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Brime.net : 20 year old domain hit with #UDRP by music app makers

Two decades after Brime.net was registered, a music app maker filed a UDRP to usurp the domain.

While Brime.net was registered in 2001, the Brime company was formed in 2020 and in 2021 they registered the mark BRIME with the USPTO.

Despite the lack of a response by the Respondent, the sole panelist at the NAF ordered the domain Brime.net to remain with them, precisely due to the 20 year seniority of the domain.

In our opinion, the Complainant should have been found guilty of Reverse Domain Name Hijacking as well.

The domain transfer was denied.

Brime, LLC v. Robert Brime

Claim Number: FA2105001947610

PARTIES

Complainant is Brime, LLC (“Complainant”), represented by Robby Anderson of Balch & Bingham LLP, Alabama, USA. Respondent is Robert Brime (“Respondent”), Madrid.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <brime.net>, registered with Arsys Internet, S.L. dba NICLINE.COM.

PANEL

The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.

Terry F. Peppard as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on May 26, 2021; the Forum received payment on May 26, 2021. The Complaint was received in English.

On May 27, 2021, Arsys Internet, S.L. dba NICLINE.COM confirmed by e-mail to the Forum that the <brime.net> domain name is registered with Arsys Internet, S.L. dba NICLINE.COM and that Respondent is the current registrant of the name. Arsys Internet, S.L. dba NICLINE.COM has verified that Respondent is bound by the Arsys Internet, S.L. dba NICLINE.COM registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On May 28, 2021, the Forum served the English language Complaint and all Annexes, including a Spanish Written Notice of the Complaint, setting a deadline of June 17, 2021, by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@brime.net. Also on May 28, 2021, the Spanish Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.

On June 22, 2121, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of a response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PRELIMINARY ISSUE: LANGUAGE OF PROCEEDING

In the ordinary course, UDRP Rule 11(a) provides that the language of this proceeding should be the language of the registration agreement governing the disputed domain name. That language is Spanish. However, Complainant has requested that the language of the proceeding should instead be English. In support of this request, Complainant submits that, during nearly all of the time that the domain name has been registered, the resolving website has been rendered exclusively in English, which demonstrates that Respondent is conversant in English. Respondent does not contest this assertion. In light of this, and having in mind that translating the documents required to prosecute this proceeding in Spanish would put Complainant to a substantial financial burden and unnecessarily delay this proceeding, and because UDRP Rule 11(a) permits this Panel to proceed in a language other than that of the governing registration agreement “having regard to the circumstances of the administrative proceeding,” we conclude that it would be in the interests of justice for us to grant Complainant’s request. See, for example, The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (a panel there exercising its discretion in deciding that the language of a proceeding should be English, notwithstanding the different language of the pertinent registration agreement, based on evidence that a respondent had command of the English language).

Accordingly, this proceeding will be conducted in the English language.

PARTIES’ CONTENTIONS

A. Complainant

Complainant provides live and static media content distribution for Internet users.

Complainant has common law trademark rights in the BRIME mark through continuous use of the mark from its first use in commerce on June 24, 2020.

Complainant also has rights in the BRIME mark by reason of its mark registration application filed with the United States Patent and Trademark Office (“USPTO”) on March 9, 2021.

Respondent registered the domain name <brime.net> on May 15, 2001.

The domain name is substantively identical and confusingly similar to Complainant’s BRIME mark.

Respondent has not been commonly known by the domain name.

Respondent has not been authorized by Complainant to use the BRIME mark.

Respondent has not used the domain name in connection with a bona fide offering of goods or services.

Respondent previously failed to make any active use of the domain name and now uses it to direct Internet users to a login page.

Respondent lacks both rights to and legitimate interests in the domain name.

Respondent both registered and now uses the domain name in bad faith.

B. Respondent

Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant has failed to show that Respondent registered the contested domain name in bad faith.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to “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 requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

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

(3) the domain name has been registered and is being used by Respondent in bad faith.

In view of Respondent’s failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant’s undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept as true all reasonable claims and inferences set out in the Complaint unless the supporting evidence is manifestly contradictory. See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). But see eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations […] the Panel finds it appropriate to dismiss the Complaint”).

Registration and Use in Bad Faith

In the ordinary course, we would address the elements of Policy ¶ 4(a) in the order in which they are presented above. In this instance, however, we find it best to consider first, and exclusively, the question of bad faith registration of the contested domain name, because, in the particular circumstances of this proceeding, that issue resolves the entire controversy. The reason for this is that the Policy requires Complainant to prevail on each and every element of Policy ¶ 4(a) in order to prevail in the proceeding as a whole. If, therefore, Complainant fails as to any one of them, its case fails altogether. And, in that event, consideration of the Complaint may begin and end with examination of the element as to which Complainant has failed to provide proof upon which it can prevail. See, for example, Post.Com Limited v. Peter Neilson, D2002-0690 (WIPO Sept. 17, 2002):

In this Panel’s view, the Complainant has not established … that the Domain Name was registered by the Respondent in bad faith…. In the light of this finding the Panel does not need to consider paragraphs 4(a)(i) and (ii) of the Policy.

To the same effect, see also Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd., D2010-0470 (WIPO May 19, 2010).

In this case, it is conceded by Complainant that Respondent registered the <brime.net> domain name on May 15, 2001. Complainant also concedes that its rights in its BRIME mark date from its first use of the mark in commerce on June 24, 2020. Therefore, Respondent’s domain name registration predates Complainant’s rights in the mark by nearly two decades. On these facts, we must conclude that Respondent could not have registered the disputed domain name in bad faith within the meaning of Policy ¶ 4(a)(iii) because Respondent could not have known that Complainant would create or use a competing mark close to twenty years later. See, for example, Interep Nat’l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no bad faith where a respondent registered a contested domain name prior to a complainant’s first use of a mark). See also Open Sys. Computing AS v. degli Alessandri, D2000-1393 (WIPO December 11, 2000) (finding no bad faith registration where a respondent registered the domain name there in question before both the filing of an application for registration and commencement of use of a trademark in commerce by a UDRP complainant).

The Panel therefore finds that Policy ¶ 4(a)(iii) has not been satisfied.

Complainant having failed to carry its burden on the point of bad faith registration of the contested domain name, it is unnecessary for us to consider the issues of the respective rights of the parties otherwise presented by the Complaint. We therefore decline to examine those issues.

DECISION

Complainant having failed to establish all three elements required under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, DENIED.

Accordingly, it is Ordered that the <brime.net> domain name REMAIN WITH Respondent.

Terry F. Peppard, Panelist

Dated: June 24, 2021


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