Brasfield & Gorrie, L.L.C. v. Rainelle Lunke
Claim Number: FA2002001886078
Complainant is Brasfield & Gorrie, L.L.C. (“Complainant”), represented by Robert C. Anderson of Balch & Bingham LLP, Alabama, United States. Respondent is Rainelle Lunke (“Respondent”), Washington, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <brafieldgorrie.com>, registered with Google LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 28, 2020; the Forum received payment on February 28, 2020.
On February 28, 2020, Google LLC confirmed by e-mail to the Forum that the <brafieldgorrie.com> domain name is registered with Google LLC and that Respondent is the current registrant of the name. Google LLC has verified that Respondent is bound by the Google LLC 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 March 2, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 23, 2020 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@brafieldgorrie.com. Also, on March 2, 2020, the 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 March 27, 2020 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC as Panelist.
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 any response from Respondent.
Complainant requests that the disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant relies on its claimed rights in the BRASFIELD & GORRIE and BRASFIELD & GORRIE BENCHMARK marks established by its ownership of the below-mentioned trademark registrations and its claimed continuous use of the mark in its construction business since 1967.
Complainant submits that the disputed domain name <brafieldgorrie.com> is confusingly similar to Complainant’s BRASFIELD & GORRIE and BRASFIELD & GORRIE BENCHMARK marks.
Specifically, Complainant submits that the disputed domain name is almost identical to the BRASFIELD & GORRIE mark except for the omission of the letter “s” and argues that this minor change is not enough to overcome a finding of confusing similarity pursuant to Policy ¶ 4(a)(i).
Complainant argues that if a web user searches for, or expects to find information about Complainant, the initial interest confusion caused by the similarity of the disputed domain name and Complainant’s mark may deceive and lure the web user to Respondent’s web site.
Complainant also submits that Respondent has no rights or legitimate interests in the disputed domain name arguing that Respondent is not, and has never been, commonly known by the <brafieldgorrie.com> domain name. Complainant further submits that Respondent is not using, nor is there any evidence that Respondent has prepared to use, the disputed domain name in connection with a bona fide offering of goods or services; that Respondent is not making a legitimate non-commercial or fair use of the <brafieldgorrie.com> domain name; and that Respondent’s use of the <brafieldgorrie.com> domain name appears solely intended to mislead consumers about Complainant’s services.
Furthermore, Complainant submits that Respondent cannot claim any legitimate, non-infringing, or fair use of Complainant’s BRASFIELD & GORRIE marks because the disputed domain name direct to a practically blank webpage.
Complainant asserts that Respondent’s unlawful use of Complainant’s BRASFIELD & GORRIE marks will not enjoy any protection under the First Amendment to the United States Constitution. See OBH, Inc. v. Spotlight Magazine, Inc., 86 F. Supp. 2d 176, 197 (W.D.N.Y. 2000) (“[Respondent] chose to use [Complainant’s] mark as their domain name in order to deceive Internet users into believing that they were accessing [Complainant’s] web site. Such a use of [Complainant’s] mark is not protected by the First Amendment.”).
Complainant submits that the disputed domain name was registered in bad faith as there is seemingly no legitimate reason this domain name was registered except to cyber-squat or potentially to transmit deceptive emails to Complainant’s clients.
Referring to the screenshot adduced as an annex to the Complaint, Complainant submits that the disputed domain name <brafieldgorrie.com> currently resolves to a website that has no content available.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant provides construction services and is the owner of the following registered trademarks:
United States registered service mark BRASFIELD & GORRIE (figurative) registration number 2,655,658, registered on December 3, 2002 for services in international class 37.
United States registered service mark BRASFIELD & GORRIE, registration number 2,653,412, registered on November 26, 2002 for services in international class 37.
BRASFIELD & GORRIE BENCHMARK, registration number 2,735,856, registered on July 15, 2003 for goods in international class 16.
The disputed domain name was registered on February 26, 2020 and resolves to an inactive webpage.
