Complainant is Brink's Network, Inc. of Richmond, Virginia, United States of America, represented by Thompson Coburn LLP, of St. Louis, Missouri, United States of America.
Respondent is BK SEMS, Inc., with an address listed as being in Fullerton, California, United States of America.
The disputed domain names <brinksmid.com>, <brinksmobilesecurity.com>, <brinksmobilesecurity.info>, <brinksmobilesecurity.net>, <brinksmobilesecurity.org>, <brinkswireless.info>, <brinkswireless.net> and <brinkswireless.org> (collectively, the “Disputed Domain Names”) are registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 8, 2009. On July 9, 2009, the Center transmitted by e-mail to GoDaddy.com, Inc. a request for registrar verification in connection with the Disputed Domain Names. On July 9, 2009, GoDaddy.com, Inc. transmitted by e-mail to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 Respondent of the Complaint, and the proceedings commenced on July 16, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was August 5, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on August 6, 2009.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on August 11, 2009. 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.
Complainant states that it is “a global leader in security services” employing more than 50,000 people in 50 countries. Complainant further states that it “has established a globally well-known family of BRINKS marks and has been granted numerous registrations worldwide for such marks, covering safes, security systems, security transportation and security system monitoring services, and other related goods and services”. Complainant further states that the BRINKS trademark was first used in 1859 “in connection with delivery and armored car services”. Today, Complainant states, Complainant owns 17 federal trademark registrations in the United States that contain the mark BRINKS; in support thereof, Complainant provided as annexes printouts from the website of the United States Patent and Trademark Office for these registrations (the “BRINKS Trademark”). These registrations include United States Reg. No. 1,309,375 for the mark BRINK'S for use in connection with “security transportation-namely, armored car transport services of currency, securities, and other valuables, domestic and international air courier services, air transport and air freight of goods”, first used in commerce on January 1, 1912, and registered on December 11, 1984. Complainant also states that it “maintains an active presence on the Internet, primarily through its websites “www.brinks.com” and “www.brinksinc.com”, where it promotes many of its goods and services in connection with the BRINKS mark”.
Each of the Disputed Domain Names was registered on May 2, 2008.
Complainant contends, in relevant part, as follows:
- Each of the Disputed Domain Names is identical or confusingly similar to a trademark in which Complainant has rights because “each of the [Disputed] Domain Names combine Complainant's famous BRINKS [Trade]mark, in its entirety, with a non-distinctive and merely descriptive phrase…. The term BRINKS is the dominant portion of the domain name, and the descriptive terms and phrases have no legal significance in this context, as the terms and phrases provide no insight into the mark or the associated website. Moreover, each of the terms and phrases are descriptive in this context”.
- Respondent has no rights or legitimate interests in respect of the Disputed Domain Names because “Respondent is not a licensee of Complainant and has never been affiliated with, connected to, or sponsored or endorsed by Complainant. Additionally, the Whois records for the [Disputed] Domain Names fail to establish that Respondent is one commonly known by the name BRINKS, and a search of the current U.S. Patent and Trademark Office records reveals no applications or registrations for marks incorporating the term BRINKS in the name of Respondent”; “Respondent's Domain Names are identical or confusingly similar to Complainant's mark, and because Respondent has done nothing more than use the Domain Names in connection with websites offering sponsored links, Respondent is not using the Domain Names in connection with a bona fide offering of goods or services”; and “Respondent has admitted in his correspondence with Complainant's counsel that he purchased the Domain Names on mere speculation that he might be able to enter into some contract with Complainant's licensee, Brink's Home Security, Inc.” This final contention is not supported by any documents submitted with the Complaint, as Complainant states that Respondent's admission was made in a telephone conversation with counsel for Complainant, but an annex provided by Complainant shows that Respondent agreed on November 5, 2008, to transfer the Disputed Domain Names to Complainant in exchange for reimbursement of registration costs not to exceed $7.99 per domain name. (Complainant contends that Respondent failed to carry out any of these transfers.)
- Respondent registered and is using each of the Disputed Domain Names in bad faith because “Respondent registered the [Disputed] Domain Names to intentionally attract Internet users to its websites by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's websites”; “[g]iven the fame and notoriety of the BRINKS trademark, […] it is inconceivable that Respondent registered the [Disputed] Domain Names in good faith and without knowledge of Complainant's BRINKS mark, in view of the fact that this mark is well-known throughout the United States and the world”; and the websites associated with each of the Disputed Domain Names contain “Sponsored Listings” that advertise websites offering security services that are competitive with those of Complainant. Annexes provided by Complainant show, among others, links labeled “ADT Wireless Alarms”, “Free GE security system”, “Best Home Security Offers”, and “Get 4 Free Alarm Quotes”.
