Brasfield & Gorrie, LLC v. Direct Privacy / Domain Name Proxy Service, Inc. Privacy ID# 14279748
Claim Number: FA1506001623500
Complainant is Brasfield & Gorrie LLC (“Complainant”), represented by Debra L. Innocenti of Strasburger & Price LLP, Texas, USA. Respondent is Direct Privacy / Domain Name Proxy Service, Inc Privacy ID# 14279748 (“Respondent”), represented by Steve Willard of The Willard Law Firm, L.P., Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <brasfield-gorrie.com>, registered with DNC Holdings, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 8, 2015; the Forum received payment on June 17, 2015.
On June 17, 2015, DNC Holdings, Inc. confirmed by e-mail to the Forum that the <brasfield-gorrie.com> domain name is registered with DNC Holdings, Inc. and that Respondent is the current registrant of the name. DNC Holdings, Inc. has verified that Respondent is bound by the DNC Holdings, 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 June 18, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 8, 2015 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@brasfield-gorrie.com. Also on June 18, 2015, 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 July 15, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant has registered the BRASFIELD & GORRIE mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,653,412, registered Nov. 26, 2002). The mark is used on or in connection with the provision of general contractor services, namely commercial, institutional and industrial construction. The <brasfield-gorrie.com> domain name is identical to the BRASFIELD & GORRIE mark because the only difference between the domain name and trademark is the substitution of a hyphen for the ampersand, along with the addition of the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests. Respondent is not commonly known as the domain name, nor is Respondent a licensee of Complainant. Further, the domain name is being used to make defamatory statements about Complainant.
Respondent has engaged in bad faith registration and use. Respondent is disrupting Complainant’s business by posting defamatory material on the resolving webpage. Also, Respondent had actual knowledge of Complainant’s trademark rights due to a previous relationship between Complainant and Respondent.
B. Respondent
Respondent failed to submit a Response in this proceeding. The disputed domain name, <brasfield-gorrie.com>, was registered on September 26, 2014.
As the Respondent has failed to file a Response in this matter, the Panel shall make its determination based on the unrebutted and reasonable allegations of the Complainant. As such, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark, that they Respondent has no rights or legitimates interests in or to the disputed domain name, and that the Respondent engaged in bad faith use and registration of the disputed domain name.
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant has registered the BRASFIELD & GORRIE mark with the USPTO (e.g., Reg. No. 2,653,412, registered Nov. 26, 2002). The mark is used on or in connection with the provision of general contractor services, namely commercial, institutional and industrial construction. Registration with the USPTO is sufficient to establish rights in a trademark according to Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
Complainant argues that the <brasfield-gorrie.com> domain name is identical to the BRASFIELD & GORRIE mark. Complainant notes that the only difference between the domain name and trademark is the substitution of a hyphen for the ampersand, along with the addition of the gTLD “.com.” As a general rule, a gTLD, such as “.com,” can never distinguish a domain name from the mark at issue. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Also, prior panels have found that a domain name is identical to the mark at issue where the domain name simply removes an ampersand from the mark. See McKinsey Holdings, Inc. v. Indidom, D2000-1616 (WIPO Jan. 31, 2001) (finding that the removal of the ampersand from “McKinsey & Company” does not affect the user’s understanding of the domain name, and therefore the domain name <mckinseycompany.com> is identical and/or confusingly similar to the mark “McKinsey & Company”). In any event, punctuation-related alterations are not taken into consideration when deciding if a domain name is identical or confusingly similar to the mark at issue. See Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Nat. Arb. Forum Apr. 24, 2000) (finding that punctuation is not significant in determining the similarity of a domain name and mark).
Therefore, the Panel finds that the <brasfield-gorrie.com> domain name is identical to the BRASFIELD & GORRIE mark pursuant to Policy ¶ 4(a)(i).
