Brownells, Inc. v. Texas International Property Associates
Case No. D2007-1211
1. The Parties
Complainant is Brownells, Inc., represented by McKee, Voorhees & Sease P.L.C., both from the United States of America.
Respondent is Texas International Property Associates, represented by the Law Office of Gary Wayne Tucker, also from the United States of America.
2. The Domain Name and Registrar
The disputed domain name <brwonells.com> (“Domain Name”) is registered with Compana LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 15, 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”).
The Center formally notified Respondent of the Complaint on August 30, 2007. On September 20, 2007, Respondent submitted a Response to the Center. Respondent stated that it agreed to the relief requested by the Complainant and would have transferred the Domain Name if Complainant had contacted Respondent before filing the Complaint.
On September 25, 2007, the Center received an email from Complainant’s counsel stating that the parties were pursuing settlement, and requesting that the proceedings be suspended for 30 days pending settlement discussions. The Center granted this request, and subsequently granted a further suspension until November 6, 2007, in response to a follow-up request. On November 9, 2007, Complainant notified the Center that the parties had been unable to reach a settlement and hence the proceedings should resume. The Center then notified the parties that it would proceed to appoint a Panel, as a Response had already been filed.
The Center invited the undersigned, Grant L. Kim, to serve as sole Panelist in this matter. The undersigned submitted to the Center the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. On November 28, 2007, the Center notified the parties that Grant L. Kim had been appointed to serve as sole Panelist. The Center also confirmed that the case file had been transmitted to the Panel.
4. Factual Background
Complainant Brownells, Inc. is a United States corporation that sells hunting products and accessories. Complainant owns United States Trademark Registration Number 1,891,867 (the “Mark”), which covers the mark BROWNELLS. Complainant holds similar marks in other jurisdictions, including Australia, Switzerland, and the European Union.
Complainant uses its website, <brownells.com> to sell hunting equipment. Complainant’s website conspicuously displays Complainant’s BROWNELLS mark. Complainant’s website includes links such as “Rifle Parts”; “Special Gunsmithing Tools”; and “GunTech”.
Respondent registered the domain name <brwonells.com> on December 6, 2005, with Compana LLC d/b/a budgetnames.com. Respondent has set up a webpage at <brwonells.com> that contains links to a number of other websites, including links such as “Gunsmithing supplies”; “Tech Arms”; and “Gun Accessories”.
5. The Parties’ Contentions
A. Complainant’s Contentions
Complainant asserts that it has used its BROWNELLS trademark in commerce since approximately 1946. Complainant utilizes its mark to sell hunting supplies via its online store, and has registered the mark in several countries.
Complainant contends that Respondent’s actions satisfy the requirements of paragraph 4(a) of the Policy. Complainant contends that the Domain Name is confusingly similar to Complainant’s mark, that Respondent has no rights or legitimate interests in the Domain Name, and that Respondent has registered and used the Domain Name in bad faith.
Complainant further contends that Respondent uses the Domain Name to obtain revenue by attracting customers seeking to purchase hunting supplies from Complainant. Each time an Internet user visits Respondent’s site and clicks on a link to another commercial site, Respondent receives a small payment from the linked site. In this manner, Respondent is able to obtain “click-through” revenue. In support of this contention, Complainant has submitted evidence that Respondent is utilizing a service called “hitfarm.com” to maximize its click-through revenue.
B. Respondent’s Contentions
Respondent has not contested the allegations in the Complaint. Instead, Respondent asserts that Respondent would have transferred the Domain Name if Complainant had contacted Respondent before filing the Complaint. Respondent further states that it “agrees to the relief requested by the Complainant and will, upon order of the Panel, do so.” At the same time, Respondent states that “[t]his is not an admission to the three elements of 4(a) of the policy, but rather an offer of ‘unilateral consent to transfer’ as prior Panels have deemed it.” Respondent then requests that the Panel order a “unilateral transfer” of the Domain Name, without any review of the merits of the case, consistent with the approach taken in The Cartoon Network LP, LLLP v. Mike Morgan,
WIPO Case No. D2005-1132.
6. Discussion and Findings
As a threshold matter, the Panel must decide whether to address the conditions for transfer under paragraph 4(a) of the Policy, or rather to grant a “unilateral transfer” as requested by Respondent. Prior decisions illustrate that it is within the Panel’s discretion to choose either approach. See, e.g., United Pet Group Inc. v. Texas International Property Associates, WIPO Case No. D2007-1039 (finding that a detailed merits discussion is not necessary when both parties have consented to a transfer order); Vienna Beef Ltd. v. Texas International Property Associates,
WIPO Case No. D2007-1133 (finding that a full discussion of the merits was appropriate despite Respondent’s alleged willingness to unilaterally transfer).
Although the Panel has the authority to order a transfer based on Respondent’s consent without further analysis, the Panel has decided to address the merits. As discussed below, Respondent appears to be engaged in a pattern of registering domain names that are confusingly similar to a trademark in which the Respondent has no rights, and then attempting to avoid or delay a decision on the merits. The Panel believes that a discussion of this pattern of conduct may be helpful to other Complainants and WIPO Panels.
Pursuant to the requirements of paragraph 4(a) of the Policy, transfer of the Domain Name to the Complainant may be granted only if Complainant demonstrates that each of the following three elements have been satisfied:
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The 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
Complainant must demonstrate that the disputed domain name is identical or confusingly similar to a mark in which the Complainant has rights. Complainant has registered the BROWNELLS mark in several jurisdictions, including the United States of America, Australia, Switzerland, and the European Union. Complainant utilizes the BROWNELLS mark to sell hunting equipment online at “www.brownells.com”. Complainant’s ownership and use of the registered trademarks satisfies the initial requirement that Complainant have valid rights in the trademark. See, e.g., Micro Electronics, Inc. v. Strateks Corporation,
WIPO Case No. D2005-0129.
