Behrman House, Inc. v. eweb
Claim Number: FA0605000703028
Complainant is Behrman House, Inc. (“Complainant”), represented by Lorraine S. Hirsch, of Law Offices of Larraine Hirsch, 17491 Hicks Rd., Los Gatos, CA 95032. Respondent is eweb (“Respondent”), 4F 391-2 Suseongdong 3-ga, Suseong-gu, Daegu 706834, KR.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <behrman.com>, registered with Korea Information Certificate Authority, Inc. d/b/a Domainca.com.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 9, 2006; the National Arbitration Forum received a hard copy of the Complaint on June 15, 2006. The Forum received a hard copy of the Complaint on June 15, 2006. The Complaint was submitted in both Korean and English.
On June 15, 2006, Korea Information Certificate Authority, Inc. d/b/a Domainca.com confirmed by e-mail to the National Arbitration Forum that the <behrman.com> domain name is registered with Korea Information Certificate Authority, Inc. d/b/a Domainca.com and that Respondent is the current registrant of the name. Korea Information Certificate Authority, Inc. d/b/a Domainca.com has verified that Respondent is bound by the Korea Information Certificate Authority, Inc. d/b/a Domainca.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On June 26, 2006, a Korean language Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 17, 2006 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@behrman.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 25, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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." 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.
Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Korean language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <behrman.com> domain name is confusingly similar to Complainant’s BEHRMAN HOUSE mark.
2. Respondent does not have any rights or legitimate interests in the <behrman.com> domain name.
3. Respondent registered and used the <behrman.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Behrman House, Inc., is one of the leading publishers of Jewish and Hebrew books, instructional materials, periodicals and computer programs. Complainant and its predecessor, Behrman’s Jewish Book House, have continuously and extensively used the BEHRMAN HOUSE mark in connection with Jewish and Hebrew educational materials since 1921. In 2005 alone, Complainant sold more than 450,000 books to religious schools in North America and other English-speaking countries. Complainant’s products under the BEHRMAN HOUSE mark can be found in synagogues and bookstores around the world, as well as at various online retail outlets. Complainant also operates a website at the <behrmanhouse.com> domain name (registered on September 10, 1996).
Respondent registered the <behrman.com> domain name on June 2, 2001. Respondent’s <behrman.com> domain name resolves to a commercial web directory featuring links to other Hebrew-language and Jewish-related websites, some of which are Complainant’s competitors.
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."
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.”).
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.
Even though Complainant has not registered the BEHRMAN HOUSE mark with a federal trademark authority, the Panel finds Complainant need not hold a valid trademark registration in order to demonstrate its rights in the BEHRMAN HOUSE under Policy ¶ 4(a)(i). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)); see also SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist).
Through continuous use of the BEHRMAN HOUSE mark since 1921
in connection with Jewish and Hebrew educational materials, including books,
periodicals and computer programs, Complainant’s mark has acquired secondary
meaning sufficient for Complainant to establish common law rights in the mark
pursuant to Policy ¶ 4(a)(i). See
Ass’n of Texas Prof’l Educators, Inc. v. Salvia Corp., FA 685104 (Nat. Arb.
Forum May 31, 2006) (holding that the complainant had demonstrated common law
rights in the ATPE mark through continuous use of the mark in connection with
educational services for over twenty-five years); see also Fishtech, Inc. v. Rossiter, FA 92976
(Nat. Arb. Forum Mar. 10, 2000) (finding that the complainant has common law
rights in the mark FISHTECH that it has used since 1982).
Respondent’s <behrman.com> domain name is confusingly similar to Complainant’s BEHRMAN HOUSE mark because the disputed domain name contains the predominant term of the mark and merely eliminates the term “house.” In Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000), the panel found that even though the respondent’s <asprey.com> domain name omitted terms from the complainant’s ASPREY & GARRARD and MISS ASPREY marks, the domain name was still confusingly similar to the marks because it included the predominant portion of the marks. Consequently, Respondent’s elimination of a term from Complainant’s BEHRMAN HOUSE mark does not sufficiently distinguish the <behrman.com> domain name from Complainant’s mark but instead renders the domain name confusingly similar to the mark pursuant to Policy ¶ 4(a)(i). See Maple Leaf Sports & Entm’t Ltd. v. Toronto Maple Leafs!, D2000-1510 (Jan. 24, 2001) (finding that the domain name <leafs.org> is confusingly similar to the complainant’s marks, where the complainant holds many trademarks that contain the term “LEAFS”).
The Panel concludes that Policy ¶ 4(a)(i) has been
satisfied.
Complainant asserts that Respondent lacks rights and
legitimate interests in the disputed domain names. Complainant must first make a prima facie case in support
of its allegations, and then the burden shifts to Respondent to show it does
have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Document Tech., Inc. v. Int’l Elec.
