BRAMBLES LIMITED v. David Mcmillian / MCMILLIAN LLC
Claim Number: FA1611001701998
Complainant is BRAMBLES LIMITED (“Complainant”), represented by Shannon McCue of Baker & Hostetler LLP, Ohio, USA. Respondent is David Mcmillian / MCMILLIAN LLC (“Respondent”), Georgia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <brambels.com>, registered with 1&1 Internet SE.
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.
Flip Petillion as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 8, 2016; the Forum received payment on November 8, 2016.
On November 9, 2016, 1&1 Internet SE confirmed by e-mail to the Forum that the <brambels.com> domain name is registered with 1&1 Internet SE and that Respondent is the current registrant of the name. 1&1 Internet SE has verified that Respondent is bound by the 1&1 Internet SE 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 14, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 5, 2016 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@brambels.com. Also on November 14, 2016, 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.
A timely Response was received and determined to be complete on December 1, 2016.
On December 7, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Flip Petillion 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant considers the disputed domain name <brambels.com> to be confusingly similar to Complainant’s BRAMBLES mark as the domain name appears to be a mere typosquatting variation of Complainant’s mark through reversing the letters “L” and “E” in the mark.
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name. According to Complainant, Respondent is not commonly known by “brambels,” there is no connection between the domain name and Respondent, and Complainant has not authorized, licensed, or endorsed Respondent’s use of the BRAMBLES mark in any form. Complainant further contends that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use as the domain name resolves to a website that is not actively being used. Additionally, Complainant submits that Respondent attempted to use an email address associated with the disputed domain name to pass off as Complainant, and considers that such is not a use within Policy ¶¶ 4(c)(i) or 4(c)(iii).
B. Respondent
Respondent argues to have been the victim of identity theft and had no part in the registration of the disputed domain name. Respondent submits to be working with his bank to provide evidence of the identity theft and has never registered a domain name.
Complainant, Brambles Limited, is the holding company for a group of companies that employ over 14,000 people worldwide in the field of supply-chain logistics. In connection with this business Complainant uses and has rights in the BRAMBLE mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,298,160, registered Sept. 25, 2007).
The disputed domain name was created on November 3, 2016.
Respondent’s domain name resolves to an inactively held website and Respondent appears to use an email associated with the domain name to send emails requesting the transfer of funds.
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.
Complainant shows to have rights in the BRAMBLES mark through registration of the mark with the USPTO (e.g., Reg. No. 3,298,160, registered Sept. 25, 2007). See Compl., at Attached Ex. 3. See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)).
Complainant claims that Respondent’s domain name <brambels.com> is confusingly similar to the BRAMBLES mark. The disputed domain name differs from the BRAMBLES mark through transposing the letters “L” and “E,” and adding the gTLD “.com.” Previous Panels have held that swapping the letters in a mark does not prevent a finding of confusing similarity. See RetailMeNot, Inc. v. Domain Admin / Private Registrations Aktien Gesellschaft, FA 1625879 (Forum Aug. 6, 2015) (finding confusing similarity while Respondent merely transposed the letters “a” and “t” in the RETAILMENOT mark in crafting the <reatilmenot.com> domain name.). Panels have also consistently found the presence of the gTLD “.com” is not relevant to an analysis of confusing similarity. See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant). In view of the above, this Panel finds that Respondent’s domain name is confusingly similar to BRAMBLES mark for purposes of Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent is not commonly known by “brambels,” there is no connection between the domain name and Respondent, and Complainant has not authorized, licensed, or endorsed Respondent’s use of the BRAMBLES mark in any form. WHOIS information associated with the disputed domain name identifies Respondent as, “David Mcmillian,” of the organization “Mcmillian LLC,” neither of which resembles the disputed domain name. See Compl., at Attached Ex. 7. As such, the Panel finds no basis in the available record to find Respondent to be commonly known by the disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
Complainant next argues that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s domain name resolves to an inactively held website and Respondent appears to use an email associated with the domain name to send emails requesting the transfer of funds. See Compl., at Attached Ex. 7 & 9. Previous Panels have held that inactively using a domain name or using an associated email to pass off as a complainant is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”); Chevron Intellectual Property LLC v. Thomas Webber / Chev Ronoil Recreational Sport Limited, FA 1661076 (Forum March 15, 2016) (finding that the respondent had failed to provide a bona fide offering of goods or services or any legitimate noncommercial or fair use, stating, “Respondent is using an email address to pass themselves off as an affiliate of Complainant. Complainant presents evidence showing that the email address that Respondent has created is used to solicit information and money on false pretences. The disputed domain name is being used to cause the recipients of these emails to mistakenly believe Respondent has a connection with Complainant and is one of the Complainant’s affiliates.”). Consequently, the Panel may conclude that Respondent has not used the domain name within the parameters of Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii). In view of the foregoing, the Panel considers that Complainant has also made out the second of the three elements that it must establish.
Complainant must prove on the balance of probabilities both that the Disputed Domain Name was registered in bad faith and that it is being used in bad faith (See e.g. Telstra Corporation Limited v. Nuclear Marshmallow, WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd, WIPO Case No. D2006-1052).
Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith. These factors are meant to be merely illustrative of bad faith, and Respondent’s bad faith may be demonstrated by ancillary allegations considered under the totality of the circumstances. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith).
Complainant asserts that Respondent had knowledge of Complainant’s rights in the mark at the time of registration and thus registered and used the domain name in bad faith. Complainant also contends that in light of the similarity between the domain name and the BRAMBLES mark, Respondent could not have registered the <brambels.com> domain name without actual knowledge of Complainant's rights in the mark. The Panel finds, on the balance of probabilities, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith registration under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Complainant contends that Respondent’s inactive holding of the domain name demonstrates bad faith. As mentioned above, Respondent’s domain resolves to a website that appears to only host content provided by the registrar and as such is inactively used by Respondent. See Compl., at Attached Ex. 7. Previous panels have held a respondent to have registered and used a domain name in bad faith based on a failure to make an active use of the domain name at issue. See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith). In addition, Respondent appears to use an email associated with the domain name to send emails requesting the transfer of funds. The Panel finds that Respondent’s failure to make an active use of the domain name in combination with the fact that Respondent appears to pass off as Complainant to obtain the transfer of funds demonstrates bad faith use pursuant to Policy ¶ 4(a)(iii).
In view of the above, the Panel finds that, on the balance of probabilities, it is sufficiently shown that the Disputed Domain Name was registered and is being used in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <brambels.com> domain name be TRANSFERRED from Respondent to Complainant.
Flip Petillion, Panelist
Dated: December 21, 2016
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