WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Brink's Network, Inc. v. Asproductions
Case No. D2007-0353
1. The Parties
Complainant is Brink's Network, Inc., Wilmington, DE, United States of America, represented by Thompson Coburn LLP, United States of America.
Respondent is Asproductions, Washington, United States of America.
2. The Domain Name and Registrar
The disputed domain name <brinksmonitoring.com> (the “Domain Name”) is registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 8, 2007. On March 14, 2007, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On March 14, 2007, Go Daddy Software transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. 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 Respondent of the Complaint, and the proceedings commenced on March 20, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was April 9, 2007. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 13, 2007.
The Center appointed Maxim H. Waldbaum as the sole panelist in this matter on May 8, 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.
4. Factual Background
The following uncontested facts are summarized from the Complaint.
Complainant has established a family of BRINKS marks and has been granted numerous registrations for such marks, covering safes, security systems, security transportation and security system monitoring services, and other related goods and services. In the United States of America, Complainant owns seventeen (17) registrations for such marks, seven (7) of which are incontestable.
Respondent registered the Domain Name on June 18, 2006.
5. Parties’ Contentions
A. Complainant
Complainant contends the following:
Complainant has established a well-known family of BRINKS marks and has been granted numerous registrations for such marks, covering safes, security systems, security transportation and security system monitoring services, and other related goods and services. Complainant 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. Complainant and its related companies also own other domain names that contain the term “brinks”, including <brinkshomesecurity.com>.
Respondent’s Domain Name is confusingly similar to Complainant’s BRINKS mark, as it combines Complainant’s famous mark BRINKS, in its entirety, with the non-distinctive and descriptive term “monitoring.” This term is clearly descriptive when used in connection with the BRINKS mark, as “monitoring” is one of the many services offered by Complainant in connection with its BRINKS mark. In fact, Brinks uses the phrases “Brinks Monitoring” and “Brinks Alarm Monitoring” on its website to direct its customers to information about such services. Moreover, when a user conducts a search of Respondent’s website, the search returns links to various websites that offer safes, home security systems and other related goods and services that are competitive with those of Complainant, or that link to websites providing information about Complainant’s competitors.
Respondent does not have any rights or legitimate interests in the Domain Name, which was first registered on June 18, 2006, more than 145 years subsequent to when Complainant first used its BRINKS mark, nearly 25 years after Complainant first used its BRINKS mark in connection with home security systems, and approximately 10 years after Complainant first used its BRINKS mark in connection with safes. Because Respondent’s Domain Name is identical or confusingly similar to Complainant’s mark, and because Respondent is doing nothing more than offering sponsored links, Respondent is not using the Domain Name in connection with a bona fide offering of goods or services. Nor is such use a legitimate non-commercial or fair use.
Respondent registered the Domain Name 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 website. Given the fame and notoriety of the BRINKS trademark, it is inconceivable that Respondent registered the Domain Name in good faith and without knowledge of Complainant’s BRINKS mark. Moreover, Respondent used the Domain Name to forward visitors to the website located at “www.alarmsandmonitoring.com”, which specifically referenced the services of Brinks.
Respondent’s registration and use of the Domain Name were in bad faith because Respondent intentionally attempted to attract members of the public who had an interest in purchasing or obtaining additional information about BRINKS goods and services, and then automatically forwarded them to a website selling services competitive with those of Complainant. Respondent subsequently revised its website to provide “Sponsored Links” advertising goods and services competitive with those of Complainant. Respondent presumably obtained a commercial benefit by providing sponsored results on its site, as operators of websites of this type generally receive revenue for each click-through by on-line consumers. Respondent has since changed the website again, so that the links to “Popular Searches” direct visitors to “Sponsored Search Results” that link to websites covering a variety of topics. If consumers use the “www.brinksmonitoring.com” website to conduct a search for “Brinks,” however, the site displays “Sponsored Search Results” advertising goods and services competitive with those of Complainant.
