Global Business Network, Inc. v. James Pinda

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Global Business Network, Inc. v. Mr. James Pinda

Case No. D2006-0101

1. The Parties

The Complainant is Global Business Network, Inc., Emeryville, California, United States of America, represented by Bromberg & Sunstein, LLP, United States of America.

The Respondent is Mr. James Pinda, Fremont, California, United States of America.

2. The Domain Name and Registrar

The disputed Domain Name <gbnlook.com> is registered with eNom, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 23, 2006. On January 24, 2006, the Center transmitted by email to eNom a request for registrar verification in connection with the Domain Name. Later that day, eNom transmitted by email to the Center its verification response confirming that the Domain Name was placed under a locked status to prevent any transfers or changes to the registration agreement. eNom also confirmed that any correspondence concerning this case must be in English, that the registrant has consented to the jurisdiction of federal and state courts in Kings County, Washington, and that current contact information for the <gbnlook.com> Domain Name can be found using http://whois.enom.com. 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 January 30, 2006. In accordance with the Rules, paragraph 5(a), the due date for a Response was February 19, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of his default on February 21, 2006.

The Center appointed Lynda M. Braun as the sole panelist in this matter on March 1, 2006. The Sole Panelist finds that the Administrative Panel (hereinafter referred to as the “Panel”) 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.

On March 9, 2006, the Center received a Supplemental

Submission from the Complainant and asked the Panel if it was willing to review

it. On March 10, 2006, the Panel agreed to review the Supplemental Submission.

4. Factual Background

The Complainant is a business consulting firm located in Emeryville, California, that is a wholly-owned entity of Monitor Company Group in Cambridge, Massachusetts. The Complainant provides services in the field of formulating scenario-based business strategies. Since being founded in 1987, and without interruption, the Complainant has used the GBN and GLOBAL BUSINESS NETWORK names and marks in connection with its business consulting services. Since 1998, the Complainant has operated a web site on a domain name, <gbn.com>, that was registered by the Complainant on August 7, 1998.

The Respondent is an individual with a post office box located in Fremont, California. The Respondent registered the Domain Name <gbnlook.com> on October 4, 2004.

On January 5, 2006, counsel for the Complainant wrote

to the Respondent, requesting the removal of all content from <gbnlook.com>

and the transfer of the Domain Name to the Complainant. The Complainant received

no response to the letter, but on or about January 25, 2006, after the instant

proceeding was commenced, the Respondent replaced the content on <gbnlook.com>

with click-through advertising content.

5. Parties’ Contentions

A. Complainant

The Complainant claims that the GBN mark is widely known throughout the United States and the world for its association with the Complainant’s consulting services.

The Complainant asserts that the Respondent has no affiliation with the Complainant and did not receive any authorization from the Complainant to register a domain name incorporating the GBN mark or to otherwise use the GBN mark.

The Complainant contends that the content posted by the Respondent on <gbnlook.com> not only copied the look and feel of the Complainant’s official website, but included copyrighted text lifted directly from the Complainant’s website. The Complainant further contends that the Respondent’s web site was used as a vehicle to disseminate third-party advertisements and sponsored links to internet users confused by the <gbnlook.com> Domain Name.

The Complainant alleges that the Respondent has failed to disclose reliable information about his identity, as evidenced by archived WHOIS records for <gbnlook.com> reflecting the following:

- Between late 2004 and April 2005, Jaishan Cui of Changchun, China, was the administrative, technical, and billing contact.

- As of April 2005, James Bond of Berkshire, Great Britain, was the administrative, technical, and billing contact.

- As of June 2005, James Bond of Changchun, China, was the administrative, technical, and billing contact.

- Since January 2006, James Pinda of Fremont, CA has been the administrative, technical, and billing contact.

The Complainant maintains that it holds common law rights in the GBN mark for use in, inter alia, business consulting services, and that these rights have been held since 1987, when Global Business Network was founded and began to use the GBN name. The Complainant therefore maintains that its rights in the GBN mark pre-date and are superior to the Respondent’s rights in the <gbnlook.com> Domain Name.

The Complainant avers that the Domain Name is confusingly similar to the GBN mark because it contains the GBN mark in its entirety, regardless of any other terms (in this case, “look”) also present in the Domain Name.

The Complainant argues that the Respondent has no legitimate interest in the <gbnlook.com> Domain Name for several reasons:

- The Respondent does not use the Domain Name in connection with the sale of legitimate goods and services; rather, the Domain Name is used to redirect confused internet users to the advertisements and sponsored links present on the Respondent’s web site.

