WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Brink's Network, Inc. v. Jenny Ho, brinksplacetv.com

Case No. D2009-0530

1. The Parties

The Complainant is Brink's Network, Inc. of Delaware, United States of America represented by Thompson Coburn LLP, United States of America.

The Respondent is Jenny Ho, brinksplacetv.com of Tampines, Singapore.

2. The Domain Name and Registrar

The disputed domain name <brinksplacetv.com> is registered with Active Registrar, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 22, 2009. On April 23, 2009, the Center transmitted by email to Active Registrar, Inc. a request for registrar verification in connection with the disputed domain name. On April 25, 2009, Active Registrar, Inc. 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” 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 the Respondent of the Complaint, and the proceedings commenced on April 28, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was May 18, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 19, 2009.

The Center appointed David Perkins as the sole panelist in this matter on May 27, 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.

4. Factual Background

4.A The Complainant

The Brink's businesses

4.A.1 The Complainant is a global leader in security services. It was established in 1859 and has traded under the BRINKS name and mark since then. It currently employs over 50,000 people worldwide and has operations in over 50 countries. The Complainant provides armoured car transportation, ATM servicing, currency and coin processing and other services to banks, retailers and other commercial entities and governmental agencies around the world.

4.A.2 Additionally, in 1983 the Complainant, through its licensee, Brink's Home Security, Inc, entered the home security market providing high quality monitored alarm systems to homeowners. That business uses the trademark BRINK'S HOME SECURITY and has over one million customers in Canada and the United States.

4.A.3 Still further, in 1997 the Complainant began using its BRINK'S trademark in connection with residential and commercial safes.

The BRINK'S Trademarks

4.A.4 The Complainant has registered trademarks worldwide for BRINK'S and its family of BRINKS marks – including, for example, BRINK'S HOME SECURITY – covering safes, security systems, security transportation, security monitoring services and other related goods and services. In the United States, the Complainant has 18 such trademark registrations, 9 of which are incontestable. They comprise the following:

4.A.5 The Complainant is also the proprietor of the following trademark registrations in the Respondent's home country, Singapore.

The BRINKS Domain Names

4.A.6 The Complainant owns the following domain names which incorporate the BRINKS trademark, namely <brinks.com>: <brinksinc.com> and <brinkshomesecurity.com>, which resolve to websites promoting its goods and services.

4.A.7 In addition, the Complainant also maintains many country specific websites for those countries where it transacts significant business, which websites prominently display the BRINKS mark in connection with the various security services which it provides. Such country specific websites include “www.brinkssingapore.com.sg”; “www.brinks.co.kr and” “www.brinks.co” and “www.brinks.co.th”. Brinks Singapore Pte Ltd company, a wholly owned subsidiary of the Complainant, commenced business in 1989.

4.B. The Respondent

4.B.1 In the absence of a Response, what is known of the Respondent is derived from the Complaint. First, the disputed domain name was registered on December 12, 2007.

4.B.2 Second, as at September 2008 the disputed domain name resolved to a website displaying “Related Searches” consisting of advertisements and links to Internet searches, including inter alia, links to Internet searches for “Brink's”. Clicking on to that “Brinks” link forwarded Internet users to “Sponsored Listing” which included links both to Brinks and to its competitors in the Home Security Business. As at April 13, 2009 the disputed domain name resolved to a website offering links to websites for Home Alarm Systems, Home Security and Security Cameras offered by the Complainant's competitors.

4.B.3 A cease and desist letter was sent to the Respondent by the Complainant's counsel on September 4, 2008 to which no reply was received. A second cease and desist letter was sent to the Respondent on October 7, 2008 enclosing a copy of the letter dated September 4, 2008 but, again, no reply was received.

4.B.4 Letters from the Complainant's counsel to the Registrar of the disputed domain name dated November 26, 2008 and January 7, 2009 were, similarly, unanswered.

5. Parties' Contentions

5.A. Complainant

5.A.1 Identical or Confusingly Similar

5.A.1.1 The Complainant states that its BRINKS trademark is among the most famous trademarks in the United States dating from first use in 1859 and the earliest trademark registration dating from 1947. It is also registered and used internationally, including in Singapore where the first BRINKS trademark was registered in 1982.

5.A.1.2 The Complainant's case is that the disputed domain name is confusingly similar to its famous BRINKS trademark. This is because the dominant feature of the domain name is BRINKS, followed by the descriptive words “Place” and “TV”. The Complainant says that the “Place” element suggests that the website to which the domain name resolves is a “place” where the Complainant or information about the Complainant can be found and the “TV” element could be interpreted as a descriptive reference to the monitoring services it provides. Neither part of the “placetv” suffix does anything, the Complainant says, to dispel a visitor's belief that the disputed domain name is associated with or authorised or sponsored by its famous BRINKS mark and, hence, its business.

