WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BrandStrategy, Inc. v. BusinessService Ltd.
Case No. D2007-0749
1. The Parties
The Complainant is BrandStrategy, Inc., Anacortes, Washington, United States of America, represented by Graham & Dunn PC, United States of America.
The Respondent is BusinessService Inc., St. Petersburg, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <brandmindset.com> (the “Domain Name”) is registered with Nicco Ltd., St. Petersburg, Russian Federation (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 24, 2007. On May 25, 2007, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name at issue. On May 30, 2007, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of the Domain Name and providing its contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed a submission on the language of the proceedings on June 16, 2007. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 4, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was July 24, 2007. The Respondent did not submit any response on the substance of the dispute, and only raised procedural issues in relation to the language of the proceedings. Accordingly, the Center notified the Respondent’s default on July 25, 2007.
The Center appointed Assen Alexiev as the sole panelist in this matter on August 3, 2007. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
Having received the case file, the Panel noted that a certain correspondence had taken place between the parties on the language of the proceedings. The Panel decided that this issue has to be dealt with in a procedural order. The Panel took into account the following:
The language of the Registration Agreement is Russian.
The Complaint was submitted in English. Annex 6 to the Complaint contains an e-mail message by Respondent to Complainant, dated February 7, 2007, written in English.
On June 13, 2007, the Center notified Complainant that it should submit its Complaint in Russian, as this was the language of the Registration Agreement.
On June 16, 2007, Complainant requested that the administrative proceeding continue in English, with the argument that on one occasion Respondent had already communicated with Complainant in English, and that other than that communication, Respondent had not responded to any of Complainant’s further messages, be it in Russian or in English.
On February 7, 2007, Respondent sent a message to Complainant in English. The analysis of this message shows that Respondent has a good command of English and its legal terms. Respondent’s letter dated July 19, 2007, shows that Respondent understands the communications sent to it by the Center in English, and Respondent’s comments on the Rules and their citing in English by Respondent make it clear that it is aware of the nature of the administrative proceeding and the meaning of the Rules.
In its submissions to the Center, Respondent objected to the language of the proceedings being English, citing Rules, Paragraph 11. Respondent also cited the requirement of Rules, Paragraph 10(b), that Parties be treated with equality, but gave no reasons why the Parties would receive an equal treatment if the language of the proceedings was Russian. Respondent chose not to comment its letter dated February 7, 2007, written in English. Also, Respondent chose not to benefit from the opportunity given by the Center to submit its Response in either English or Russian. Instead, Respondent remained silent on the substance of the dispute within the time limits for submission of a Response, and only raised procedural issues requesting the extension of this time limit. The last message sent by Respondent to the Center was apparently illegible, and after being requested to resend it, Respondent did not respond.
In the Panel’s view, the conduct of Respondent and its insistence on the usage of the Russian language was not based on its legitimate interest, but rather served its attempt to delay the administrative proceeding.
Accordingly, on the grounds of Rules, Paragraph 11(a), and Rules, Paragraph 10(a), (b) and (c), on August 10, 2007, the Panel issued its Procedural Order No.1, whereby the Panel concluded that the parties would be treated with equality if the English language was chosen as the language of the proceeding, being well understood by both Parties and not putting any of them at a disadvantage, and that the submissions of each party would be taken into account regardless if written in English or Russian.
4. Factual Background
Complainant is the owner of the trademark BRANDMINDSET, registered on September 14, 1999 for the territory of the United States of America with Reg.No. 2,363,373, for educational services, namely, conducting workshops, seminars and training in the fields of market research, strategic business planning, product positioning and marketing and communication planning, and distribution of course materials therewith.
The Domain Name was registered by Respondent on November 8, 2005.
5. Parties’ Contentions
Complainant claims that the Domain Name is identical to Complainant’s registered trademark BRANDMINDSET.
According to Complainant, Respondent has no rights or legitimate interests in respect of the Domain Name. There is no meaningful content on the website associated with the Domain Name, and in its correspondence with Complainant, Respondent claims no independent legitimate interests of its own in the Domain Name.
Further, Complainant claims there is no evidence that Respondent is making a legitimate non-commercial or fair use of the Domain Name, without intent for commercial gain.
Complainant contends that it is a provider of consulting services and educational information and materials related to business planning and branding, brand strategy, and brand development. For over eight years, Complainant has used the trademark BRANDMINDSET in connection with its business planning and branding educational services and products. Complainant’s BRANDMINDSET trademark has acquired a strong secondary meaning in connection with business planning and strategic branding. Since 1999, Complainant has expended a substantial amount of money, time and effort in developing, marketing and advertising the BRANDMINDSET trademark. In consequence, Complainant has made its trademark widely recognizable as identifying business planning and branding consulting services originating with Complainant, has developed strong consumer demand for such services, and has generated substantial goodwill associated with the trademark.