B. Respondent
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, Complainant must prove that:
(i) The domain name 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 the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that Complainant has established rights in the BRINKS trademark, by virtue of the registrations with the U.S. Patent and Trademark Office. The Panel further finds that the Domain Name is confusingly similar to Complainant’s mark. The Domain Name incorporates Complainant’s mark in full and adds the word “monitoring”, which is descriptive of a service provided by Complainant. It is well established that the mere addition of a descriptive word does not reduce the degree of confusing similarity. See e.g. Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti, WIPO Case No. D2005-0037; F. Hoffmann-La Roche AG v. Direct Response Marketing Ltd, WIPO Case No. D2006-1370.
The Panel, therefore, finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant bears the burden of proof on the “rights or legitimate interests” issue (as it does for all three elements of the Policy). Louis De Bernieres v. Old Barn Studios Limited, WIPO Case No. D2001-0122.
Respondent, who filed no response in this proceeding, has not invoked any of the circumstances of Policy, paragraph 4(c) to suggest any “rights or legitimate interests” in respect of the Domain Name. The record does not contain any evidence that Respondent has been commonly known by the Domain Name.
Respondent has also not used the Domain Name in connection with a bona fide offering of goods or services, and Respondent’s use is neither a legitimate nor fair use. Respondent initially used the Domain Name to forward visitors to a website that offered services competitive with those of Complainant, and later used the Domain Name in connection with a website that offered sponsored results that provided links to websites that promote the goods and/or services of Complainant’s competitors. Such commercial use does not constitute use of the Domain Name in connection with a bona fide offering of goods or services, and is not legitimate non-commercial or fair use. There are numerous prior decisions under the Policy holding that the unauthorized appropriation of another’s trademark in one’s domain name and the commercial use of the corresponding web site do not confer rights or legitimate interests upon the owner of such a domain name. See, e.g. America Online, Inc. v. Xianfeng Fu, WIPO Case No. D2000-1374 (“it would be unconscionable to find that a bona fide offering of services in a respondent’s operation of web-site using a domain name which is confusingly similar to the complainant’s mark and for the same business”); Microsoft Corporation v. Gioacchino Zerbo, WIPO Case No. D2005-0644.
Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides several nonexclusive circumstances that provide evidence of bad faith registration and use of a domain name, including evidence that (i) respondent acquired a domain name for the purpose of selling the domain name to a trademark owner for valuable consideration in excess of the respondent’s out-of-pocket expenses; (ii) respondent intentionally attempted to attract Internet users to the Respondent’s website for commercial gain by creating a likelihood of confusion; or (iii) the domain name was registered primarily for the purpose of disrupting the business of a competitor.
The Panel finds that Respondent registered the Domain Name 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 website. Given the widespread fame and notoriety of the BRINKS trademark, the Panel finds that in all likelihood, Respondent registered the Domain Name with knowledge of Complainant’s BRINKS mark. See Nike, Inc. v. B. B. de Boer, WIPO Case No. D2000-1397 (finding it “very unlikely, if not nearly impossible” that respondent was unaware of the NIKE trademark when it registered the nike-shoes.com domain name). Moreover, Respondent used the Domain Name to forward visitors to the website located at “www.alarmsandmonitoring.com”, which specifically referenced the services of Brinks, and thus evidences Respondent’s knowledge of the BRINKS mark, and the services offered in connection therewith. Respondent subsequently revised its website to provide “Sponsored Links” advertising goods and services competitive with those of Complainant. The Panel finds that in all likelihood, Respondent attempted to gain a commercial benefit by providing such sponsored results on its site.
For this reason, the Panel finds that complainant has satisfied paragraph 4(a)(iii) of the Policy.
7. Decision
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, <brinksmonitoring.com> be transferred to the Complainant.
Maxim H. Waldbaum
Sole Panelist
Dated: May 22, 2007