Bureau of National Affairs, Inc. v.
Claim Number: FA1811001815433




   Complainant: Bureau of National Affairs, Inc. of Arlington, VA, United States of America
Complainant Representative: Bloomberg L.P. Brendan T. Kehoe of New York, NY, United States of America

   Respondent: Jake Hunt of Madhya Pradesh, II, IN


   Registrars: PDR Ltd. d/b/a PublicDomainRegistry.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 Examiner in this proceeding.
   Natalia Stetsenko, as Examiner


   Complainant Submitted: November 8, 2018
   Commencement: November 9, 2018
   Default Date: November 27, 2018
   Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules").


   Complainant requests that the domain name be suspended for the life of the registration.


   Clear and convincing evidence.


   Findings of Fact: The Complainant has established rights in the " BNA " trademark based on its US Federal Registration No. 5,409,961, registered on February 27, 2018 in international classes 16, 35, 38, 41, 42, 44, 45. The application filed on May 26, 2016 was based on actual use with the date of first use pre-dating the registration of the disputed domain by decades. The ownership and examples of use have been confirmed by entries in the Trademark Clearinghouse.


Even though the Respondent has defaulted, URS Procedure 1.2.6, requires Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended.

[URS] 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 

The disputed domain name incorporates the Complainant’s registered mark " BNA" in its entirety, simply adding the gTLD “.OOO”. The consensus reached by previous panels is that similar changes in a registered mark fail to sufficiently distinguish a domain name from a registered trademark. See F.R. Buarger & Associates, Inc. v. shanshan lin, FA 1623319 (FORUM July 9, 2015) (holding, “Respondent’s <frburger.com> domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name “.com.”). Therefore, it is found that the disputed domain name is identical to the Complainant's "BNA" trademark.

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

Determined: Finding for Complainant 

The disputed domain name has been on Registrar parking page, listing third parties’ advertising links. Such use does not constitute a bona fide offering of goods and services. Complainant has not licensed the use of its “BNA” trademark or registration of the disputed domain to Respondent. Furthermore, the Respondent is not known by the disputed domain. Previous panels found that a respondent was not commonly known by a domain name where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain name. The Respondent has defaulted, hence no evidence in support of rights and legitimate interested have been submitted. The Panel thus finds that Respondent lacks rights and legitimate interests in the disputed domain name.

[URS] 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 Registrant’s 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 Registrant’s web site or location or of a product or service on that web site or location.

Determined: Finding for Respondent 

Complainant states that its trademark has acquired secondary meaning through its continuous and extensive use in connection with Complainant’s trade publications, marketing services, industry news and information at least as early as 1963 and that its mark is famous. Complainant registered the <bna.com> domain in May 1992 and has used this domain continuously since then. Given this, Complainant comes to a conclusion that Respondent was aware of Complainant’s “BNA” mark before registering the disputed domain name, hence acted in bad faith. While the Panel agrees that arbitrators have routinely found bad faith in circumstances where it is unlikely the registrant would have selected the domain name without knowing the reputation of the well-known trademark in question, the factor that plays significant role in their finding of bad faith is presence of sufficient evidence on the record showing that the respondent has chosen the disputed domain name having the famous mark in mind. Although this Panel recognizes that Complaint’s mark has been extensively used over decades and enjoys considerable reputation and fame among relevant public, there is no evidence on the record clearly showing that Respondent registered its domain aiming to profit from its reputation and goodwill, particularly in view of the following. “BNA” is an abbreviation standing for a whole number of shortened words or phrases. Also, Complainant is active in a specific “niche” sector of news services focusing on law, tax and environment. Given this, proving bad faith under the circumstances of this case puts a higher burden of proof on Complainant, hence making a decision in this case within the URS procedure may be not possible. Therefore, it is found that Complainant has not proved that Respondent acted in bad faith when registering and using the domain name by clear and convincing evidence.


The Examiner may find that the Complaint was brought in an abuse of this proceeding or that it contained material falsehoods.

The Examiner finds as follows:

  1. The Complaint was neither abusive nor contained material falsehoods. 


After reviewing the parties’ submissions, the Examiner determines that the Complainant has NOT 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 returned to the control of Respondent:

  1. bna.ooo


Natalia Stetsenko
Dated: November 30, 2018



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