Brink's Network, Incorporated v. Rafael Mattos
Claim Number: FA1012001362734
Complainant is Brink's Network, Incorporated (“Complainant”), represented by Mary L. Kevlin of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Rafael Mattos (“Respondent”), Brazil.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <brinkstv.com>, registered with Wild West Domains, Inc.
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.
Nathalie Dreyfus as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 9, 2010; the National Arbitration Forum received payment on December 9, 2010.
On December 9, 2010, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <brinkstv.com> domain name is registered with Wild West Domains, Inc. and that Respondent is the current registrant of the name. Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, 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 December 10, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 30, 2010 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@brinkstv.com. Also on December 10, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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 December 29, 2010.
On January 3, 2011, an Additional Submission was received from Complainant. This Additional Submission was timely and complete in accordance with Supplemental Rule 7.
On January 4, 2011, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed <<Nathalie Dreyfus>>as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant makes the following assertions:
Complainant is the owner of numerous registrations throughout the world for the BRINKS mark including in the U.S. and Brazil, where Respondent is located.
Complainant is the owner of the domain names <brinks.com> and <brinkscompany.com>, as well as numerous other gTLD and ccTLD domain names consisting of or containing the BRINKS mark.
Respondent, who is located in Brazil, is using the Domain Name in connection with a web site that contains news articles, videos and commentaries in Portuguese. The website prominently features the term “BRINKS” combined with the phrase “TV.com”. The term “BRINKS” is displayed in a stylized form that is identical to the STUTTERING-B BRINK logo. The web site also repeatedly uses the term “Brinks” either alone or combined with other terms.
Complainant also asserts that
- the Domain Name is virtually identical with and confusingly similar to Complainant’s BRINKS mark because it wholly incorporates the term BRINKS as the dominant portion of the domain name and merely adds the generic phrase “TV”.
- the Respondent has no rights to or legitimate interest in the Domain Name
- the Domain Name was registered in Bad Faith and is being used in Bad Faith
B. Respondent
Respondent makes the following assertions:
- The website BRINKSTV.com is a videolog made by students and its content is exclusively composed of fake news and TV shows parodies, with photoshopped pictures from actual news and funny videos made by us.
- The website has, until today, generated no revenue for Respondent
- The term "BRINKS" is very popular in Brazil. It is the shortcut for "brincadeira", which, in English, means "joke", and provides a link to the website http://mypix.com.br/pixpocketmag/a-nova-gramatica-da-internet/
- The logo used on the website was downloaded from another website. Respondent did not notice that it was the same as Complainant’s logo, however they must have had the Brink's Company logo in the back of their minds, if not consciously.
- As soon as they received the notification by email, Respondent completely took out of the weblog the logo. However, the term "brinks" will still be used, not only by Respondent, but by most Brazilians on the Internet.
- Very few people came on the blog by searching the term "brinks" on search engines and we strongly believe that these few people were friends.
- Not in any moment did Respondent write or imply that they were related to the Brinks Company.
- Respondent would like to keep the domain, since it was registered last year, and change our logo.
C. Additional Submissions
Complainant in its Additional Submission alleges as follows:
1. Respondent has not shown that he has rights to or a legitimate interest in the domain name.
a. Respondent’s evidence does not establish that the term “brinks” is commonly used in Brazil to refer to a “joke”
b. An infringing use precludes a finding of good faith and in turn precludes a finding that such use is in connection with a “bona fide offering of goods or services”. To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the policy.
c. Respondent is not making a legitimate noncommercial or fair use of the Domain Name in view of his deliberate copying of the STUTTERING-B BRINKS logo. Respondent has not been commonly known by the Domain Name prior to the registration of the domain name.
