Certplex, Ltd. v. braindumps.org / braindumps.org
Claim Number: FA1407001572410
Complainant is Certplex, Ltd. (“Complainant”), represented by Robert A. Auchter of McKool Smith, P.C., Washington D.C., USA. Respondent is braindumps.org / braindumps.org (“Respondent”), Pakistan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <braindumps.org>, registered with OnlineNIC Inc.
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.
Hon. Karl V. Fink (Ret.) as Panelist.
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, OnlineNIC Inc. confirmed by e-mail to the National Arbitration Forum that the <braindumps.org> domain name is registered with OnlineNIC Inc. and that Respondent is the current registrant of the name. OnlineNIC Inc. has verified that Respondent is bound by the OnlineNIC Inc. 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@braindumps.org. 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 26, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.) 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.
Complainant
1. Complainant has rights in the BRAINDUMPS mark under Policy ¶ 4(a)(i).
a. Complainant sells IT certification test prep materials over the Internet, and has been doing so continuously from its primary website at <www.braindumps.com> since November 30, 2001.
b. Complainant owns registration for its BRAINDUMPS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,562,695 filed July 24, 2013; registered July 8, 2014).
c. Respondent’s <braindumps.org> domain name is identical to Complainant’s BRAINDUMPS mark.
2. Respondent has no rights or legitimate interests in the <braindumps.org> domain name.
a. Respondent is not commonly known by the disputed domain name and is not a licensee of Complainant or authorized by Complainant.
b. Respondent uses the disputed domain name to sell practice tests and preparation materials using Complainant’s BRAINDUMPS mark which directly competes with Complainant.
c. Respondent attempts to pass itself off as Complainant through the use of its resolving website.
3. Respondent registered and is using the <braindumps.org> domain name in bad faith.
a. Respondent offers knock-off versions of Complainant’s products in an attempt to compete with Complainant and divert Internet users away from Complainant’s legitimate business and to Respondent’s website.
b. Respondent intentionally attempted to attract, for commercial gain, Internet users to Respondent’s resolving website, by creating a likelihood of confusion with Complainant’s mark and Respondent’s website.
c. Respondent uses the disputed domain name to resolve to a website offering knock-off versions of Complainant’s products.
Respondent
Respondent failed to submit a Response in this proceeding.
Complainant’s <braindumps.com> was created on December 11, 1997, and the first commercial Internet Archive entry for <braindumps.com> was on November 30, 2001.
Respondent’s <braindumps.org> was created on July 25, 2002, and the first commercial Internet Archive entry for <braindumps.org> was on May 22, 2003. Respondent operates a website at <braindumps.org> selling practice tests and preparation materials.
Registration for Complainant’s BRAINDUMPS mark was filed with the USPTO on July 24, 2013.
For the reasons set forth below, the Panel finds Complainant is NOT entitled to the relief requested.
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 argues that it has rights in the BRAINDUMPS mark under Policy ¶ 4(a)(i). Complainant explains that it sells IT certification test preparation materials over the Internet, and has been doing so continuously from its primary website at <www.braindumps.com> since November 30, 2001. Complainant provides the Panel with evidence of its registration for its BRAINDUMPS mark with the USPTO (Reg. No. 4,562,695 filed July 24, 2013 registered July 8, 2014). Past panels have concluded that rights in a given mark date back to the filing date of the mark. See Thompson v. Zimmer, FA 190625 (Nat. Arb. Forum Oct. 27, 2003) (“As Complainant’s trademark application was subsequently approved by the U.S. Patent and Trademark Office, the relevant date for showing ‘rights’ in the mark for the purposes of Policy ¶ 4(a)(i) dates back to Complainant’s filing date.”). Additionally, past panels have concluded that it is irrelevant whether a mark is registered in the location of respondent. See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of Policy ¶ 4(a)(i) whether the complainant’s mark is registered in a country other than that of the respondent’s place of business). The Panel therefore concludes that Complainant has rights in the BRAINDUMPS mark dating back to July 24, 2013.
Complainant argues that Respondent’s <braindumps.org> domain name is identical to Complainant’s BRAINDUMPS mark, as it merely adds the gTLD “.org.” The panel in Sea World, Inc. v. JMXTRADE.com, FA 872052 (Nat. Arb. Forum Feb. 12, 2007) concluded, “[Since] [t]he top-level gTLD is merely a functional element required of every domain name, the <shamu.org> domain name is identical to the SHAMU mark under a Policy ¶ 4(a)(i).” The Panel concludes that Respondent’s addition of the gTLD “.org” does not differentiate Respondent’s <braindumps.org> domain name from Complainant’s BRAINDUMPS mark under Policy ¶ 4(a)(i), and finds that the disputed domain name is identical to Complainant’s mark.
Complainant has proven this element.
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 claims that Respondent has no rights or legitimate interests in the <braindumps.org> domain name under Policy ¶ 4(c)(ii). Complainant states that it has not authorized Respondent to register or use the disputed domain name or Complainant’s marks in any way. Complainant also states that Respondent is not affiliated with or endorsed by Complainant. The WHOIS information lists “Braindumps.org” as registrant. In AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) the panel found that, although the respondent listed itself as “AIM Profiles” in the WHOIS contact information, there was no other evidence in the record to suggest that the respondent was actually commonly known by that domain name. Since Respondent has not submitted a response with the requisite supporting evidence, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
The Panel notes that Complainant did not provide evidence of having acquired common law rights before the registration and use of <braindumps.org> by Respondent. Common law rights require that Complainant’s mark has established a secondary meaning. See Stellar Call Ctrs. Pty Ltd. v. Bahr, FA 595972 (Nat. Arb. Forum Dec 19, 2005) (finding that the complainant established common law rights in the STELLAR CALL CENTRES mark because the complainant demonstrated that its mark had acquired secondary meaning). In The Gourmet Depot v. DI S.A. / Administration DomComplainant, FA 1378760 (Nat. Arb. Forum June 21, 2011), the panel stated that evidence relevant to proving secondary meaning “includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”
The Panel holds that Complainant has not 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 and services at the disputed domain name).
Complainant has not proven this element.
Since the Panel has found that Respondent has rights or legitimate interests in the <braindumps.org> domain name pursuant to Policy ¶ 4(a)(ii), the Panel also finds that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
Complainant has not proven this element.
Complainant 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 <braindumps.org> domain name REMAIN with Respondent.
Hon. Karl V. Fink (Ret.), Panelist
Dated: September 9, 2014
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