NATIONAL ARBITRATION FORUM
URS APPEAL DETERMINATION

Interbrand Group v. WhoisGuard, Inc. et al.
Claim Number: FA1605001673323

DOMAIN NAME

<brandchannel.xyz>
<interbrand.club>

PARTIES

	Appellant: Interbrand Group of London, United Kingdom
	Appellant Representative: Lewis Silkin LLP Aaron B Newell of London, United Kingdom

	Appellee: John Treagus of Goomboorian, Australia

REGISTRIES and REGISTRARS

	Registries: .CLUB DOMAINS, LLC; XYZ.COM LLC
	Registrars: NameCheap, Inc.; Namecheap

EXAMINER

	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 Examiner in this proceeding.
	Ho-Hyun Nahm, as Examiner

PROCEDURAL HISTORY

	Appeal Submitted: May 23, 2016
	Appellee reply submitted: June 2, 2016

RELIEF SOUGHT

Appellant requests a de novo review of the proceedings and that the previous Determination be overruled. Appellant requests that the previous finding that the Complaint was brought in an abuse of the proceeding or that it contained material falsehoods be set aside as an abuse of the Examiners discretion, or because the finding was arbitrary or capricious.[RequestVoidAbuseNoEncode]

STANDARD OF REVIEW

De novo review as to if the Complainant met its burden by clear and convincing evidence. Abuse of discretion for findings of abuse or material falsehood.[RequestVoidAbuseNoEncode]

FINDINGS and DISCUSSION

	Findings of Fact:
	(1) Complainant contends that it is the owner of the trademarks INTERBRAND (in classes 35, 41) and BRANDCHANNEL (in classes 9, 35, 41) in over 90 countries and 48 countries respectively, including USA and EU. The same marks were registered at the Trade Mark Clearing House (TMCH). (2) Complainants INTERBRAND and BRANDCHANNEL trademarks are well known marks in light of the circumstances below: a) Complainant: i) was founded in 1974; ii) is the worlds leading brand consultancy, with a network of 29 offices across 22 countries; iii) enjoys clients such as Nike, Disney, Gilette, Honda, HewlettPackard, Red Bull, HäagenDazs and Redbull; iv) is part of Omnicom Group, the second-largest advertising holding company in the world with 74,000 staff and 2015 revenue of approximately USD $15,134,400,000; v) publishes an influential annual Best Global Brands Report, identifying the worlds 100 most valuable brands, which has been cited as an authority in leading publications; vi) was the most awarded Agency in the 2016 Rebrand 100, global brand agency awards competition; and vii) publishes a website and daily newsletter called Brandchannel, which reports advertising and brand news from around the world. b) Complainants Brandchannel (founded in 2011): i) is a Webby-award winning newsfeed website about branding launched in 2001 and based in New York; ii) sends BRANDCHANNEL-branded newsletters to a list of almost 40,000 subscribers every working day, providing access to industry updates, news and branding resources; and iii) boasts over 300,000 visits each month at http://brandchannel.com/. (3) Respondent registered the disputed domain names on March 11, 2016. (4) Both disputed domain names are resolved to websites which are being used for click-through advertising, including search terms such as Branding agency and Brand strategy, which redirect to sites associated with branding agencies other than Interbrand including: roi360.co.uk, vgroup.com, percolate.com; which also feature a buy this domain link and statement that the disputed domain name may be for sale by its owner. (5) Respondent contends: The prefix "inter" and word "brand" are commonly used in registrations. It would also have non-trademark uses such as Internet brand names which Respondent would be interested in. There is no evidence showing the disputed domain names target Complainant or its trademarks. Respondent was not aware of Complainants trademarks at the time of registration of the disputed domain names. Complainant did not have the courtesy to respond on acceptance or not to Respondents offer to transfer the disputed domain names to Complainant. This offer was not an admission of guilt and still stands if Complainant requires the domains. Respondent has not used the disputed domain names to gain any benefit from Complainants trademarks. There are no websites created for the disputed domain names. Respondent is interested in Internet brand names. The disputed domain names in fact resolve out to perfumes. The Whoisguard was not removed, and sales would not be possible without contact details. The disputed domain names were registered by standard registration and not in a way to receive any benefit. The disputed domain names have been registered in good faith.
	Discussion:
	URS Procedure 1.2.6, requires Complainant to prove, by clear and convincing evidence, each of the following three elements to obtain an order that a domain name should be suspended. The Appellant has identified specific grounds on which it believes the previous Determination was incorrect. As the URS Appeal Review is de novo, the Examiner makes the following de novo findings for each URS factor.