Commc’ns Inc., D2000-0270 (WIPO Jun. 6, 2000) (“Although Paragraph 4(a) of
the Policy requires that the Complainant prove the presence of this element
(along with the other two), once a Complainant makes out a prima facie
showing, the burden of production on this factor shifts to the Respondent to
rebut the showing by providing concrete evidence that it has rights to or
legitimate interests in the Domain Name.”); see also Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under
certain circumstances, the mere assertion by the complainant that the
respondent has no right or legitimate interest is sufficient to shift the
burden of proof to the respondent to demonstrate that such a right or
legitimate interest does exist).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the disputed
domain name. See CMGI, Inc. v. Reyes, D2000-0572 (WIPO
Aug. 8, 2000) (finding that the respondent’s failure to produce requested
documentation supports a finding for the complainant); see also Am. Online, Inc. v. AOL Int'l,
D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests
where the respondent fails to respond).
However, the Panel will now examine the record
to determine if Respondent has rights or legitimate interests under Policy ¶
4(c).
Respondent has registered the domain name under the name “eweb,” and there is no other evidence
in the record suggesting that Respondent is commonly known by the <behrman.com>
domain name. As a result,
Respondent has not established rights or legitimate interests in the disputed
domain names pursuant to Policy ¶ 4(c)(ii).
See Gallup, Inc. v. Amish
Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the
respondent does not have rights in a domain name when the respondent is not
known by the mark); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb.
Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing
that one has been commonly known by the domain name prior to registration of
the domain name to prevail").
Respondent is using the <behrman.com> domain name to operate a commercial web directory with links to websites offering Hebrew-language and Jewish-related goods, some of which are Complainant’s competitors. Respondent is likely receiving click-through fees for each consumer it diverts to these websites and therefore, Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy)
Furthermore, the web directory at Respondent’s <behrman.com>
domain name displays the phrase “This domain is for SALE!” on the bottom of the
screen. Respondent’s offer to sell the
disputed domain name provides further evidence that Respondent lacks rights or
legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000)
(finding the respondent’s conduct purporting to sell the domain name suggests
it has no legitimate use); see also Skipton
Bldg. Soc’y v. Colman, D2000-1217 (WIPO Dec. 1, 2000) (finding no rights in
a domain name where the respondent offered the infringing domain name for sale
and the evidence suggests that anyone approaching this domain name through the
worldwide web would be "misleadingly" diverted to other sites).
The Panel concludes that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s web directory at the <behrman.com>
domain name contains the text “This domain is for SALE!” at the bottom of the
screen. In Bank
of Am. Corp. v. Nw. Free Cmty. Access, FA
180704 (Nat. Arb. Forum Sept. 30, 2003), the panel stated, “Respondent's
general offer of the disputed domain name registration for sale establishes
that the domain name was registered in bad faith under Policy ¶ 4(b)(i).” Therefore, the Panel finds that Respondent’s
attempt to offer the disputed domain name for sale indicates bad faith
registration and use under Policy ¶ 4(b)(i).
See Banca Popolare
Friuladria S.p.A. v. Zago, D2000-0793 (WIPO Sept. 3, 2000) (finding bad
faith where the respondent offered the domain names for sale).
Respondent’s web directory at the <behrman.com>
domain name also displays links to Hebrew-language and Jewish-related products
and services that directly compete with Complainant. Therefore, Respondent has registered and is using the disputed
domain name for the primary purpose of disrupting Complainant’s business, which
constitutes bad faith under Policy ¶ 4(b)(iii). See S. Exposure v.
S. Exposure, Inc., FA 94864 (Nat.
Arb. Forum July 18, 2000) (finding that the respondent registered the domain
name in question to disrupt the business of the complainant, a competitor of
the respondent); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent
registered a domain name confusingly similar to Complainant's mark to divert
Internet users to a competitor's website. It is a reasonable inference that
Respondent's purpose of registration and use was to either disrupt or create
confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii)
[and] (iv).”).
The <behrman.com> domain name resolves to a
commercial web directory displaying links to products and services targeting
the Jewish and Hebrew market, and some of the links redirect Internet users to
Complainant’s competitors. In Kmart
v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002), the respondent
registered the <bigkmart.com> domain name and was using it to operate a
website featuring links to various content unrelated to the complainant. The Panel inferred that Respondent made a
profit from the amount of Internet traffic it diverted to other websites, and
that therefore, Respondent was “commercially benefiting from the likelihood of
confusion it has created through the use of Complainant’s mark” in violation of
Policy ¶ 4(b)(iv). Id. In this case, Respondent is also likely
collecting click-through fees from diverting Internet users to other
websites. Hence, the Panel finds that
Respondent has registered and is using the <behrman.com> domain
name in bad faith because Respondent is taking advantage of the
confusing similarity between the disputed domain name and Complainant’s BEHRMAN
HOUSE mark in order to profit from the goodwill associated with the mark. See
State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12,
2000) (finding bad faith where the respondent registered the domain name
<bigtex.net> to infringe on the complainant’s goodwill and attract
Internet users to the respondent’s website).
The Panel concludes that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <behrman.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: August 4, 2006
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