Brainetics2010.net + 3 more domains

The timeline behind brainetics2010.net

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

How each disputed name was decided in this proceeding.

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

NATIONAL ARBITRATION FORUM DECISION Brainetics, LLC v. Alyssa Shen Claim Number: FA1010001353822 PARTIES Complainant is Brainetics, LLC (“Complainant”), represented by Matthew K. Organ, Illinois, USA. Respondent is Alyssa Shen (“Respondent”), China. REGISTRAR AND DISPUTED DOMAIN NAMES The domain names at issue are <brainetics2010.net>, <braineticsdeaker.com>, <braineticsseller.info>, and <brainetics-dvdset.info>, registered with GoDaddy.com. PANEL The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding. Honorable Karl V. Fink (Ret.) as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on October 21, 2010; the National Arbitration Forum received payment on October 21, 2010. On October 22, 2010, GoDaddy.com confirmed by e-mail to the National Arbitration Forum that the <brainetics2010.net>, <braineticsdeaker.com>, <braineticsseller.info>, and <brainetics-dvdset.info> domain names are registered with GoDaddy.com and that Respondent is the current registrant of the names. GoDaddy.com has verified that Respondent is bound by the GoDaddy.com 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 October 29, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 18, 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@brainetics2010.net, postmaster@braineticsdeaker.com, postmaster@braineticsseller.info, and postmaster@brainetics-dvdset.info. Also on October 29, 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. Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default. On November 22, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) 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. RELIEF SOUGHT Complainant requests that the domain names be transferred from Respondent to Complainant. PARTIES' CONTENTIONS A. Complainant makes the following assertions: 1. Respondent’s <brainetics2010.net>, <braineticsdeaker.com>, <braineticsseller.info>, and <brainetics-dvdset.info> domain names are confusingly similar to Complainant’s BRAINETICS mark. 2. Respondent does not have any rights or legitimate interests in the <brainetics2010.net>, <braineticsdeaker.com>, <braineticsseller.info>, and <brainetics-dvdset.info> domain names. 3. Respondent registered and used the <brainetics2010.net>, <braineticsdeaker.com>, <braineticsseller.info>, and <brainetics-dvdset.info> domain names in bad faith. B. Respondent failed to submit a Response in this proceeding. FINDINGS Complainant, Brainetics, LLC, creates, markets, and distributes educational DVDs and other educational materials including workbooks, manuals, and flashcards. Complainant conducts all of its operations under its trademark registration with the United States Patent and Trademark Office (“USPTO”) for its BRAINETICS mark (Reg. No. 3,486,052 issued August 12, 2008). Respondent, Alyssa Shen, registered the first disputed domain name, <brainetics2010.net>, on June 8, 2010. The three following disputed domain names, <braineticsdeaker.com>, <braineticsseller.info>, and < brainetics-dvdset.info>, were all registered within the two months following the first registration date. The disputed domain names all resolve to websites selling educational products that are similar to, and in direct competition with, those of Complainant. 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. 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. Identical and/or Confusingly Similar Complainant alleges it has established rights in the BRAINETCS mark based on its registration of the marks with the USPTO (Reg. No. 3,486,052 issued August 12, 2008). Previous panels have concluded that registration with a federal trademark authority is sufficient to establish rights in a mark. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Accordingly, the Panel concludes Complainant’s trademark registration of the BRAINETCS mark establishes rights in the mark pursuant to Policy ¶ 4(a)(i). Complainant contends Respondent’s <brainetics2010.net>, <braineticsdeaker.com>, <braineticsseller.info>, and <brainetics-dvdset.info> domain names are confusingly similar to Complainant’s BRAINETCS mark. Each of the disputed domain names incorporates Complainant’s BRAINETCS mark in its entirety. Furthermore, each of the domain names contains either additional numbers, punctuation marks such as a hyphen, generic and descriptive terms such as “seller,” “deaker,” or “dvdset,” or a combination of the aforementioned additions to Complainant’s mark. Finally, Complainant alleges that Respondent added the generic top-level domain (“gTLD”) “.com,” “.net,” or “.info” to each of the disputed domain names. Complainant alleges that these actions have not resulted in unique domain names and that each of the domain names is confusingly similar to Complainant’s BRAINETICS mark. The Panel may find accordingly. See Hitachi, Ltd. v. Fortune Int’l Dev. Ent. Co., D2000-0412 (WIPO July 2, 2000) (finding that the domain name <hitachi2000.net> is confusingly similar to the complainant’s mark); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also 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)); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Thus, the Panel finds that Respondent’s <brainetics2010.net>, <braineticsdeaker.com>, <braineticsseller.info>, and <brainetics-dvdset.info> domain names are confusingly similar to Complainant’s BRAINETCS mark pursuant to Policy ¶ 4(a)(i). The Panel