Barbara Brennan Inc. v. Texas International Property Associates
Case No. D2008-0351
1. The Parties
Complainant is Barbara Brennan, Inc. of United States of America.
Respondent is Texas International Property Associates, of United States of America.
2. The Domain Name and Registrar
The disputed domain name, <barbarabrennen.com>, is registered with Compana LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 6, 2008. On March 10, 2008, the Center transmitted by email to Compana LLC a request for registrar verification in connection with the domain name at issue. On March 11, 2008, Compana LLC transmitted by email to the Center its verification response confirming that the 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”), 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 March 14, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was April 3, 2008. The Response was filed with the Center on April 3, 2008.
On April 4, 2008, Complainant requested that the proceedings be suspended to permit the voluntary transfer of the domain name at issue by Respondent to Complainant. On April 7, 2008, the Center issued its Notification of Suspension, suspending the proceedings for a period of thirty days.
On May 6, 2008, the Center received a Request for Reinstitute Proceedings, because Respondent had been unable to obtain the authorization code for the domain name at issue and thus was unable to effect the transfer to Complainant. On May 8, 2008, the Center reinstated the proceedings.
The Center appointed M. Scott Donahey as the sole panelist in this matter on May 30, 2008. 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
Complainant is the owner of trademark registrations for the mark BARBARA BRENNAN, which registration issued from the United States Patent & Trademark Office (the “USPTO”) on April 6, 1999, and for the mark BARBARA BRENNAN SCHOOL OF HEALING, which registration issued from the USPTO on July 29, 1997. Complaint, Annex D. Complainant owns other trademark registrations in countries around the world.
The Barbara Brennan School of Healing, established in 1982, is known world wide as an institute for hands-on healing, is licensed by the Commission for Independent Education for the Florida Department of Education to grant Professional Studies Diplomas and Bachelor of Science Degrees in Brennan Healing Science, a specialized form of holistic healthcare.
Complainant has registered the domain name <barbarabrennan.com> and uses it to resolve to a web site which offers information regarding Complainant’s various services. Complaint, Annex E.
Respondent registered the domain name at issue on March 6, 2005. Complaint, Annex A. Respondent is using the domain name at issue to resolve to a web site at which links to holistic healing sites may be found. These links are to direct competitors of Complainant in the field of holistic healing services. Complaint, Annex G.
Respondent has been named in at least sixty-nine UDRP proceedings that have been decided against it. Complaint, Annex H.
5. Parties’ Contentions
A. Complainant
Complainant asserts that the domain name at issue is confusingly similar to Complainant’s BARBARA BRENNAN mark, that Respondent has no rights or legitimate interests in respect of the domain name at issue, and that Respondent has registered and is using the domain name at issue in bad faith.
B. Respondent
In its response, Respondent has consented to transfer of the domain name to Complainant, but although the proceedings were suspended to accommodate such transfer, Respondent professes that it is unable to effectuate the transfer.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall 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.”
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
(1) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) that the respondent has no rights or legitimate interests in respect of the domain name; and
(3) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Respondent has registered as a domain name a misspelling of Complainant’s mark. This constitutes “typosquatting”, a practice that “has been universally condemned in numerous UDRP decisions”. Edmunds.com, Inc v. Triple E Holdings Limited,
WIPO Case No. D2006-1095. The Panel finds that the domain name at issue, <barbarabrennen.com> is confusingly similar to Complainant’s BARBARA BRENNAN mark. Gaetano Inc. d/b/a Lisa Curran Swim v. Texas International Property Associates, WIPO Case No. D2007-1428 (<lisacurren.com> found confusingly similar to LISA CURRAN mark).
B. Rights or Legitimate Interests
The consensus view of WIPO panelists concerning the burden of establishing no rights or legitimate interests in respect of the domain name is as follows:
“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out an initial 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.”
In the present case the Complainant alleges that Respondent has no rights or legitimate interests in respect of the domain name, nor has Complainant granted Respondent a license, permission, or authorization to use its registered BARBARA BRENNAN service mark. Respondent has failed to respond to Complainant’s assertions, other than to consent to transfer of the domain name at issue. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the domain name at issue.
C. Registered and Used in Bad Faith
Respondent is using the domain name at issue to resolve to a web site at which direct links to Complainant’s competitors are listed. Respondent is obviously deriving income from such links on a pay-per-click basis. This is a violation of paragraph 4(b)(iv) of the policy and constitutes bad faith registration and use. ACCOR v. Steve Terry / North West Enterprise, Inc.,
WIPO Case No. D2006-0649. Accordingly, the Panel finds that the domain name at issue was registered and is being used in bad faith.
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, <barbarabrennen.com>, be transferred to Complainant.
M. Scott Donahey Sole Panelist
Dated: June 13, 2008
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