Respondent’s domain name, <brwonells.com> consists of the BROWNELLS mark with two of the letters in the mark reversed. Other than this minor alteration, Respondent’s domain name is no different from the BROWNELLS mark. Respondent uses the disputed domain name to provide links to sites which sell hunting equipment similar to that sold on Complainant’s website.
The mere reversal of two letters in the domain name is not sufficient to distinguish the domain name from the Complainant’s mark. Micro Electronics, Inc., supra. Inverting the order of letters, or other minor misspellings, are not sufficient to avoid confusing similarity. American Online Inc. v. John Zuccarini, also known asCupcake Message, Cupcake Messenger, The Cupcake Street, Cupcake Patrol, Cupcake City, and The Cupcake Incident WIPO Case No. D2000-1495. Accordingly, the Panel finds that Respondent’s domain name is confusingly similar to Complainant’s BROWNELLS mark.
B. Rights or Legitimate Interests
Complainant has asserted in its Complaint that it has never granted Respondent a license or any other rights in its mark. Respondent has not disputed this assertion, nor has it provided any other information suggesting that Respondent has any rights or legitimate interests in respect of the Domain Name. The Panel therefore finds that Respondent has no rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a nonexclusive list of factors that may indicate bad faith. Paragraph 4(b)(iv) states that one such factor is whether “by using the domain name, you have attempted to attract, for commercial gain, Internet users to your website…by creating a likelihood of confusion with complainant’s mark.”
Respondent has set up a website using a domain name that is identical to Complainant’s mark except for the reversal of the order of two letters. Respondent uses <brwonells.com> to host a website which provides links to hunting equipment that is similar to the hunting equipment sold by Complainant at its website at “www.brownells.com”. A simple typo in a search term or web address will inadvertently lead customers shopping for Brownells hunting equipment to <brwonells.com>. Indeed, it appears that Respondent has chosen the Domain Name precisely to attract users who mistype the name of the Complainant’s website.
Complainant has submitted evidence that Respondent is utilizing the services of hitfarm.com to monitor traffic on Respondent’s website and to make adjustments in order to maximize click-through revenue. Respondent has not contested Complainant’s assertion. On the basis of the evidence submitted by Complainant, the Panel finds that Respondent’s actions fall squarely within the description provided by paragraph 4(b)(iv) of the Policy.
The Panel also notes that Respondent’s actions appear to be part of a pattern of using confusingly similar domain names for commercial gain. Although not conclusive by itself, this type of pattern is an additional indicator of bad faith. See, e.g., Centron GmbH v. Michele Dinoia,
WIPO Case No. D2006-0915; Vienna Beef Ltd., supra.
Respondent’s pattern of behavior has been noted by prior Panels. Tullett Prebon Group Limited v. Texas International Property Associates,
WIPO Case No. D2007-0828 (“The panel also notes the Complainant’s assertion that there is evidence that the Respondent has engaged in a pattern of this kind of behavior. The Panel accepts this as further evidence of bad faith on the part of the Respondent.”); United Consumers Club, Inc. v. Texas International Property Associates,
WIPO Case No. D2007-0987; Vienna Beef Ltd, supra; Vitalife, Inc. dba Tabak’s Health Products v. Texas International Property Associates,
WIPO Case No. D2007-0507.
In fact, Respondent’s conduct has resulted in a flood of recent WIPO decisions. The WIPO database contains at least 25 decisions in which the respondent is “Texas International Property Associates,” all of which ordered the disputed domain name to be transferred, and all of which were decided in 2007. Notably, this database does not contain terminated cases, or those otherwise settled prior to a decision, which Respondent’s pattern of conduct indicates may exist.
Finally, Respondent’s actions during the pendency of this case further indicate bad faith. On September 20, 2007, Respondent filed a Response stating that it was willing to transfer the Domain Name. The WIPO proceedings were then suspended so that the parties could pursue settlement. However, for reasons that are not clear from the record, a settlement was not reached. Thus, Respondent’s alleged offer to transfer the Domain Name resulted in a delay in the proceedings, during which time Respondent’s website continued to be active and hence to generate revenues for the Respondent.
The strange situation of offering to transfer, and yet not actually following through with a transfer, has occurred in previous cases involving the same Respondent. FFBP, Inc. v. Texas International Property Associates,
WIPO Case No. D2007-1035 (noting the possibility that unsuccessful settlement negotiations may have indicated Respondent’s intent to sell the Domain Name to Complainant at an unreasonably high price).
If Respondent had sincerely wished to transfer the Domain Name, it would have been a simple matter for it to do so. Respondent’s failure to follow through on its offer to transfer suggests that Respondent is attempting to delay the inevitable transfer of its Domain Name so as to generate another month or two of revenues. This conduct is inconsistent with the Policy and is resulting in a waste of resources of the Center and of multiple Complainants.
In sum, the Panel finds that there is abundant evidence that Respondent has registered and used the Domain Name in bad faith, that Respondent has no rights or legitimate interests in the Domain Name, and that the Domain Name is confusingly similar to a trademark in which the Complainant has rights.
7. Decision
For all the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the Domain Name, <brwonells.com>, be transferred to Complainant.
Grant L. Kim Sole Panelist
Dated: December 12, 2007
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