The Respondent did not reply to the Complainant's contentions.
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) each of the Disputed Domains Names is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) Respondent has no rights or legitimate interests in respect of each of the Disputed Domain Names; and (iii) each of the Disputed Domain Names has been registered and is being used in bad faith. Policy, paragraph 4(a).
Paragraph 4(a)(i) of the Policy requires a complainant to prove that the disputed domain name is “identical or confusingly similar to a trademark or service mark in which [it] has rights”.
Based on the information provided by Complainant, including copies of relevant trademark certificates of registration, the Panel is convinced that Complainant has rights in the BRINKS Trademark.
As to whether each of the Disputed Domain Names is identical or confusingly similar to the BRINKS Trademark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Names only (i.e., “brinksmid”, “brinksmobilesecurity” and “brinkswireless”), as it is well-established that the top-level domain names (i.e., “.com”, “.net”, “.org” and “.info”) should be disregarded for this purpose. See, e.g., The Forward Association, Inc., v. Enterprises Unlimited, NAF Claim No. 95491 (“…neither the beginning of the URL (http://www.), nor the TLD (.com) have any source indicating significance. Those designations are merely devices that every Internet site provider must use as part of its address”).
“[W]hen a domain name is registered which is a well-known trademark in combination with another word, the nature of the other word will largely determine the confusing similarity.” Playboy Enterprises International, Inc. v. John Taxiarchos, WIPO Case No. D2006-0561 (citing Yellow Corporation v. MIC, WIPO Case No. D2003-0748); see also Six Continents Hotels, Inc. v. Sdf fdgg, WIPO Case No. D2004-0384.
Here, because the Panel agrees with Complainant that each of the other words in the Disputed Domain Names is “a non-distinctive and merely descriptive phrase [or word]” and “are descriptive in this context”, the Panel finds that each of the Disputed Domain Names is confusingly similar to the BRINKS Trademark.
Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.1.
Accordingly, as a result of Complainant's allegations and without any evidence of Respondent's rights or legitimate interests in any of the Disputed Domain Names, the Panel is satisfied, also in light of the Panel's findings below, that Complainant has proven the second element of the Policy.
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy:
(i) circumstances indicating that the registrant has registered or the registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant's documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant's website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the registrant's website or location or of a product or service on the registrant's website or location. Policy, paragraph 4(b).
Respondent's use of the Disputed Domain Names in connection with websites containing various links to third parties offering products and services that are allegedly competitive with the products and services offered by Complainant under the BRINKS Trademark is similar to countless similar cases under the Policy in which Panels have found bad faith pursuant to paragraph 4(b)(iv). Indeed, as this Panel previously wrote in Eli Lilly and Company v. Domainstand.com LLC, WIPO Case No. D2009-0849:
“Paid link farm services, sometimes known as monetized parking pages, have become an increasingly popular way for domain name registrants to profit from their activity with little effort. In some cases, particularly where the links on such a page are not competitive with or disruptive to a relevant trademark owner, or confusing to visitors, such activity may not violate the Policy. However, where, as here, the links are apparently to competitive websites, especially when there is no indication that the links are not sponsored by or affiliated with the relevant trademark owner, such activity indicates bad faith under the Policy. See Lowen Corporation d/b/a Lowen Sign Company v. Henry Chan, WIPO Case No. D2004-0430 (‘Respondent is using the disputed domain name to direct visitors to a search engine that provides sponsored links for businesses in the same field as that of the Complainant').”
See also SmithKline Beecham (Cork) Limited; SmithKline Beecham Corporation (dba GlaxoSmithKline) v. Daniel Crean, WIPO Case No. D2006-1185 (finding no good faith reason for use of the disputed domain name in connection with “contextual-based advertisements”).
Here, annexes provided by Complainant of websites using each of the Disputed Domain Names show links labeled, among others, “ADT Wireless Alarms”, “Free GE security system”, “Best Home Security Offers”, and “Get 4 Free Alarm Quotes” – links for which, Complainant states, Respondent “presumably obtains a commercial benefit… as operators of websites of this type generally receive revenue for each click-through by on-line consumers”. The authenticity of these websites and Complainant's allegations are unrebutted by Respondent, and the Panel has no reason to doubt same.
Therefore, the Panel is convinced that Complainant has proven the third element of the Policy.
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 names <brinksmid.com>, <brinksmobilesecurity.com>, <brinksmobilesecurity.info>, <brinksmobilesecurity.net>, <brinksmobilesecurity.org>, <brinkswireless.info>, <brinkswireless.net> and <brinkswireless.org> be transferred to Complainant.
Douglas M. Isenberg
Dated: August 26, 2009