5.A.1.3 In this respect, the Complainant cites Dr Ing. h.c.F Porsche AG v. Vasiliy Terkin,WIPO Case No. D2003-0888. In that case the disputed domain name was <porsche-autoparts.com>. The panelist held that the descriptive suffix “autoparts” added to the confusion likely from incorporation of the complainant's PORSCHE trademark by leading users to believe that the complainant actually operated the website to which the disputed domain name resolved.

5.A.1.4 The Complainant also points to the content of the website containing links to competitor products and services [see, paragraph 4.B.2 above] as adding to the confusing similarity, citing AT&T Corp v. William Gormally,WIPO Case No. D2005-0758 in support of that proposition. In that case, the disputed domain name <attelephone.com> was held to be confusingly similar to the complainant's ATT trademarks on the grounds that not only that it incorporated the entirety of those trademarks but also having regard to the way it was used. This was to resolve to a website containing a variety of links to competitors of the complainant.

5.A.2 No rights or legitimate interests

5.A.2.1 The Complainant states that the Respondent is not a licensee nor is she otherwise authorised to use the BRINKS trademark. Further, the Complainant's trademark rights and its use of the BRINKS trade (from 1859) predate registration of the disputed domain (December 2007) by very many years. Still further, from a search made by the Complainant with the US Patent and Trademark Office for applications or registrations in the Respondent's name, for marks incorporating BRINKS, no such applications or registrations were found. From this the Complainant concludes that the Respondent cannot show that she has been commonly known by the disputed domain name. Those three factors, taken together, indicate – the Complainant says – that the Respondent can have no rights to or legitimate interests in the disputed domain name, citing in that respect Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403. In that case, the disputed domain name was <charlesjourdan.com> and the combination of those three factors was held to satisfy the requirement of paragraph 4(a)(ii) of the Policy.

5.A.2.2 Nor, the Complainant says, can the Respondent assert that her use of the disputed domain name can amount to a bona fide offering of goods or services where, as in this case, the domain name resolves to a website offering products and services of the Complainant's competitors [see, paragraph 4.B.2 above]. In that respect, the Complainant cites Air Austral v. WWW Enterprise, Inc, WIPO Case No.: D2004-0765, where the disputed domain name <airaustral.net> resolved to a pay-per-click website which provided links to “the commercial websites of others in a similar field to the Complainant”. That was held to constitute neither a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy, nor a legitimate non-commercial or fair use under paragraph 4(c)(iii) of the Policy.

5.A.2.3 In the circumstances, the Complainant asserts that the Respondent's only interest in using the disputed domain name can have been to trade off the goodwill in the Complainant's famous BRINKS trademark for the Respondent's commercial benefit. In this respect, the Complainant cites Lo Monaco Hogar, S.L. v. MailPlanet.com.Inc,WIPO Case No. D2005-0896. There the complainant was a Spanish company, which was a leading retailer in that country of household items under the trademark LO MONACO, including a high quality mattress made of latex. The disputed domain name <lomonaco.com> was used by the respondent to resolve to a website which contained links, inter alia, to latex mattresses and to the websites of the complainant's competitors. In a keenly contested proceeding, the three member panel held that the respondent had no rights or legitimate interest in respect of the disputed domain name.

5.A.3 Registered and Used in Bad Faith

5.A.3.1 Here, the Complainant asserts that the circumstances set out in paragraph 4(b)(iv) of the Policy are present. First, given the notoriety of its BRINKS trademark, the Complainant says it is inconceivable that the Respondent registered the disputed domain name in good faith and without knowledge of that trademark. As to that, the Complainant cites Nike, Inc v. B B de Boer,WIPO Case No. D2000-1397 where, having regard to the well known status of the complainant's NIKE trademark, the panel held that it was “… very unlikely, if not impossible that, when Respondent registered the domain name, it was not aware that it was infringing on Complainant's trademark rights”. The disputed domain name was <nike-shoes.com>.

5.A.3.2 Even if the Respondent should lack knowledge of the Complainant's rights in the BRINKS trademark, the Complainant asserts that its US trademark registrations (identified in paragraph 4.A.4 above) are sufficient to provide constructive notice of its rights to that mark. In that connection, the Complainant cites Kate Spade LLC v. Darmstader Designs,WIPO Case No. D2001-1384. There the complainant's trademark was JACK SPADE used for handbags, which was registered with the US Patent & Trademark office from an application made in 1997, which was pending at the time that the disputed domain name <jackspade.com> was registered in 1999. Finding bad faith registration and use, the panel held that, had the respondent conducted a search at the US Patent & Trademark Office before registering that domain name, it would have received actual notice of both the pending application and the complainant's actual use of the JACK SPADE mark. As both parties to that dispute were from the United States, the panel held it was fair to apply United States principles of constructive notice. Here, the Complainant points to the links from the website to which the disputed domain name resolves being directed to and hence targeting the US market, rather than the Respondent registering a domain name for use in connection with a business endeavour in her home country of Singapore.