Complainant claims that it was once a registrant of the Domain Name, but inadvertently allowed the registration to lapse, at which time it was immediately registered by Respondent. There is no evidence that at that time Respondent was engaged in preparation for any legitimate offering of goods or services or other business enterprise. Rather, Respondent appears to have sought only to profit by associating himself with Complainant, through the registration of a domain name whose second level consists entirely of Complainant’s well-known trademark. Respondent has created no new content for his website, but it is well established that the mere passive holding or “parking” of a domain name can evidence bad faith. See Advance Magazine Publishers Inc. and Les Publications Conde Nast S.A. v. ChinaVogue.com, WIPO Case No. D2005-0615; Air Austral v. WWW Enterprise, Inc., WIPO Case No. D2004-0765; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In each of these cases, the panels held that the respondent registrant was using the respective domain name in bad faith despite not being engaged in any positive action.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainant has provided evidence and has thus established its rights in the trademark BRANDMINDSET, registered in the United States of America.
It is a common practice under the Policy to disregard the “.com” section of domain names for the purposes of the comparison under Policy, paragraph 4(a)(i).
Complainant’s trademark contains the combination of words “brandmindset”. “Brand”, “mind”, and “set” are three words in the English language and although each of them alone is generic, their combination is quite specific and distinguishable. This combination is identical to the Domain Name.
Therefore, the Panel finds that Complainant has established the first element of the test, required under the Policy, paragraph (4)(a).
B. Rights or Legitimate Interests
Complainant has contended that Respondent has no rights or legitimate interests in the Domain Name. In its correspondence with Complainant, Respondent has not brought forward any legitimate interest of its own in the Domain Name. Also, the website associated to the Domain Name, lacks any content.
Thus, Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name.
It is well established that once Complainant makes out a prima facie case under Policy, paragraph 4(a)(ii), the burden shifts to Respondent to rebut the showing by providing evidence of its rights to or legitimate interests in the Domain Name.
Respondent, although given a fair opportunity to do so, has chosen not to present to the Panel any allegations or documents in its defense in accordance with the Rules, paragraph 5(b)(i) and 5(b)(ix), despite the consequences that the Panel may extract from the fact of a default (Rules, paragraph 14). If Respondent had any legitimate reason for the registration or use of the disputed Domain Name, it could have brought it to the attention of the Panel. In particular, Respondent has failed to contend that any of the circumstances described in Policy, paragraph 4(c) –or any other circumstance –is present in its favor.
In fact, the only information available about Respondent is the Whois information, provided by the Registrar, and the content of the website, associated to the Domain Name.
The Whois information contains no evidence that Respondent is commonly known by the Domain Name. The registrant is listed as BusinessService Ltd., Escrow Domain Department, Temporary Domain Transfer Manager. Such a record, by itself, is an indication that Respondent is probably acting as an escrow agent.
The Panel also notes that, as contended by Complainant, Respondent’s mail address provided to the Registrar is nonexistent. A registrant of a domain name usually takes care when submitting its contact details to the registrar, as the provision of wrong contact details may result in cancellation of the domain name.
Further, the Panel notes that the website associated to the Domain Name contains no content and therefore no indications about any rights or legitimate interests of Respondent in the Domain Name.
Taken together, this evidence supports the contentions of the Complainant, and the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
The Domain Name is identical to Complainant’s trademark, which is quite specific and distinguishable. Complainant has created a successful enterprise which has generated a considerable goodwill in its trademark over the last eight years. Respondent registered the Domain Name right after its previous registration expired. On the balance of probabilities, this supports a finding that Respondent had knowledge of Complainant and of its trademark at the time of registration of the Domain Name.
Respondent provided false contact details to the Registrar, and put no content on the website associated with the Domain Name. Even though properly notified of the commencement of this proceeding, Respondent did not file a Response to the Complaint, and provided no proof of its rights or legitimate interests in the Domain Name.
In the Panel’s view, an attempt by Respondent in such circumstances to actively use the Domain Name would lead to a likelihood of confusion to the source, sponsorship, affiliation, or endorsement of the website among Internet users who would be led to believe that such a website is in some way associated with the Complainant.
There is an established practice under the Policy, dealing with similar combinations of facts. The knowledge of a complainant and its trademark, the lack of any rights or legitimate interests in the domain name and the provision of false contact details at the time of its registration, combined with its passive holding thereafter and the impossibility to conceive a good faith use of the domain name by respondent, are, taken together, circumstances that amount to bad faith of respondent. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574; Ladbroke Group Plc v. Sonoma International LDC, WIPO Case No. D2002-0131.
Therefore, the Panel concludes that Complainant has established the third element of the test under Policy, paragraph 4(a).
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <brandmindset.com> be transferred to the Complainant.
Dated: August 17, 2007