Brink’s Network, Incorporated v. Michael Brooks / Ivan Heini / Jan Jenny / Princewill / Pbells Inc.
Claim Number: FA2011001921864
Complainant is Brink’s Network, Incorporated (“Complainant”), represented by Lyndsey Waddington of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Michael Brooks / Ivan Heini / Jan Jenny / Princewill / Pbells Inc. (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <brink-courierservice.com>, <brinkscourierservice.com>, <brinkcouriersecurityservice.com>, and <brinkcourier.com>, registered with NameCheap, Inc..
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 24, 2020; the Forum received payment on November 24, 2020.
On November 25, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <brink-courierservice.com>, <brinkscourierservice.com>, <brinkcouriersecurityservice.com>, and <brinkcourier.com> domain names are registered with NameCheap, Inc. and that Respondent is the current registrant of the names. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 November 30, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 21, 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@brink-courierservice.com, postmaster@brinkscourierservice.com, postmaster@brinkcouriersecurityservice.com, postmaster@brinkcourier.com. Also on November 30, 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 December 27, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 domain names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
Complainant presents evidence showing that the <brink-courierservice.com> and <brinkscourierservice.com> domain names resolve to websites that are virtually identical to each other, with identical features, including the images and artwork, and the content as well as the layout of each on the page. Moreover, the website associated with the <brinkcourier.com> domain name features identical content and displays the same images and layout as the websites associated with the <brink-courierservice.com> and <brinkscourierservice.com> domain names. Further, all three domain names were registered with the same registrar, and all three use the same hosting agency. Finally, the registrant used the same privacy service for all three domain names. This is sufficient to find that the domain names were registered by the same domain name holder. See The Valspar Corporation v. Zhou Zhiliang / zhouzhiliang / Zhiliang Zhou / Eric Chow / Visspa Ltd., FA100800133934 (Forum Sept. 28, 2010); see also BBY Solutions, Inc. v. White Apple / Dev Kumar, FA1805001787251 (Forum June 20, 2018).
According the Complainant, the <brinkcouriersecurityservice.com> domain name directs to a website that is substantially similar to the other resolving websites, the similarities being: (a) layout, namely the placement of the mark in the upper-left corner of the page; (b) images used in the rotating banner on the landing page, including (i) a photo of an airplane on a runway, and (ii) various images of individuals standing in a doorframe signing for a package; and (c) content, namely the advertisement and promotion of an entity incorporating the “Brinks” name that offers transportation and logistics services, including air, ocean, and road freight forwarding. Complainant attaches a printout of the website in question. The Panel notes that the content of this website is entirely different, and laid out differently, from the content of the other three websites. The similarities set forth by the Complainant are not sufficiently specific to justify finding that the registrant of this domain name is the same as the registrant of the other three domain names.
Consequently, the Panel will rule on the domain names <brink-courierservice.com>, <brinkscourierservice.com>, and <brinkcourier.com>, referred to hereafter as “the disputed domain names”, and the three registrants for those domain names are collectively referred to as “Respondent”.
The Panel dismisses without prejudice the Complaint regarding the domain name <brinkcouriersecurityservice.com>. Complainant may file a new complaint with respect to that domain name.
A. Complainant
Complainant states that it is one of the world’s foremost providers of secure transportation and logistics, security services, and cash management and payment solutions, including international transportation of valuables, coin and cash handling services, ATM services, check imaging services, check encoding services, and payroll preparation for cash, securities and other high-value goods, to diverse industries worldwide. Complainant has rendered secure transportation and logistics services in the United States since at least as early as 1859. Since that time, Complainant has grown into an international company with over 67,700 employees worldwide, offering services from over 1,170 facilities located in more than 40 countries. In 2019, Complainant enjoyed revenue of over US$3.6 billion. Complainant has rights in the BRINKS mark through its registration in the United States in 1985. The mark is registered elsewhere around the world and it is famous.
Complainant alleges that the disputed domain names are identical or confusingly similar to its mark. Each of the disputed domain names incorporates Complainant’s mark, two merely deleting the letter “s” from the mark, and each adding the descriptive terms “courier” and/or “service”, as well as the “.com” generic top-level domain name (“gTLD”). Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent lacks rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names nor has Respondent been authorized by Complainant to use the BRINKS mark. Respondent has not used the disputed domain names in connection with a bona fide offering of goods or services as Respondent uses the disputed domain names to divert Internet users and create a false sense of affiliation with Complainant in order to promote competing services. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent registered and uses the disputed domain names in bad faith. Respondent has engaged in a pattern of bad faith and registration. Respondent also disrupts Complainant’s business by using the disputed domain names to attract Internet users to Respondent’s websites for commercial gain by offering competing services. Furthermore, Respondent had actual knowledge of Complainant’s rights to the BRINKS mark prior to registering the disputed domain names based on Respondent’s use of Complainant’s mark. Finally, Respondent failed to respond to Complainant’s cease and desist letters. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the mark BRINKS dating back to at least 1985 and uses it to offer a variety of services, including secure transportation and logistics services.
