Brasfield & Gorrie, L.L.C. v. James cole
Claim Number: FA1810001813289
Complainant is Brasfield & Gorrie, L.L.C. (“Complainant”), represented by Robert C. Anderson of Balch & Bingham, LLP, Alabama, USA. Respondent is James cole (“Respondent”), Oregon, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <brasfieldgorrie.us>, 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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 23, 2018; the Forum received payment on October 23, 2018.
On October 24, 2018, NameCheap, Inc. confirmed by e-mail to the Forum that the <brasfieldgorrie.us> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. 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 the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On October 29, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 19, 2018 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@brasfieldgorrie.us. Also on October 29, 2018, 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 November 21, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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 to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD 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
i) Complainant, Brasfield & Gorrie, L.L.C., is a company in the construction industry. Complainant has rights in the BRASFIELD & GORRIE mark based upon its registration of marks with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,653,412, registered Nov. 26, 2002). See Amend. Compl. Annex. Respondent’s <brasfieldgorrie.us> domain name is identical or confusingly similar to Complainant’s mark because Respondent includes the BRASFIELD & GORRIE mark in the domain name and adds a “.us” country code top-level domain (“ccTLD”).
ii) Respondent lacks rights and legitimate interests in the <brasfieldgorrie.us> domain name because Respondent is not commonly known by the disputed domain name and is not authorized or permitted to use Complainant’s mark in any fashion. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use. Rather, Respondent inactively holds the disputed domain name. See Compl. Annex C.
iii) Respondent registered and uses the <brasfieldgorrie.us> domain name in bad faith. Respondent inactively holds the disputed domain name. See Compl. Annex C. Further, Respondent uses the disputed domain name in connection with a phishing scheme. See Compl. Annex D & E.
B. Respondent
Respondent did not submit a response.
1. The <brasfieldgorrie.us> domain name was registered on October 1, 2018.
2. Complainant has established rights in the BRASFIELD & GORRIE mark based upon its registration with the USPTO as Reg. No. 2,653,412, registered on November 26, 2002.
3. The disputed domain name does not resolve to an active webpage.
4. Emails sent from an email address associated with the disputed domain name request a payment to be processed from the potential victims, who are both employees of Complainant; the impersonator requests these payments under the false name of the actual Chief Information Officer (CIO) of Complainant; and it included the name of Complainant’s CIO in the signature.
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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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 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 (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 claims rights in the BRASFIELD & GORRIE mark based upon its registration of the mark with the USPTO. Registration with the USPTO generally establishes a complainant’s rights in a mark for purposes of Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Here, Complainant provides printouts from the USPTO website showing its registration of the BRASFIELD & GORRIE mark (e.g., Reg. No. 2,653,412, registered Nov. 26, 2002). See Amend. Compl. Annex. Therefore, the Panel finds that Complainant has rights in the BRASFIELD & GORRIE mark under Policy ¶ 4(a)(i).
Next, Complainant contends that Respondent’s <brasfieldgorrie.us> domain name is identical or confusingly similar to Complainant’s mark because Respondent includes the BRASFIELD & GORRIE mark in the disputed domain name and adds a ccTLD. The addition of a ccTLD, and though Complainant does not argue this, the deletion of an ampersand, is irrelevant to Policy ¶ 4(a)(i) analysis. See Deutsche Lufthansa AG v. Milen Radumilo, FA 1764056 (Forum Jan. 19, 2018) (“No domain name may contain ampersands because ampersands are also prohibited characters in domain names. Therefore, the omission of ampersands is disregarded under a Policy ¶ 4(a)(i) analysis. A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.”). Here, Respondent incorporates the BRASFIELD & GORRIE mark in the disputed domain name, removes the ampersand, and adds a “.us” ccTLD. Therefore, the Panel concludes that Respondent’s <brasfieldgorrie.us> domain name is identical or confusingly similar to Complainant’s BRASFIELD & GORRIE mark under 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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent lacks rights and legitimate interests in the <brasfieldgorrie.us> domain name because Complainant has not authorized Respondent to use its BRADFIELD & GORRIE mark. Where a response is lacking, relevant WHOIS information may be used to identify the respondent under Policy ¶ 4(c)(iii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Additionally, lack of authorization from complainant to use its marks may be further evidence that a respondent is not commonly known by a disputed domain name. See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”). The Panel notes the WHOIS of record identifies Respondent as “James cole,” and no information in the record shows that Respondent was authorized to use Complainant’s mark or was commonly known by the disputed domain name. Accordingly, the Panel determines that Respondent lacks rights and legitimate interests in the <brasfieldgorrie.us> domain name under Policy ¶ 4(c)(iii).
Further, Complainant claims that Respondent fails to use the <brasfieldgorrie.us> domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent inactively holds the disputed domain. Inactive holding may not be considered a bona fide offering or a legitimate use under Policy ¶¶ 4(c)(i) or (iii). See Guess? IP Holder L.P. and Guess?, Inc. v. xi long chen, FA 1786533 (Forum June 15, 2018) (“The disputed domain name resolves to a parked page with the message, “website coming soon!” The Panel finds that this use does not amount to a bona fide offering or good or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) & (iii) and Respondent does not have rights or legitimate interests with respect of the domain name.”). Here, Complainant provides a screenshot showing that the disputed domain name does not resolve to an active webpage. See Compl. Annex C. Therefore, the Panel finds that Respondent inactively holds the <brasfieldgorrie.us> domain name, and thus fails to use the disputed domain in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant claims that Respondent uses the <brasfieldgorrie.us> domain name to operate an email phishing scheme. Complainant provides printouts of emails allegedly sent from an email address associated with the disputed domain name, which Respondent purportedly sent to Complainant’s employees. See Compl. Annexes D and E. Complainant contends that Annexes D and E are deceptive communications; the emails request a payment to be processed from the potential victims, who are both employees of Complainant; the impersonator requests these payments under the false name of the actual Chief Information Officer (CIO) of Complainant; and instead of simply copying and infringing on Complainant’s logo as the signature of the email, the Respondent also included the name of Complainant’s CIO in the signature to give a false impression of authenticity.
The Panel notes that use of a disputed domain name in connection with a phishing scheme may evince bad faith under Policy ¶ 4(a)(iii). See Cubist Pharmaceuticals, Inc. v. Gregory Stea, FA 1550388 (Forum May 5, 2014) (finding that using the domain name to send e-mails to various IT hardware suppliers in an attempt to impersonate Complainant and to defraud such suppliers demonstrates a lack of a bona fide offering of goods or services or legitimate non-commercial fair use); see also Zoetis Inc. and Zoetis Services LLC v. VistaPrint Technologies Ltd, FA1506001623601 (Forum July 14, 2015) (“Respondent’s attempt to use the <zoietis.com> domain name to phish for personal information in fraudulent emails also constitutes bad faith pursuant to Policy ¶ 4(a)(iii).”). Therefore, the Panel determines that Respondent uses the <brasfieldgorrie.us> domain name in connection with a phishing scheme, thereby supporting a finding of bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <brasfieldgorrie.us> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: November 24, 2018
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