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Asset Marketing Systems, LLC v. SmartBuy Corporation, Chan Organization, Mitchell de la Cruz, Gongju Jung et. al. [2004] GENDND 1210 (17 September 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Asset Marketing Systems, LLC v. SmartBuy Corporation, Chan Organization, Mitchell de la Cruz, Gongju Jung et. al.

Case No. D2004-0492

1. The Parties

The Complainant is Asset Marketing Systems, LLC, San Diego, California of United States of America, represented by Higgs, Fletcher & Mack LLP, United States of America.

The Respondents are SmartBuy Corporation of Orange, California, United States of America, Chan Organization of Rapperswil, Switzerland, Mitchell de la Cruz of Toulouse, France, and Gongju Jung of Daejeon-City, Dong-gu, Republic of Korea.

The Complaint also lists Andy Tran, Tom Tran, Spencer Tran and Hinh Tran as respondents. These respondents appear to be employees or officers of SmartBuy Corporation.

2. The Domain Names and Registrars

The disputed domain names <assetmarketing.net>, <businessbrand.net>, and <imagebrand.net> are registered with Universal Registration Services, Inc. and Tucows.

3. Procedural History

The Complainant filed its initial complaint against the Respondent, SmartBuy Corporation. Due to the Respondent’s alleged transfer of the domain names at issue to three other entities, the Complainant filed an Amended Complaint with the WIPO Arbitration and Mediation Center (the “Center”) on July 2, 2004. On July 5, 2004, the Center transmitted by email to Universal Registration Services, Inc. and Tucows a request for registrar verification in connection with the domain names at issue. On July 6, 2004, Universal Registration Services, Inc. transmitted by email to the Center its verification response confirming that the Respondent Chan Organization is listed as the registrant for <assetmarketing.net> and providing the contact details for the administrative, billing, and technical contact. On July 7, 2004, Tucows transmitted by email to the Center its verification response confirming that the Respondents Mitchell de la Cruz and Gongju Jung are listed as the registrants for <imagebrand.net> and <businessbrand.net> and providing the contact details for the administrative, billing, 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 the Respondents of the Complaint, and the proceedings commenced on July 13, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was August 2, 2004. The Respondents did not submit any response. Accordingly, the Center notified the Respondents of their default on August 3, 2004.

The Center appointed Mark Partridge as the sole panelist in this matter on August 9, 2004. 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.

The Panel issued a Procedural Order on August 30, 2004, requesting Complainant “to submit the evidence of the nature, extent and manner of its alleged use of BUSINESS BRANDER and IMAGE BRANDER as a trademark since May 1, 2003, and to present additional points and authorities regarding the distinctiveness of these alleged marks.” Complainant responded on September 10, 2004.

4. Factual Background

Complainant ASSET MARKETING SYSTEMS is “one of the world’s largest direct distributors of fixed and equity indexed annuities,” according to a declaration by its Chief Operating Officer Jay Akerstein.

Complainant maintains its website at “www.assetmarketingsystems.com”. Its website indicates that the Complainant offers a portfolio of marketing packages to help clients market financial services. BUSINESS BRANDER and IMAGE BRANDER are two different marketing systems offered by Complainant.

According to Akerstein’s declaration, Complainant began using the mark ASSET MARKETING SYSTEMS in 1996. Its website indicates that ASSET MARKETING SYSTEMS began in 1997.

Complainant received a U.S. trademark registration for ASSET MARKETING SYSTEMS on October 22, 2002.

Complainant filed U.S. federal trademark application for BUSINESS BRANDER on May 6, 2003, and IMAGE BRANDER on May 28, 2003, with the United States Patent and Trademark Office (“USPTO”) claiming an intent to use the marks in commerce.

The Akerstein Declaration states that BUSINESS BRANDER was first used as a mark on May 1, 2003, and that IMAGE BRANDER was first used “in commerce” on May 1, 2003, in conjunction with financial goods and services.

Complainant has no affiliation with any of the Respondents.