2. Respondent has not rebutted Complainant’s Evidence that the Domain Name was registered in Bad Faith
a. Respondent copied the font but also the specific color of Complainant’s mark. A coincidence that cannot be explained merely by an unconscious association with Complainant. Thus, there is no plausible explanation for Respondent’s conduct other than that he intended to associate his website with Complainant and intentionally trade off the fame of the BRINKS Marks.
b. In a similar with a website featuring jokes case, the Panel found that Respondent’s bad faith was demonstrated by the fact it created a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of its website
c. Respondent’s removal of the litigious logo after filing of the complaint is not relevant
Complainant, Brink's Network Incorporated, is a global company dedicated to business and security transportation services serving banks, retailers, governments, mints, diamantaires, and jewelers throughout the world.
Complainant owns multiple trademark registrations for BRINKS and, inter alia, Brazil Trademark Registrations No. 006051103, for BRINK’S and Brazil Trademark Registrations Nos. 813010560 and 812842804 for the STUTTERING-B BRINKS logo.
Complainant owns the domain name <brinks.com.br> used in connection with a web site targeting the Brazilian market.
The disputed domain name was registered on January 24, 2010 and resolves to a website in Portuguese including articles and pictures which used to include the name BRINKS TV .COM, the term BRINKS being reproduced in a police and font that appear identical to Complainant’s STUTTERING-B BRINKS logo.
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.
The Panel may find that Complainant has submitted sufficient evidence to establish its rights in the BRINKS and BRINK’S marks under Policy ¶ 4(a)(i) through its registrations with the United States Patent and Trademark Office ("USPTO") for its BRINK’S (e.g., Reg. No. 529,622 issued August 22, 1950) and BRINKS marks (e.g., Reg. No. 2,582,146 issued June 18, 2002) and through its registrations with the Brazilian Instituto Nacional da Properiedade Industrial (“INPI”) for its BRINK’S mark (e.g., Reg. No. 6,051,103 issued February 25, 1975) and for its STUTTERING-B BRINKS logo (e.g., Reg. No. 812,842,804 issued August 2, 1988). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)).
Complainant argues that the <brinkstv.com> domain name is confusingly similar to its BRINKS mark because the domain name contains its entire mark placed prominently in said domain name and merely adds the generic term “TV”. Previous panels have found that where a domain name contains a complainant’s entire mark, while adding a generic term to the mark, such domain names are confusingly similar to the respective complainant’s marks. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). Further, previous panels have determined that the addition of a generic top-level domain (“gTLD”) such as “.com” is not sufficient to differentiate a domain name from a registered mark. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Therefore, the Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
The Panel finds that Policy Paragraph 4(a)(i) has been satisfied.
In arguing that Respondent does not have rights to or legitimate interest in the Domain Name, 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). 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 alleges that Respondent is not commonly known by the disputed domain name, and that Respondent has not been authorized or licensed to use Complainant’s mark in any way. The WHOIS information for the disputed domain name identifies “Rafael Mattos” as the domain name’s registrant, which Complainant argues is not similar to the disputed domain name. The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii) based upon the WHOIS information on file for the domain name and Complainant’s assertions that it has not authorized Respondent to use its mark in any way. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant asserts that Respondent is not using the disputed domain name to make a bona fide offering of goods or services because Respondent is using the confusingly similar domain name to post new articles, videos and commentaries in Portuguese on a website that prominently features Complainant’s marks and business logo combined with other terms such as, “Brinks Repórter.”
Complainant also insists on the extensive prior use and fame of its marks.
The Panel finds that Complainant has met its initial burden by establishing a prima facie case, the Panel will now analyze whether Respondent has met its burden to establish rights or legitimate interests in the disputed domain names.
Respondent argues that the term “brinks” is a generic term which means joke in Brazilian, that he generated no revenue from the website and that he removed the name BRINKS from the website after receiving the complaint. This name was downloaded by Respondent from another website. Very few people came on the blog through a "brinks" search on search engines and Respondent strongly believes that these few people were friends. Respondent also claims that he did not write or imply that he was linked to Complainant on the website.