The disputed domain names were registered in 2020.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
Respondent is using the disputed domain names to resolve to web sites that offers services that compete with those of Complainant.
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”).
Each of the disputed domain names incorporates Complainant’s mark, two merely deleting the letter “s” from the mark, and each adding the descriptive terms “courier” and/or “service”, as well as the “.com” generic top-level domain name (“gTLD”). The addition of generic terms and a gTLD to the singular version of a mark fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy); see also Lockheed Martin Corporation v. toyosei maruyama, FA 1620489 (Forum July 7, 2015) (“Simply removing the letter ‘s’ from a mark in the creation of a domain name still creates a confusingly similar domain name.”). Therefore, the Panel finds that the disputed domain names are confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant has not licensed or otherwise authorized Complainant to use its mark. Respondent is not commonly known by the disputed domain names: when a response is lacking, relevant WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name. Here, the WHOIS information for the disputed domain names lists the registrants as “Michael Brooks,” “Ivan Heini,” and “Princewill.” Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names per Policy ¶ 4(c)(ii).
The resolving websites offer services that compete with those of Complainant. Panels have held that using another’s mark to resolve to a website that offers products or services in competition with a Complainant’s business is not using the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Coachella Music Festival, LLC v. josh greenly / All Access Tickets, FA1507001629217 (Forum Aug. 10, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name as required under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), where the respondent was using the disputed domain name to host a web page that featured links to services that competed with those of the complainant); see also See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)”). Thus, the Panel finds that Respondent fails to use the disputed domain name to make a bona fide offering of goods or services under Policy ¶¶ 4(c)(i) or (iii). And the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, as already noted, the resolving websites offer competing services. This constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Asbury Auto Group Inc v Tex. Int'l Prop Assocs FA 958542 (Forum May 29, 2007) (finding that the respondent's use of the disputed domain name to compete with the complainant's business would likely lead to confusion amongst Internet users as to the sponsorship or affiliation of a competing business and was therefore evidence of bad faith and use); see also See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). Accordingly, the Panel finds bad faith registration and use per Policy ¶ 4(b)(iv).
Further, Respondent displays a pattern of bad faith registration of disputed domain names containing Complainant’s BRINKS marks. Registration of multiple domain names containing a complainant’s mark can substantiate an argument that a respondent registered and uses a disputed domain name in bad faith per Policy ¶ 4(b)(ii). See NIKE, Inc., and Nike Innovate, C.V. v. Emile Boulanger, FA 1732458 (Forum July 3, 2017) (finding that registration of several infringing domain names in a case satisfies the burden imposed by the Policy ¶ 4(b)(ii)); see also Caterpillar Inc. v. Angie Arendt / DIAHOST .CO / keith mosley, FA1805001789701 (Forum July 2, 2018) (finding that Respondent engaged in a pattern of bad faith and registration by registering multiple domain names that contain Complainant’s famous CATERPILLAR mark); see also Radisson Hotels Internation, Inc. v. Yue Mei Wang / Wang Yue Mei aka Pei Jun Gan / Gan Pei Jun / Jun Yu He / He Jun Yu / Denliyan, FA1504001615349 (Forum June 1, 2015) (“The Panel agrees that Respondent’s registration of the <radissonbluplazachongqing.com>, <radissonbluchongqingshapingba.com>, <radissonplazahoteltianjin.com>, and <radissonbluhotelshanghai.com> domain names, which all infringe on Complainant’s mark, constitutes bad faith under Policy ¶ 4(b)(ii).”). Thus the Panel finds that Respondent registered the disputed domain names in bad faith per Policy ¶ 4(b)(ii).
Not having established that the registrant of the domain name <brinkcouriersecurityservice.com> is the same as the registrant of the other disputed domain names, the Complainant for the domain name <brinkcouriersecurityservice.com> is dismissed without prejudice.
For the domain names <brink-courierservice.com>, <brinkscourierservice.com>, and <brinkcourier.com>, having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <brink-courierservice.com>, <brinkscourierservice.com>, and <brinkcourier.com> domain names be TRANSFERRED from Respondent to Complainant; and that the <brinkcouriersecurityservice.com> domain name REMAIN WITH its current registrant.
Richard Hill, Panelist
Dated: December 28, 2020
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