The business of Respondent SmartBuy Corporation appears to be the acquisition of numerous domain names.

Respondent SmartBuy Corporation registered the disputed domain names <imagebrand.net> and <businessbrand.net> on or after October 29, 2003. SmartBuy Corporation registered <assetmarketing.net> on January 8, 2004, after receiving an objection concerning the first two domain names from Complainant’s counsel.

Complainant contacted SmartBuy Corporation via mail, email, and telephone to resolve the dispute over the domain names prior to filing the Complaint. Specifically, Michael Hoisington, an associate with the law firm of Higgs, Fletcher & Mack, LLP, attorneys on record for Complainant, in his declaration states that he had telephoned the Respondent SmartBuy Corporation on April 27 and 29, 2004, and its law firm had sent two letters, dated December 16, 2003 and January 30, 2004, to SmartBuy Corporation and Andy Tran.

Before the Complaint had been filed, the Respondent SmartBuy Corporation appears to have transferred the domain names to three separate entities in three different countries.

However, the new registrants’ contact information provided to the registrar contains some inaccuracies.

The record shows that SmartBuy Corporation had transferred <assetmarketing.net> to the Chan Organization in Rapperswil, Switzerland on May 3, 2004.

In his declaration, Hoisington states that his investigation revealed that the whois information about the Chan Organization is false. The city code 079 does not exist in Rapperwil and the telephone code for Rapperswil is 55. The tourist bureau also reported to Hoisington that the Chan Organization does not exist at the listed address.

The records show that SmartBuy Corporation transferred <businessbrand.net> to Gongju Jung in Daejeon City, South Korea. According to Hoisington, the address from the whois information appears to be false.

The record shows that SmartBuy Corporation transferred <Imagebrand.net> to Mitchell de la Cruz in Toulouse, France. In his declaration, Hoisington indicates that the e-mail address of the new registrant of <imagebrand.net> is connected to SmartBuy Corporation. In his investigation, Hoisington discovered that the registrant’s email address is associated with a business called Keyboardcountry.Com. The telephone number listed for Keyboardcountry.Com is Joblink.com Corporation. SmartBuy Corporation owns the registration for Joblink.com Corporation. Joblink.com also has a voice mail directory which includes listing boxes for Tom Tran, Spencer Tran. Hinh Tran, and Duke Tran, employees or associates of SmartBuy Corporation. In addition, using a reverse e-mail look-up, Hoisington indicates that the e-mail address can also be traced to Tuan Tran. It is unclear from the record what affiliation Tuan Tran has with SmartBuy Corporation.

Respondents are not currently using the domain names <assetmarketing.net> and <imagebrand.net> for any offering of services or products. The domain name <businessbrand.net> contains a list of links related to branding and business planning.

5. Parties’ Contentions

A. Complainant

Complainant contends that Respondent SmartBuy Corporation still remains in control of the domain names at issue even though Respondent SmartBuy Corporation transferred the domain names at issue to three separate entities in three different countries.

Complainant contends that it owns trademark rights in ASSET MARKETING SYSTEMS, BUSINESS BRANDER, and IMAGE BRANDER and the domain name are confusingly similar to that mark. Complainant further contends that the Respondents’ conduct is not legitimate and constitutes bad faith registration and use.

B. Respondents

Respondents did not reply to the Complainant’s contentions.

6. Discussion and Findings

The threshold question is whether the complaint against the three domain names currently held by different registrants is properly addressed in one proceeding.

Under paragraph 8(a) of the Policy, the domain name holder may not engage in “cyberflying,” where a registrant of a domain name transfers the disputed domain name to a different registrant to disrupt a pending proceeding. Here, the transfer from SmartBuy Corporation to three separate entities took place before the Complaint was filed, which makes Paragraph 8(a) inapplicable. Nevertheless, Complainant has presented evidence which supports the conclusion that all the Respondents (hereafter “Respondent”) are related and are under common control. Therefore, the Panel concludes that it is proper to address all of domain names in a single proceeding.

