Brainetics, LLC v. Fundacion Private Whois / Domain Administrator
Claim Number: FA1302001485729
Complainant is Brainetics, LLC (“Complainant”), represented by Stephanie J. Harris, Illinois, USA. Respondent is Fundacion Private Whois / Domain Administrator (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwbrainetics.com>, registered with INTERNET.BS CORP.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 18, 2013; the National Arbitration Forum received payment on February 18, 2013.
On February 21, 2013, INTERNET.BS CORP. confirmed by e-mail to the National Arbitration Forum that the <wwwbrainetics.com> domain name is registered with INTERNET.BS CORP. and that Respondent is the current registrant of the names. INTERNET.BS CORP. has verified that Respondent is bound by the INTERNET.BS CORP. 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 February 22, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 14, 2013 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@wwwbrainetics.com. Also on February 22, 2013, 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 March 28, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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.
i. Respondent does not have rights in a domain name where Respondent is not known by the mark.
ii. The sole purpose behind Respondent’s registration and operation of the domain name is to make money by redirecting Internet traffic to third-party websites.
i. Respondent is using the domain name in order to profit from consumer confusion regarding Complainant’s mark, and in order to disrupt Complainant’s business.
ii. Respondent is using the domain name in order to channel Internet users to third-party websites, instead of Complainant’s website, and apparently receives “click-through” fees in connection therewith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant has rights in its BRAIBETICS mark.
2. Respondent’s <wwwbrainetics.com> domain is confusingly similar to Complainant’s mark.
3. Respondent has no rights to or legitimate interests in the domain name.
4. Respondent registered and used the domain name in bad faith.
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, Brainetics, LLC, asserts that it is a growing company that markets educational DVDs and other educational materials featuring mathematics instruction, many of which are sold under the trademark BRAINETICS. Complainant argues that it promotes and advertises its educational mathematics DVD programs and other educational materials using the mark on its website located at <www.brainetics.com>. Complainant contends that it is the owner of trademark registrations with the USPTO for the BRAINETICS mark (Reg. No. 3,486,052, registered August 12, 2008). See Complainant’s Exhibit B. The Panel notes that although Respondent appears to reside in Panama, Policy ¶ 4(a)(i) does not require that the mark be registered in the country in which Respondent operates and it is sufficient that Complainant can demonstrate a mark in some jurisdiction. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Therefore, the Panel concludes that Complainant’s registration of the BRAINETICS mark with the USPTO sufficiently establishes its rights in the mark pursuant to Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)).
Complainant argues that Respondent’s <wwwbrainetics.com> domain name is confusingly similar to Complainant’s BRAINETICS mark because the domain name wholly incorporates Complainant’s mark, except that it adds “www.” The Panel finds the addition of a “www” mark to the beginning of a domain name does not distinguish Complainant’s mark from Respondent’s domain name under Policy ¶ 4(a)(i). See Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that the respondent’s domain name <wwwbankofamerica.com> is confusingly similar to the complainant’s registered trademark BANK OF AMERICA because it “takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet”). Complainant asserts that Respondent adds the “.com” top-level domain to the disputed domain name. The Panel holds that attaching a gTLD is unable to create a distinction capable of overcoming a finding of confusing similarity under Policy ¶ 4(a)(i). See Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Nat. Arb. Forum Sept. 6, 2007) (“Furthermore, the addition of the generic top-level domain ‘.com’ does nothing to eliminate the confusing similarity, as a top-level domain is a requirement for all domain names.”). Therefore, the Panel concludes that Respondent’s <wwwbrainetics.com> domain name is confusingly similar to Complainant’s BRAINETICS mark pursuant to Policy ¶ 4(a)(i).
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 contends that Respondent does not have rights in a domain name where Respondent is not known by the mark. Complainant argues that neither Respondent nor any business operated by Respondent, nor any product or service offered by Respondent, has been commonly known by the domain name. Complainant claims Respondent’s use of the mark on Respondent’s webpages is wholly unauthorized. The Panel notes that the WHOIS information provides that “Fundacion Private Whois / Domain Administrator” is the registrant of the domain name. The Panel determines that Respondent is not commonly known by the domain name pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant asserts that the sole purpose behind Respondent’s registration and operation of the domain name is to make money by redirecting Internet traffic to third-party websites. Complainant claims that Respondent apparently uses the domain name to earn “click-through” fees. Complainant contends that Respondent’s website, located at the disputed domain name consists solely of links to websites—and primarily to websites offering mathematics education tools, training and foods and services, such as “Math Website,” “Grade 3 Math Games,” “Math Puzzles,” and others. See Complainant’s Exhibit C. The Panel finds that Respondent’s use of the disputed domain name to provide competing hyperlinks did not Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”).
Complainant argues that Respondent is using the domain name in order to profit from consumer confusion regarding Complainant’s mark, and in order to disrupt Complainant’s business. The Panel notes that Respondent’s website links to a web directory featuring competing links such as “Math Website,” “Grade 3 Math Games,” “Math Puzzles,” and others. See Complainant’s Exhibit C. The Panel determines that Respondent’s use of the disputed domain name to disrupt Complainant’s business evidences bad faith use and registration under Policy ¶ 4(b)(iii). See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)).
Complainant contends that Respondent is using the domain name in order to channel Internet users to third-party websites, instead of Complainant’s website, and apparently receives “click-through” fees in connection therewith. The Panel notes that Respondent uses the disputed domain name to feature third-party websites like “Math Website,” “Grade 3 Math Games,” “Math Puzzles,” and others. See Complainant’s Exhibit C. Complainant asserts that Respondent apparently uses the domain name to earn “click-through” fees. The Panel holds that Respondent’s use of the domain name to divert Internet traffic to third-party websites constitutes bad faith use and registration under Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wwwbrainetics.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: April 10, 2013
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