Complainant asserts that Respondent is not commonly known as the <brasfield-gorrie.com> domain name, nor is Respondent in possession of licensing rights that would allow him to use the BRASFIELD & GORRIE mark in domain names. “Direct Privacy” is listed as the registrant of record for the disputed domain name. The record is devoid of any evidence to indicate that Respondent is either commonly known as the disputed domain name or in possession of licensing rights. Where such a void exists, Respondent cannot have rights or legitimate interests under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant argues that Respondent’s use of the <brasfield-gorrie.com> domain name fails to consist of a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant argues that Respondent created the domain name in response to a lawsuit filed in federal court, in which Complainant obtained a judgment against Respondent in the amount of $4,500,000.00. Complainant argues that the disputed domain name resolves to a webpage that displays defamatory photographs of various projects Complainant has worked on. The domain name resolves to a webpage with the header “Brasfield Gorrie – Quality of Concrete Work,” and containing links to various images. See Compl., at Attached Ex. 15. The resolving webpage also contains news articles that describe delays in the projects Complainant has worked on. Id. Using a confusingly similar domain name to resolve to a webpage unrelated to Complainant cannot consist of a bona fide offering or a legitimate noncommercial or fair use. See Vanderbilt Univ. v. U Inc., FA 893000 (Nat. Arb. Forum Feb. 19, 2007) (holding that the respondent did not have rights or legitimate interests in a domain name where it was redirecting Internet users to its own website promoting the respondent’s books unrelated to the complainant). A respondent may create a domain name, albeit one that is not confusingly similar to the Complainant’s trademark, to post complaints about a complainant. See Bridgestone Firestone, Inc. v. Myers, D2000-0190 (WIPO July 6, 2000) (finding that the respondent has free speech rights and legitimate First Amendment interests in the domain name <bridgestone-firestone.net> where the respondent linked the domain name to a “complaint” website about the complainant’s products); but see Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005) (“the domain name <eastman-chemical.com> is not protected by free speech although the content of the website supported by this domain name is protected. Free speech cannot be used as a defence against the use of a confusingly similar mark as a domain name.”).
The Panel finds that the Respondent is using a confusingly similar disputed domain name to provide defamatory information regarding the Complainant. Free speech arguments are inappropriate here. As such, the Panel finds that the Respondent has no rights or legitimate interests in or to the disputed domain name.
Complainant argues that Respondent has engaged in bad faith registration and use. Complainant argues that Respondent has displayed bad faith under Policy ¶ 4(b)(iii) by disrupting its business. Specifically, Complainant argues that Respondent is using the domain name in a defamatory fashion by painting Complainant in a negative light through the posting of unflattering news articles and photographs. The domain name resolves to a webpage with the header “Brasfield Gorrie – Quality of Concrete Work,” and containing links to various images. See Compl., at Attached Ex. 15. The resolving webpage also contains news articles that describe delays in the projects Complainant has worked on. Id.
Complainant also argues that Respondent has actual knowledge of its trademark rights. To support this claim, Complainant again mentions that Respondent must have been aware of its trademark rights given the fact that Complainant has obtained a final judgment against Respondent in the amount of $4.5 million. Complainant also contends that Respondent directed its attorney to email Complainant about the disputed domain name immediately after an appellate mediation. Where it has been demonstrated that the respondent was well aware of Complainant’s trademark rights, prior panels have found bad faith under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration). Under the totality of the circumstances, it is clear that the Respondent had actual knowledge of the Complainants rights in or to the trademark. As such, the Panel finds that the Respondent engaged in bad faith use and registration of the disputed domain name.
In addition, Respondent’s use of the disputed domain name demonstrates its bad faith in and of itself. The Respondent uses the confusingly similar disputed domain name to criticize Complainant’s work. This, in and of itself, is evidence of bad faith under Policy ¶ 4(a)(iii). See Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (finding that the respondent registered the domain names <kwasizabantu.com>, <kwasizabantu.org>, and <kwasizabantu.net> in bad faith where the respondent published negative comments regarding the complainant’s organization on the confusingly similar website).
As such, the Panel finds that the Respondent engaged in bad faith use and registration of the disputed domain name.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be granted.
Accordingly, it is Ordered that the <brasfield-gorrie.com> domain name transferred from the Respondent to the Complainant.
Kenneth L. Port, Panelist
Dated: July 21, 2015
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page