Respondent refers to the fact that the Response was uploaded to the Forum online interface and deemed timely by the case manager.
The Complainant's Supplement advances no evidence of distinctiveness in the term prior to the recent US registration, and presents a heavily redacted document which appears solely to be a naked domain name purchase, and refers to no transfer of goodwill or underlying business.
The Complainant has failed to show evidence of common law rights prior to its US registration document. While the Complainant repeatedly refers to previous use of the braindumps.com domain name by another party, the mere use of a domain name does not establish a trade or service mark right.
The Complainant fails to show use of BRAINDUMPS as a trade or service mark by its claimed predecessor. The Respondent provides a FAQ page (Exhibit B) of the web page connected to the disputed domain name, dated April 1998, describing “braindumps” as a descriptive word.
Trademarks and Disputed Domain Name
The Panel finds that the Complainant has established trademark rights in the BRAINDUMPS trademark, represented by:
U.S. Reg. No. 4,562,695 BRAINDUMPS, Classes 9 and 42, registered July 8, 2014, filed July 24, 2013, and with a claimed First Use in Commerce April 23, 1998.
Respondent claims it registered the domain name in 2005. However, the Panel note that <surebraindumps.com> was registered on March 7, 2014 according to the only corroborating evidence in the record—the WHOIS information.
Delivery of Response to Complainant not in Accordance with UDRP
Complainant argues that the Response should be stricken for failing to comply with UDRP Rule 5(b)(vii), as the Respondent did not provide Complainant with a copy of the Response or any annexes. However, as also noted by the Respondent and accepted by the Forum, a timely Response was indeed received and determined to be complete on August 20, 2014.
The Panel finds that both the Complainant and the Respondent have met the formal requirements accordingly, and will therefore accept and consider the Complaint and the Response, as well as the Additional Submissions filed by both Complainant and Respondent.
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.
Complainant uses the BRAINDUMPS trademark for computer software aides with respect to tests and standardized exams. Complainant has registered the BRAINDUMPS trademark with the USPTO (Reg. No. 4,562,695 registered July 8, 2014, filed July 24, 2013). The Panel agrees that this USPTO registration dates Complainant’s rights back to the July 2013 filing date of the trademark.
The Panel notes that the domain name consists of the term “sure” and the Complainants trademark BRAINDUMPS. The addition of the word “sure” (meaning “certain”, “without any doubt”) is not enough to avoid similarity; it may rather indicate that that the disputed domain name relates to the real trademark BRAINDUMPS and related goods / services.
The disputed domain name <surebraindumps.com> is confusingly similar to the BRAINDUMPS trademark.
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.
In this case, the Panel cannot see that Complainant has established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).
The Panel notes that while Complainant does not specifically allege facts under Policy ¶ 4(c)(ii), Respondent does not outright claim its operations have caused it to become “commonly known” as the disputed domain name. However, that is not enough to conclude that the Respondent does not have legitimate interests.
As shown by the Respondent, the term “Brain Dumps” has long existed on the Internet and means a collection of exam questions that are posted for future exam takers. Respondent has used the domain name to sell related products, and Complainant’s claim of seniority to use this term “braindumps” is without merit. Accordingly, the Panel finds that Respondent’s use of the domain name for its own business is justified given the prevalence of the term “braindumps” independent of Complainant’s specific offerings. See, e.g., LifeWatch Holding Corp. v. Network Earth, Inc., FA 96301 (Nat. Arb. Forum Jan. 26, 2001) (finding that the respondent could establish rights or legitimate interests in the <lifewatch.com> domain name where Complainant’s identical LIFEWATCH mark was composed of generic and descriptive terms, the respondent provided evidence that it was preparing to launch multiple websites providing a variety of “watch” services, and Respondent’s domain name provided a service unrelated to Complainant).
The Complainant claims to have used BRAINDUMPS as a trademark since the <braindumps.com> domain name was launched in December 1997, however the Panel is not confident that this use in fact has been done in such level that can be claimed in support that BRAINDUMPS in commonly known as a trademark in the name of the Complainant.
The Panel notes that the Complainant in based in US and United Kingdom (UK), whereas the Respondent is based in Pakistan.
Although the Complainant has a valid US trademark registration for BRAINDUMPS, the Complainant has not presented any facts to support that BRANDUMPS – as a trademark – is commonly known outside the United States.
The Panel finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
Respondent claims that given the broad use of the phrase “braindumps” there is little basis for concluding Respondent had any bad faith intent when registering the domain name. Moreover, Respondent contends that the registration and use of domain name comprising such common term is not necessarily done in bad faith. The Panel finds that a respondent is free to register a domain name consisting of common terms - as long as such terms cannot be said to have been transferred by extensive use to a distinctive trademark related to a specific holder - and that the domain name currently in dispute contains such common terms. The Panel therefore also finds that Respondent did not register or use the <surebraindumps.com> domain name in bad faith under Policy ¶ 4(a)(iii). See Zero Int'l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) ("Common words and descriptive terms are legitimately subject to registration as domain names on a 'first-come, first-served' basis."); see also Target Brands, Inc. v. Eastwind Group, FA 267475 (Nat. Arb. Forum July 9, 2004) (holding that the respondent’s registration and use of the <target.org> domain name was not in bad faith because the complainant’s TARGET mark is a generic term); see also Miller Brewing Co. v. Hong, FA 192732 (Nat. Arb. Forum Dec. 8, 2003) (finding that because the respondent was using the <highlife.com> domain name, a generic phrase, in connection with a search engine, the respondent did not register and was not using the disputed domain name in bad faith).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <surebraindumps.com> domain name REMAIN WITH Respondent.
Petter Rindforth, Presiding Panelist
Daniel B. Banks, Jr., Panelist
Karl V. Fink, Panelist
Dated: September 9, 2014
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