Complainant further contends that Respondent’s evidence is insufficient to establish that the term “brinks” is commonly used in Brazil to refer to a “joke” and that an infringing use precludes a finding of good faith which, in turn, precludes a finding that such use is in connection with a “bona fide offering of goods or services”. According to Complainant to conclude otherwise would mean that a respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the Policy’s intent. According to Complainant, Respondent is not making a legitimate noncommercial or fair use of the Domain Name in view of his deliberate copying of the STUTTERING-B BRINKS logo. Respondent has not been commonly known by the Domain Name prior to the registration of the domain name.
The Panel finds that Respondent has failed to create a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). The Panel first finds that the evidence submitted by Respondent is insufficient to demonstrate that the term “brinks” has become a generic term in Portuguese overcoming the protection of Complainant’s trademark. In this respect, the Panel observes that Complainant is present on the Brazilian market, where its mark BRINKS is protected.
The Panel further finds that Respondent’s website displayed Complainant’s STUTTERING-B BRINKS logo prior to the filing of a complaint. Such element deprives Respondent from rights or legitimate interest in the Domain Name. See Fandango, Inc. v. Tris Garboski, FA1359381 (December 28, 2010) (finding Respondent had no rights or legitimate interest in the domain name where the litigious website displayed Complainant’s logo, with a similar color scheme and layout design, and purportedly offers Complainant’s product for sale. The Panel interpreted this behavior as an attempt by Respondent to pass itself off as Complainant which reveals that Respondent has no rights and interests in the domain name under Policy 4(a)(ii)); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also Dream Horse Classifieds v. Mosley, FA 381256 (Nat. Arb. Forum Feb. 8, 2005) (finding the respondent’s attempt to pass itself off as the complainant by implementing a color scheme identical to the complainant’s was evidence that respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii)).
Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the domain name <brinkstv.com> under Policy Paragraph 4(a)(ii).
Complainant argues that Respondent could not have registered the disputed domain name without having knowledge of Complainant’s BRINKS and BRINK’S marks. Complainant argues that it has operated under and registered its marks in many countries throughout the world, including Brazil where Respondent resides. Complainant notes that Respondent used Complainant’s business logo throughout the resolving website. Complainant argues that Respondent’s constructive and actual knowledge of Complainant’s rights in its marks are further evidence of Respondent’s bad faith registration and use. While constructive notice has not generally been considered sufficient to uphold a finding of bad faith registration and use, the Panel may nonetheless find that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii) if Respondent is found to have had actual notice of Complainant’s trademark rights. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).
Complainant has also alleged that Respondent is using the disputed domain name to operate a website on which Respondent posts news articles, videos and other commentaries that are unrelated to Complainant’s business, while using Complainant’s business name, marks and logo throughout the website. The Panel finds that Respondent’s use of the disputed domain name suggests that Respondent registered and is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where the respondent registered and used a domain name confusingly similar to the complainant’s mark to attract users to a website sponsored by the respondent); see also 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). See Brink's Network Incorporated v. Brinks Car Rental / Asheley Alexander Grant, FA1008001341093 (Nat. Arb Forum Sept. 23, 2010) finding that Respondent uses within its mark a logo similar to Complainant’s logo on the website resolving from the disputed domain name and that such use creates confusion for Internet users as to the source and affiliation of the website. See also see also DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that Respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that Complainant endorsed and sponsored Respondent’s website, and that such use constituted bad faith).
See also America Online, Inc. v. Adrian Paul Miles d/b/a AD2000D.com Claim Number: FA0203000105890 (May 31, 2002) finding that Respondent is using the domain name at issue to resolve to a website at which Complainant's trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant's business and trademarks. The Panel finds that this conduct is prohibited by Paragraph 4(b)(iv) of the Policy.
The Panel finds that Policy Paragraph 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 <brinkstv.com> domain name be TRANSFERRED from Respondent to Complainant.
Nathalie Dreyfus, Panelist
Dated: January 13, 2011
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