- The Respondent is not affiliated with the Complainant, lacks any authorization by the Complainant to register a domain name incorporating the GBN mark, and is not licensed or otherwise permitted to use the mark.

- The Respondent is not commonly known under the GBN name or any similar term.

- The Respondent did not answer the Complainant’s January 5, 2006, cease and desist letter.

The Complainant states that the Respondent registered and is using the <gbnlook.com> Domain Name in bad faith by using content designed to create confusion as to source, sponsorship, affiliation, and endorsement. The Complainant cites the following such instances of bad faith:

- The Respondent copied the “look and feel” of the Complainant’s “www.gbn.com” web site by employing similar colors, layout, and categories.

- The Respondent included numerous references to Peter Schwartz, one of the founders of GBN.

- The Respondent engaged in wholesale copying of portions of the copyright-protected text contained on the Complainant’s “www.gbn.com” web site, violating both copyright law and the terms and conditions governing the Complainant’s official site.

- The Respondent passed himself off as the Complainant GBN for commercial gain.

- The Respondent ignored the Complainant’s cease and desist letter but changed the content of the ”www.gbnlook.com” web site after the instant complaint was filed.

- The Respondent breached his registration agreement by failing to provide accurate and complete contact information to eNom.

B. Respondent

The Respondent has failed to respond to the Complaint

or to any other communications from the Complainant.

6. Discussion and Findings

A. Identical or Confusingly Similar

First, the Complainant must prove that the Domain Name is identical or confusingly similar to the Complainant’s service mark. (Policy, paragraph 4(a)(i)).

While the GBN trademark has not been registered, registration is not a requirement

for protection under the Policy; unregistered, common law trademarks are also

accorded rights so long as the Complainant can establish sufficient secondary

meaning in association with the Complainant and the Complainant’s services.

Australian Trade Commission v. Matthew Reader, WIPO

Case No. D2002-0786; Imperial College v. Christophe Dessimoz, WIPO

Case No. D2004-0322; Crux Scientific Publishers BVBD v. W. Frederic Isler,

WIPO Case No. D2000-0575. The Panel is

satisfied that the Respondent has carried its burden of establishing the necessary

distinctiveness of the GBN mark as garnered through nearly 20 years of sustained

use in the business consulting community and as reflected on the official “www.gbn.com”

web site.

Turning to the issue of similarity of the Domain Name and the trademark, the

only differences between the disputed Domain Name and the Complainant’s

GBN mark lie in the addition of the word “look” and the inclusion

of the generic top-level domain “.com.”. It is generally accepted

that the addition of “.com” in no way distinguishes a domain name

which otherwise wholly incorporates another’s trademark. Pomellato

S.p.A v. Richard Tonetti, WIPO Case No.

D2000-0493 (finding <pomellato.com> identical to the Complainant’s

mark because the generic top-level domain (gTLD) “.com” after the

name “Pomellato” is not relevant); Oxygen Media, LLC v. Primary

Source, WIPO Case No. D2000-0362 (finding

<oxygen.com> identical to the Complainant’s mark because the addition

of “.com” after the name “Oxygen” was not a distinguishing

difference).

As for the appending of “look” to the GBN mark, it is well established

that the addition of generic words to a mark does nothing to change an otherwise

identical or confusingly similar domain name. PRL USA Holdings, Inc. v. Unasi

Management Inc., WIPO Case No. D2005-1027

(descriptive or generic additions do not avoid confusing similarity of domain

names and trademarks); International Organization for Standardization ISO

v. Quality Practitioners Institute and Website Pros, Inc. and Quality, WIPO

Case No. D2005-1028 (the addition of generic words to a mark to form a domain

name is insufficient to dispel confusing similarity). To the extent the word

“look” is evocative of the similar look and feel of the ”www.gbnlook.com”

site to the official GBN site, the likelihood of confusion is even higher.

The Panel therefore concludes that the disputed Domain Name <gbnlook.com> is confusingly similar to the Complainant’s GBN mark.

B. Rights or Legitimate Interest

The Complainant is also required to prove that the Respondent has no rights or legitimate interest in respect of the Domain Name. (Policy, paragraph 4(a)(ii)).

Once a complainant establishes that a respondent’s domain name is identical

or confusingly similar to the complainant’s mark, and that the complainant

has not authorized respondent to use the mark, the burden shifts to the respondent

to establish some right or legitimate interest in respect of the domain name.

Sony Kabushiki Kaisha v. Sony.net, WIPO

Case No. D2000-1074. In light of the Respondent’s default, the Panel

presumes that the Respondent has no such rights or legitimate interest.