Complainant bears the burden of proving each of the following elements:

(i) 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

(ii) that the respondent has no rights or legitimate interest in the domain name; and

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

A. Identical or Confusingly Similar

In the event of a default, Paragraph 14 of the Rules provides that “the Panel shall draw such inferences therefrom as it considers appropriate and proceed to decision.” See Herbalife International of America, Inc. v. myherbalife.com, WIPO Case No. D2002-0101 (finding where respondent had failed to answer and defaulted that it was appropriate to presume from the registrant’s default after notice that the registrant does not dispute the facts presented by the complainant).

However, Complainant has the burden of establishing ownership of trademark rights to prevail on its Complaint and little weight will be given to conclusory allegations.

Complainant owns an U.S. trademark registration for ASSET MARKETING SYSTEMS dated October 22, 2002. This registration is prima facie evidence of the validity of the mark. 15 USC 1115(a). The domain name < assetmarketing.net> fully incorporates the dominant terms of Complainant’s mark and is confusingly similar.

Complainant has filed applications to register the marks IMAGE BRANDER and BUSINESS BRANDER with the USPTO. The USPTO has issued a Notice of Allowance for BUSINESS BRANDER and Complainant has filed a Statement of Use. Complainant also has pending trademark applications in Canada and the United Kingdom for BUSINESS BRANDER and IMAGE BRANDER. No registration has yet issued for these marks. However, Paragraph 4(a)(i) of the Policy does not require Complainant to have registered trademark rights; a common law mark is adequate for the purposes of 4(a)(i).

Complainant provided evidence of use of the marks BUSINESS BRANDER and IMAGE BRANDER in its supplemental submission. It appears that Complainant started marketing BUSINESS BRANDER in 2002, and commenced using BUSINESS BRANDER and IMAGE BRANDER in 2003. IMAGE BRANDER and BUSINESS BRANDER are used in Complainant’s marketing brochures. Complainant uses BUSINESS BRANDER on its marketing CD-Rom where the mark is prominently displayed. Complainant receives over 1000 discreet hits each month on its website where the marks are used in relation to Complainant’s goods and services. Complainant has also sold over 900 goods or services under the BUSINESS BRANDER or IMAGE BRANDER marks. Furthermore, the supplemental brief and the Declaration of Jay Akerstein specify that $120,000 has been spent on marketing and developing the BUSINESS BRANDER and IMAGE BRANDER marketing systems.

The Panel finds that that these unrebutted facts are sufficient to demonstrate common law rights in the marks, and that the domain names <businessbrand.net> and <imagebrand.net> are confusingly similar to the marks BUSINESS BRANDER and IMAGE BRANDER.

Therefore, the Panel finds that Complainant has met is burden on the first element of its claim with respect to the domain names.

B. Rights or Legitimate Interests

Under Paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate a registrant’s rights to and legitimate interest in a domain name:

(1) demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services prior to the dispute;

(2) an indication that the registrant has been commonly known by the domain name even if it has acquired no trademark rights; or

(3) legitimate noncommercial or fair use of the domain name without intent to divert consumers or to tarnish the trademark.

Based on the record presented, it appears that Respondent does not have any rights or a legitimate interest in the domain names <assetmarketing.net>, <businessbrand.net>, <imagebrand.net>. The inaccuracies contained in the registration information create an inference that the registrant does not have a legitimate interest. Currently, Respondent is merely holding the domain names and has not made any demonstrable preparations to use them for a bona fide offering of goods or services. In addition, there is no indication from the record that Respondent is known by any of the three domain names or is making any legitimate noncommercial use or fair use of them.

C. Registered and Used in Bad Faith

For the purposes of Paragraph 4(a)(iii), the following circumstances, 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:

(i) circumstances indicating that [Respondents] have registered or [Respondents] have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of [Respondents’] documented out-of-pocket costs directly related to the domain name; or

(ii) [Respondents] have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [Respondents] have engaged in a pattern of such conduct; or

(iii) [Respondents] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, [Respondents] have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on [Respondents’] web site or location.