There is no information available about Respondent, who availed of a privacy service to conceal her identity, except for that provided in the Complaint, the Registrar’s WhoIs and the information provided by the Registrar in response to the Forum’s request for verification of the registration details of the disputed domain name in the course of this proceeding which disclosed Respondent’s identity.
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 or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also 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”).
Complainant has provided uncontested evidence of its rights in the BRASFIELD & GORRIE and BRASFIELD & GORRIE BENCHMARK marks established by its ownership of the above-mentioned trademark registrations and claims continuous use of the BRASFIELD & GORRIE mark in its construction business since 1967.
The disputed domain name consists of the Complainant’s BRASFIELD & GORRIE mark except for the omission of the letter “s” and the ampersand <&>, together with the generic top level domain (gTLD) <.com> extension.
Having compared both the disputed domain name and Complainant’s BRASFIELD & GORRIE mark, this Panel finds that the omissions of the letter “s” and the ampersand, are in context, likely to be overlooked by Internet users.
Furthermore, for the purposes of comparison the gTLD <.com> extension may be ignored in the circumstances of this Complaint as a domain extension, is recognized as a technical necessity for a domain name and serves no other purpose or meaning in the context.
This Panel finds therefore that the disputed domain name is confusingly similar to BRASFIELD & GORRIE in which Complainant has rights and Complainant has succeeded in the first element of the test in the Policy ¶ 4(a)(i).
Having made this finding it is not necessary to consider whether the disputed domain name is identical or confusingly similar to Complainant’s BRASFIELD & GORRIE BENCHMARK mark.
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name arguing that Respondent is not, and has never been, commonly known by the <brafieldgorrie.com> domain name; that Respondent is not using, nor is there any evidence that Respondent has prepared to use, the disputed domain name in connection with a bona fide offering of goods or services; that Respondent is not making a legitimate non-commercial or fair use of the disputed domain name; that Respondent’s use of the <brafieldgorrie.com> domain name appears solely intended to mislead consumers about Complainant’s services; that Respondent cannot claim any legitimate, non-infringing, or fair use of Complainant’s BRASFIELD & GORRIE marks because the disputed domain name direct to a practically blank webpage.
In such circumstances it is well established that if Complainant makes out a prima facie case, the burden of production shifts to Respondent to prove her rights or legitimate interests in the disputed domain name. Respondent has failed to file any response to the Complaint and so has not discharged the burden. In the circumstances this Panel must find that on the balance of probabilities Respondent has no rights or legitimate interests in the disputed domain name. Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
Because the disputed domain name is so closely similar to Complainant’s very distinctive trademark BRASFIELD & GORRIE, this Panel finds that it is improbable that the disputed domain name was chosen and registered for any reason other than to target Complainant and to take predatory advantage of Complainant’s reputation and goodwill in the BRASFIELD & GORRIE mark on the Internet.
While the disputed domain name resolves to an inactive webpage, the minimal changes to the lettering of the mark i.e. the omission of the letter “s” and the ampersand, are indicative of cybersquatting. In such circumstances, this Panel finds that on the balance of probabilities Respondent is engaged in passive holding of the disputed domain name in bad faith.
The WIPO Jurisprudential Overview 3.0 states at ¶ 3.3 :“From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding.
While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.”
In this case the disputed domain name <brafieldgorrie.com> was chosen and registered to be confusingly similar to Complainant’s distinctive mark, Respondent has failed to submit a Response, Respondent has used a privacy service to conceal her identity and it is implausible to imagine any good faith use to which the disputed domain name might be put.
This Panel finds therefore that the disputed domain name was registered and is being used in bad faith. Complainant has therefore succeeded in the third and final element of the test in Policy ¶ 4(a)(iii) and is entitled to be granted the relief requested in the Complaint.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <brafieldgorrie.com> domain name be TRANSFERRED from Respondent to Complainant.
____________________________
James Bridgeman SC
Panelist
Dated: March 28, 2020
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page