The Respondent’s default notwithstanding, there is no evidence in the

record that the Respondent is in any way associated with the Complainant, that

the Respondent is now or was ever known by <gbnlook.com>, or that the

Respondent has other authority or permission to use the Complainant’s

mark. Furthermore, by not submitting a Response, the Respondent has failed to

invoke any other circumstance that might demonstrate, pursuant to paragraph

4(c) of the Policy, that it holds some right or legitimate interest in the disputed

Domain Name. Ahead Software AG v. Leduc Jean, WIPO

Case No. D2004-0323; See also Nintendo of America, Inc. v. Tasc, Inc.

and Ken Lewis, WIPO Case No. D2000-1563

(the respondent’s default alone sufficient to conclude that it

had no rights or legitimate interest in the domain name).

Moreover, the Respondent’s use of the Domain Name to redirect unsuspecting

internet users to click-through advertisements and sponsored links present on

<gbnlook.com> fails to constitute a bona fide commercial offering

of goods and services under the contested Domain Name. Such use certainly does

not constitute a legitimate non-commercial or fair use without any intent either

for commercial again, or to mislead or divert consumers or tarnish the trademark

at issue. See MSNBC Cable, LLC v. Tysys.com, WIPO

Case No. D2000-1204.

Finally, the Respondent’s failure to respond to the Complainant’s

cease and desist letter is indication of the Respondent’s lack of legitimate

interest in the <gbnlook.com> Domain Name. Pfizer Inc. v. Asia Ventures,

Inc., WIPO Case No. D2005-0256.

As such, the Panel finds that the Respondent has no rights or legitimate interest in the disputed Domain Name. Accordingly, the Complainant has proven paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainant must additionally establish that the disputed Domain Name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)). Based on the record presented, the Panel concludes that the Complainant has proffered sufficient evidence of bad faith.

As an initial matter, the Panel finds that the Respondent has furnished incomplete

and misleading contact information to its Registrar, which constitutes a breach

of the registration agreement,1

and is also evidence of bad faith. See, e.g., Women in Military Service for

America Memorial Foundation, Inc. v. Russian Web Marketing, WIPO

Case No. D2001-0610; Advanced Micro Devices, Inc. v. [No Name], WIPO

Case No. D2000-0515. “An obligation exists on each domain name registrant,

under its registration agreement, to not only provide its registrar with current,

complete and accurate contact information but also to update that information

to reflect any subsequent changes in order that the information, accessible

through the WhoIs database, is always current, complete and accurate.”

Park Place Entertainment Corporation v. Bowno, WIPO

Case No. D2001-1410 (panels view erroneous contact information as

a deliberate, continuing attempt calculated to conceal that registrant’s

identity and location, and thereby frustrate service of process and obstruct

the application of the Uniform Policy).

The Panel also finds that the Respondent copied a substantial portion of the look and feel of the Complainant’s “www.gbn.com” web site, providing further indicia of bad faith.

Burlington Networks Inc. v. Igor Sashin, WIPO

Case No. D2005-1036 (replicating the look and feel of the complainant’s

website suggests that the respondent was engaging in a bad faith deception as

to its identity).

Finally, in addition to the copying of stylistic components, the Respondent

also engaged in wholesale copying of copyrighted text from “www.gbn.com”,

a hallmark of bad faith registration and use. See Amanresorts Ltd. v. Access

Bali Online, WIPO Case No. D2004-0219

(use of the complainant’s copyrighted material promotes confusion as to

affiliation, sponsorship, and/or endorsement of the respondent by the complainant).

Given the above facts and circumstances, the Panel finds that the Respondent

has registered and is using the Domain Name at issue 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 <gbnlook.com> be transferred to the Complainant.

Lynda M. Braun

Sole Panelist

Dated: March 15, 2006

1 The eNom registration agreement provides in relevant part: “ACCOUNT CONTACT INFORMATION AND DOMAIN NAME WHOIS INFORMATION: As further consideration for the Service(s), you agree to provide certain current, complete and accurate information about you, both with respect to your account information and with respect to the WHOIS information for your domain name(s). You agree to maintain and update this information as needed to keep it current, complete and accurate. With respect to you, the administrative, technical, and billing contacts for your domain name registration(s) and other Service(s), you must submit the following: name, postal address, e-mail address, voice telephone number, and where available, fax number. You agree that the type of information you are required to provide may change and you understand that, if you do not provide the newly required information, your registration or and/or other Service(s) may be suspended or terminated or may not be renewed.”