This list is non-exclusive and other circumstances may be and have been considered in determining bad faith registration and use. See Council of American Survey Research Organizations v. The Consumer Information Organization, LLC, aka Pinelands Web Services, WIPO Case No. D2002-0377.

Passive holding of domain names corresponding to another’s mark may support a finding of bad faith use. See Reliant Energy v. Robert Wiggins, WIPO Case No. D2001-0769 citing Lake Las Vegas Joint Venture v. M. Bridges and Third Party Protection, Investigations and Consultants, WIPO Case No. D2001-0226, and Telstra Corporation Limited. v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

Prior panel decisions show the following circumstances are sufficient to establish bad faith registration and use.

1. Failure to provide a voice or fax phone number of the administrative contact and the voice and fax telephone number of the billing contact as required under the Registration Agreement. See Sud-Chemie AG v. tonsil.com, WIPO Case No. D2000-0376 (July 3, 2000) (failure to provide contact information as required under the Registration Agreement is evidence of bad faith).

2. Deliberate steps to conceal true identity. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (finding bad faith where the “Respondent has taken deliberate steps to ensure that its true identity cannot be determined and communication with it cannot be made.”); Yahoo!, Inc. v. Eitan Zviely et al., WIPO Case No. D2000-0273 (finding that “[Respondent’s] registrations under phony names” is evidence of bad faith registration use); Salomon Smith Barney Inc. v. Salomon Internet Services, WIPO Case No. D2000-0668 (finding bad faith use and registration where Respondent “has taken steps to conceal its true identity”);

3. Providing false and misleading information in connection with the registration of the Domain Name. See Home Director, Inc. v. HomeDirector, WIPO Case No. D2000-0111 (finding bad faith use and registration where Respondent used “false and misleading information in connection with the registration of the Domain Name”);

4. Using the name of an unidentifiable business entity. See 3636275 Canada dba eResolution v. eResolution.com, WIPO Case No. D2000-0110 (finding bad faith use and registration where the Domain Name “is an unidentified business name of an unidentified business entity”); Salomon Smith Barney Inc. v. Salomon Internet Services, WIPO Case No. D2000-0668 (finding bad faith use and registration where Respondent has operated “under a name that is not a registered business name and by actively providing false contact details to NSI and by Respondent’s passive use of the Web site”);

5. Failure to provide conventional information for one engaged in proper business activities. See 3636275 Canada dba eResolution v. eResolution.com, WIPO Case No. D2000-0110 (finding bad faith use and registration where Respondent has provided a means of communication and contact that are, to say the least, unusual and even questionable for someone conducting a business”);

6. Failure to provide sufficient contact information to the Registrar. See Sud-Chemie AG v. tonsil.com, WIPO Case No. D2000-0376 (finding bad faith use and registration where Complainant “was unsuccessful in its attempts to contact Respondent by using the contact details in the Registrar’s registry”);

7. Failure to provide a street address. See 3636275 Canada dba eResolution v. eResolution.com, WIPO Case No. D2000-0110 (finding bad faith use and registration where Respondent has not provided a street address . . .”).

Here, the combination of the passive holding of the domain names <assetmarketing.net>, <businessbrand.net> and <imagebrand.net>, the providing of false and misleading information in connection with the registration of the domain names, the circumstances of transfer, the failure to present any evidence in rebuttal, and the absence of any basis for a finding of good faith similarly support the conclusion that Respondent registered and used the domain names in bad faith.

7. Decision

The Panel finds with respect to the domain names <assetmarketing.net>, <businessbrand.net>, and <imagebrand.net that (1) the domain names are confusingly similar to marks in which Complainant has protectable rights; (2) Respondent does not have a legitimate interest in the domain names; and (3) Respondent has registered and used the domain names in bad faith. 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 names be transferred.

Mark Partridge
Sole Panelist

Dated: September 17, 2004