[URS 1.2.6.1] The registered domain name(s) is/are identical or confusingly similar to a word mark:
  (i) for which the Complainant holds a valid national or regional registration and that is in current use; or
  (ii) that has been validated through court proceedings; or
  (iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.

Determined: Finding for Complainant

Complainant met the standard sets out in 1.2.6.1. of the URS Procedure since the Complainant has proved its right to the valid US and Community Trademark registrations for INTERBRAND and BRANDCHANNEL trademarks. In addition, Complainant has proved that the said trademarks are in current use by presenting various materials. The relevant parts of the disputed domain names are interbrand and brandchannel, as the added top-level domain being a required element of every domain name is generally irrelevant when assessing whether or not a mark is identical or confusingly similar and in this case does nothing to distinguish the disputed domain names from Complainants trademarks. Examiner concludes that each of the disputed domain names is identical to each of the Complainant's trademarks INTERBRAND and BRANDCHANNEL.

[URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name.

Determined: Finding for Complainant

Examiner finds that Respondent does not have any rights in the disputed domain names, as Complainant has not authorized Respondent to register a domain name containing its registered and used trademarks INTERBRAND and BRANDCHANNEL, nor is Respondent commonly known by the disputed domain names. Respondent argues that: i) the prefix "inter" and word "brand" are commonly used in registrations; ii) it would also have non-trademark uses such as Internet brand names which Respondent would be interested in; iii) Respondent is interested in Internet brand names; and iv) the disputed domain names in fact resolve out to perfumes. Whatever might be Respondents intent, the juxtaposition of the distinctive and well-known trademarks INTERBRAND and BRANDCHANNEL with the descriptive gTLD .club is likely to convey to Internet users a false representation that the disputed domain names belong to or are approved by Complainant. To register anothers well-known trademarks as domain names and using those domain names by resolving them to websites with the specific goal to introduce third parties brand cannot be considered as legitimate interest. Accordingly, Examiner finds that Complainant has established that Respondent has no rights or legitimate interests in the disputed domain names.

[URS 1.2.6.3] The domain name(s) was/were registered and is being used in bad faith.
  a. Registrant has registered or 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 documented out-of pocket costs directly related to the domain name; or
  b. Registrant has registered the domain name in order to prevent the trademark holder or service mark from reflecting the mark in a corresponding domain name, provided that Registrant has engaged in a pattern of such conduct; or
  c. Registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or
  d. By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrants web site or other on-line location, by creating a likelihood of confusion with the complainants mark as to the source, sponsorship, affiliation, or endorsement of Registrants web site or location or of a product or service on that web site or location.

Determined: Finding for Complainant

Respondent contends that: i) there is no evidence showing the disputed domain names target Complainant or its trademarks; ii) Respondent was not aware of Complainants trademarks at the time of registration of the disputed domain names; iii) Respondent has not used the disputed domain names to gain any benefit from Complainants trademarks; iv) there are no websites created for the disputed domain names; v) the disputed domain names in fact resolve out to perfumes, however the Whoisguard was not removed, and thus sales would not be possible without contact details; vi) the disputed domain names were registered by standard registration and not in a way to receive any benefit; and v) the disputed domain names have been registered in good faith. However, Examiner finds that it is inconceivable that Respondent was not aware of Complainants trademarks especially because Respondent registered the disputed domain names which are identical to Complainants two well known trademarks on the same date. Respondent has admitted that the disputed domain names in fact resolve out to perfumes while arguing that sales would not be possible without contact details. Complainant has presented screen shots of the websites resolved by the disputed domain names featuring advertising, including search terms such as Branding agency and Brand strategy, which redirect to sites associated with branding agencies other than Interbrand including: roi360.co.uk, vgroup.com, percolate.com; also featuring a buy this domain link and statement that the disputed domain name may be for sale by its owner. Although Respondent contends that it has not gained any benefit from the websites using the disputed domain names, Examiner is of the view that the bad faith use is irrelevant to actual gain of benefit, and that the use mechanism of the disputed domain names to gain benefit is sufficient to recognize bad faith use of the disputed domain names. Accordingly, Examiner finds that Respondent registered and is using the disputed domain names in bad faith.

DETERMINATION

After reviewing the parties submissions, the Examiner determines that the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain name(s) be SUSPENDED for the duration of the registration:

brandchannel.xyz
interbrand.club

Availability of Determinations:

The Appeal Examiner determines that the previous Determination shall remain available online along with this Appeal Determination.

Ho-Hyun Nahm
Examiner
Dated: June 15, 2016

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