finds Policy ¶ 4(a)(i) has been established. Rights or Legitimate Interests Complainant contends that Respondent lacks rights and legitimate interests in the <brainetics2010.net>, <braineticsdeaker.com>, <braineticsseller.info>, and <brainetics-dvdset.info> domain names. Previous panels have found that a prima facie showing, made by a complainant in support of its allegations, shifts the burden to the respondent to prove it has rights or legitimate interests under Policy ¶ 4(a)(ii). The Panel finds that Complainant has made a prima facie showing and, because Respondent failed to make a timely response, the Panel may assume that it does not have rights or legitimate interests in the <brainetics2010.net>, <braineticsdeaker.com>, <braineticsseller.info>, and <brainetics-dvdset.info> domain names. However, the Panel will examine whether the record shows Respondent has rights or legitimate interests in the <brainetics2010.net>, <braineticsdeaker.com>, <braineticsseller.info>, and <brainetics-dvdset.info> domain names under Policy ¶ 4(c). See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”). Complainant alleges Respondent is not commonly known by any of the <brainetics2010.net>, <braineticsdeaker.com>, <braineticsseller.info>, and <brainetics-dvdset.info> domain names. Respondent has not alleged any evidence supporting a finding that it is commonly known by any of the disputed domain names and the Panel can find no evidence in the record that would provide a basis for finding that Respondent is commonly known by any of the disputed domain names. The WHOIS information lists the registrant of the disputed domain names as “Alyssa Shen,” which Complainant alleges is not similar to the disputed domain names. Further, Complainant alleges that it has not authorized or licensed Respondent to use its established BRAINETCS mark. The Panel finds that Respondent is not commonly known by the <brainetics2010.net>, <braineticsdeaker.com>, <braineticsseller.info>, and <brainetics-dvdset.info> domain names under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply). The disputed <brainetics2010.net>, <braineticsdeaker.com>, <braineticsseller.info>, and <brainetics-dvdset.info> domain names all resolve to websites offering services that compete with Complainant. Specifically, Respondent uses all of the disputed domain names to sell educational products and services that directly compete with Complainant’s sale of its educational materials under the BRAINETICS mark. The Panel finds that such use is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the disputed domains name pursuant to Policy ¶ 4(c)(iii). See Or. State Bar v. A Special Day, Inc., FA 99657 (Nat. Arb. Forum Dec. 4, 2001) (“Respondent's advertising of legal services and sale of law-related books under Complainant's name is not a bona fide offering of goods and services because Respondent is using a mark confusingly similar to the Complainant's to sell competing goods.”); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”). The Panel finds Policy ¶ 4(a)(ii) has been established. Registration and Use in Bad Faith Respondent’s <brainetics2010.net>, <braineticsdeaker.com>, <braineticsseller.info>, and <brainetics-dvdset.info> domain names resolve to websites that compete with Complainant’s production and sale of educational materials. Respondent’s registration of the disputed domain names seeks to profit from Complainant’s recognition in the education industry, while disrupting Complainant’s business, which supports a finding of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Marriott Int’l, Inc. v. MCM Tours, Inc., FA 444510 (Nat. Arb. Forum May 6, 2005) (“The Respondent is a travel agency and thus operates in the same business as the Complainant. The parties can therefore be considered as competitors. The Panel thus finds that the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, which constitutes evidence of registration and use in bad faith under Policy 4(b)(iii).”); see also Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 30, 2006) (concluding that the respondent registered and used the <sportlivescore.com> domain name in order to disrupt the complainant’s business under the LIVESCORE mark because the respondent was maintaining a website in direct competition with the complainant). Furthermore, Complainant argues that Respondent uses Complainant’s BRAINETCS mark to redirect Internet users to Respondent’s <brainetics2010.net>, <braineticsdeaker.com>, <braineticsseller.info>, and <brainetics-dvdset.info> domain names. Complainant alleges that Internet users seeking Complainant’s similar educational materials and services are confused as to the source, affiliation, or endorsement of Respondent’s disputed domain names. The Panel finds that such use of the disputed domain names constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)); see also Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23, 2005) (finding evidence of bad faith under Policy ¶ 4(b)(iv) where the respondent was using the <dellcomputerssuck.com> domain name to divert Internet users to respondent’s website offering competing computer products and services). The Panel finds Policy ¶ 4(a)(iii) has been established. DECISION Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED. Accordingly, it is Ordered that the <brainetics2010.net>, <braineticsdeaker.com>, <braineticsseller.info>, and <brainetics-dvdset.info> domain names be TRANSFERRED from Respondent to Complainant. Honorable Karl V. Fink (Ret.), Panelist Dated: November 30, 2010 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.