Picturebrightcorp.com

The timeline behind picturebrightcorp.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION Picture Brite Corporation and Picture Bright Corporation v. JENRAY c/o Steve Johnson Claim Number: FA0503000437811 PARTIES Complainant is Picture Brite Corporation and Picture Bright Corporation (“Complainant”), represented by Gary M. Kramer, of Berenbaum, Weinshienk and Eason, P.C., 370 17th Street, Suite 4800, Denver, CO 80202-5698. Respondent is JENRAY c/o Steve Johnson (“Respondent”), 1444 West 46th Avenue, Denver, CO 80211. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <picturebrightcorp.com>, registered with Go Daddy Software, Inc. PANEL The undersigned certifies that he or has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding. Louis E. Condon as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on March 9, 2005; the National Arbitration Forum received a hard copy of the Complaint on March 11, 2005. On March 10, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the domain name <picturebrightcorp.com> is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. 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 March 17, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 6, 2005 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@picturebrightcorp.com by e-mail. Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default. On April 14, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES' CONTENTIONS A. Complainant makes the following assertions: 1. Respondent’s <picturebrightcorp.com> domain name is confusingly similar to Complainant’s PICTURE BRITE CORP. mark. 2. Respondent does not have any rights or legitimate interests in the <picturebrightcorp.com> domain name. 3. Respondent registered and used the <picturebrightcorp.com> domain name in bad faith. B. Respondent failed to submit a Response in this proceeding. FINDINGS Complainant, Picture Brite Corporation and Picture Bright Corporation, sells marital aids over the Internet. Complainant has used the PICTURE BRITE CORP. mark since at least as early as 1998. Complainant has filed an application with the United States Patent and Trademark Office (“USPTO”) for the PICTURE BRITE CORP. mark (Serial No. 78,551,303 filed January 21, 2005). Complainant has invested significant time, effort and expense in building customer recognition and confidence in the PICTURE BRITE CORP. mark. Respondent registered the <picturebrightcorp.com> domain name on May 14, 2004. Respondent uses the domain name to direct Internet users to a website that features competing marital goods and products. DISCUSSION 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. 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. Identical and/or Confusingly Similar Respondent has failed to respond to the Complaint. Therefore, the Panel may accept all reasonable assertions and allegations set forth by Complainant as true and accurate. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence); 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 has established rights in the PICTURE BRITE CORP. mark despite the fact that Complainant has not registered the mark with any trademark authority. See British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”); see also SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that Complainant's trademark or service mark be registered by a government authority or agency for such rights to exist). Complainant asserts that its PICTURE BRITE CORP. mark has gained secondary meaning through its continuous use in commerce since at least as early as 1998 and through significant expenditures Complainant has made on building customer recognition and confidence in its mark. Respondent has failed to contest this assertion; therefore, the Panel accepts Complainant’s assertion as true. Thus, Complainant has effectively established common-law rights in the PICTURE BRITE CORP mark. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (finding that Complainant had provided evidence that it had valuable goodwill in the <minorleaguebaseball.com> domain name, establishing common law rights in the MINOR LEAGUE BASEBALL mark). Respondent’s <picturebrightcorp.com> domain name is confusingly similar to Complainant’s PICTURE BRITE CORP mark. Respondent’s <picturebrightcorp.com> domain name incorporates Complainant’s PICTURE BRITE CORP mark in its entirety and merely uses the homonym, “bright” in the place of the word “brite,” in Complainant’s mark, which is also a phonetically identical word. Such changes are not enough to distinguish Respondent’s domain name from Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding the domain name <mannbrothers.com> confusingly similar to Complainant’s MANN BROTHERS mark “so as to likely confuse Internet users who may believe they are doing business with Complainant or with an entity whose services are endorsed by, sponsored by, or affiliated with Complainant; hence, satisfying the confusing similarity requirement”); see also Hewlett-Packard Co. v. Cupcake City, FA 93562 (Nat. Arb. Forum Apr. 7, 2000) (finding that a domain name which is phonetically identical to Complainant’s mark satisfies Policy ¶ 4(a)(i)). Further, Respondent’s <picturebrightcorp.com> domain name merely adds the generic top-level domain “.com” which is not enough to distinguish Respondent’s domain name from Complainant’s mark pursuant to Policy ¶ 4(a)(iii). See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”); see also Kioti Tractor Div. v. O’Bryan Implement Sales, FA 210302 (Nat. Arb. Forum Dec. 29, 2003) (“Respondent's domain name, <kioti.com>, is identical to Complainant's KIOTI mark because adding a top-level domain name is irrelevant for purposes of Policy ¶ 4(a)(i).”). The Panel finds that Policy ¶ 4(a)(i) has been satisfied. Rights or Legitimate Interests Complainant has asserted that Respondent has no legitimate interests in the disputed domain name, and Respondent, by not submitting a response, has failed to rebut this assertion. Thus, the Panel may interpret Respondent’s failure to respond as evidence that Respondent lacks rights and legitimate interests in the <picturebrightcorp.com> domain name pursuant to Policy ¶ 4(a)(ii). See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has no rights or legitimate interests in the domain name because Respondent never submitted a response or provided the Panel with evidence to suggest otherwise). Respondent is using the disputed domain name, which is confusingly similar to Complainant’s PICTURE BRITE CORP mark, to direct Internet users to a website offering competing goods. Such use is not a use 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 DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that Respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with Complainant, was not a bona fide offering of goods or services). Furthermore, nothing in the record indicates that Respondent is commonly known by the <picturebrightcorp.com> domain name or is authorized to register domain names incorporating Complainant’s PICTURE BRITE CORP mark. Thus, the Panel finds that Respondent lacks rights and legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii). See 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"); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that respondent does not have rights in a domain name when respondent is not known by the mark). The Panel finds that Policy ¶ 4(a)(ii) has been satisfied. Registration and Use in Bad Faith Respondent has used the <picturebrightcorp.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by using the domain name, which contains a confusingly similar version of Complainant’s PICTURE BRITE CORP mark, to direct Internet users to a website that features competing goods. See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); 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) & (iv).”). Furthermore, Respondent is capitalizing on the goodwill of the PICTURE BRITE CORP mark by using the disputed domain name to divert Internet users to a website featuring competing goods. The Panel infers that Respondent receives click-through fees for redirecting Internet users to this competing website. Since Respondent is using a domain name that is confusingly similar to Complainant’s mark, consumers accessing Respondent’s domain name may become confused as to Complainant’s affiliation with the resulting website. Thus, the Panel finds that Respondent’s commercial use of the disputed domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv); see also Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding bad faith where respondent attracted users to a website sponsored by respondent and created confusion with complainant’s mark as to the source, sponsorship, or affiliation of that website). The Panel finds that Policy ¶ 4(a)(iii) has been satisfied. DECISION Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED. Accordingly, it is Ordered that the <picturebrightcorp.com> domain name be TRANSFERRED from Respondent to Complainant. Louis E. Condon, Panelist Dated: April 27, 2005 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.