5.A.3.3 However, as noted in paragraphs 4.A.5 and 4.A.7 above, the Complainant also has prior trademark registrations in Singapore and has conducted business in Singapore for some 20 years. This, the Complainant says, suggests still more strongly that at the time of registering the disputed domain name the Respondent knew of the Complainant's rights in the BRINKS trademark, so that consequently, such registration was not made in good faith.

5.A.3.4 As to use of the disputed domain name, the Complainant asserts that it is “commercial” in the sense that its use to direct to the website described in paragraph 4.B.2 above will generate click-through revenue for the Respondent.

5.A.3.5 Further, such use, the Complainant says, is clearly designed to create a likelihood of confusion with its BRINKS trademark as to the source or affiliation of that website, being designed to attract members of the public interested in purchasing or obtaining information about BRINKS security services, safes and other services but then offering links to other websites offering, inter alia, the goods and services of the Complainant's competitors.

5.A.3.6 The Respondent cannot, the Complainant says, disclaim responsibility for such links, since the registrant of a domain name is accountable for all use of that name, even where the links are selected by an advertising network and not directly by the registrant. In support of that proposition, the Complainant cites ECOM Electronic Components trading GmbH v. Alta R; Alta R Services,WIPO Case No. D2008-1264.

5.A.3.7 Furthermore, where, as in this case, the disputed domain name resolves to a website linking consumers both to the Complainant and to its competitors, this has been held to support a finding of bad faith use. For example, the Complainant cites Microsoft Corporation v. Gioacchino Zerbo,WIPO Case No. D2005-0644 and National City Corporation v. MH Networks LLC,WIPO Case No. D2004-0128. The former involved use of the disputed domain name <internetexplorer.com> where the website to which that domain name resolved linked both to Microsoft's products and those of its competitors. Similarly, in the second case, the disputed domain name <national-city-mortgage.com> resolved to a website offering links to both the complainant's NATIONAL CITY mortgage services and those of its competitors, including Lending Tree, Ameriquest and Quicken Loans. In both cases this was held to constitute bad faith use.

5.B. Respondent

As noted, no Response has been filed.

6. Discussion and Findings

6.1 The Policy paragraph 4(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding

(i) that the Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) that the domain name has been registered and is being used in bad faith.

6.2 The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent's rights or legitimate interest in the domain name in issue.

6.3 The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.

6.4 As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant the requirements of paragraphs 4(a)(ii) and (iii) of the Policy.

Identical or Confusingly Similar

6.5 Clearly, the Complainant has rights in the BRINKS trademark, which is well known in the security market both in the United States and in many other countries.

6.6 The dominant feature of the disputed domain name is the BRINKS prefix, the suffix comprising the descriptive words “place” and “tv”. Incorporating the Complainant's well known BRINKS trademark in its entirety in that context is sufficient to establish confusing similarity under the Policy.

6.7 Although the Complainant also relies upon the content of the website to which the disputed domain name resolves as indicative of confusing similarity, the test under paragraph 4(a)(i) of the Policy is simply to compare the trademark and the domain name. Applying that test, for the reason stated in the preceding paragraph, the Complaint satisfies the first element of paragraph 4(a) of the Policy.

Rights or Legitimate Interests

6.8 There is nothing to indicate that any of the circumstances set out in paragraph 4(c) of the Policy apply in this case. Given the use to which the disputed domain name has been put – as to which, see paragraph 4.B.2 above – the Respondent's use of that domain name cannot be said to be in connection with a bona fide offering of goods or services, nor is it a non-commercial or fair use. The Complainant's case summarised in Section 5.A.2 above is well made out and supported by numerous cases decided under the Policy where similar facts applied. In the circumstances, the Complaint satisfies paragraph 4(a)(ii) of the Policy.

Registered and Used in Bad Faith

6.9 Given the well known status of the Complainant's BRINKS trademark and also its use for some 20 years in Singapore, the Respondent's home country, the only inference that can be drawn is that the disputed domain name was registered in bad faith.

6.10 As to use of that domain name, the evidence presented in the Complaint meets the circumstances set out in paragraph 4(b)(iv) of the Policy. Where, as here, the disputed domain name is used to link, inter alia, to websites of the Complainant's competitors, a holding of bad faith use will typically follow. Failure by the Respondent to submit a Response can be taken as a further inference of bad faith.

6.11 In the circumstances, the Panelist has no hesitation in finding that the Complaint meets the twin requires of 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 <brinksplacetv.com> be transferred to the Complainant.

David Perkins
Sole Panelist

Dated: June 10, 2009