DECISION

 

Brotherhood Mutual Insurance Company v. JIANG LI / - / Privacy Gods / Privacy Gods Limited

Claim Number: FA1707001739892

 

PARTIES

Complainant is Brotherhood Mutual Insurance Company (“Complainant”), represented by Alexander J. Urbelis of Blackstone Law Group LLP, New York, USA.  Respondent is JIANG LI / - / Privacy Gods / Privacy Gods Limited

(“Respondent”), People’s Republic of China.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <brotherhodmutual.com>, registered with eNom, LLC, and <wwwbrotherhoodmutual.com>, registered PublicDomainRegistry.com.

 

PANEL

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on July 13, 2017; the Forum received payment on July 13, 2017.

 

On July 13, 2017, eNom, LLC and on Jul 14, 2017, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <brotherhodmutual.com> domain name is registered with eNom, LLC, and  <wwwbrotherhoodmutual.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the names.  eNom, LLC and PDR Ltd. d/b/a PublicDomainRegistry.com have verified that Respondent is bound by the eNom, LLC and PDR Ltd. d/b/a PublicDomainRegistry.com registration agreements 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 July 18, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 7, 2017 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@brotherhodmutual.com and postmaster@wwwbrotherhoodmutual.com.  Also on July 18, 2017, 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 August 10, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

1. Complainant

1.    Complainant is a national provider of property and liability insurance products available to churches and related ministries.  Complainant uses the BROTHERHOOD MUTUAL mark in conjunction with its business practices.  Complainant registered the BROTHERHOOD MUTUAL mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,539,765; registered Feb. 19, 2002).  See Compl., at Attached Ex. 1.  Respondent’s <brotherhodmutual.com> and <wwwbrotherhoodmutual.com> are confusingly similar to Complainant’s BROTHERHOOD MUTUAL mark because they incorporate the mark in its entirety, eliminating spaces and adding the “.com” generic top level domain (“gTLD”); <brotherhodmutual.com> omits an “o” from the word “brotherhood” and <wwwbrotherhoodmutual.com> adds the generic term www.

2.    Respondent does not have rights or legitimate interests in <brotherhodmutual.com> and <wwwbrotherhoodmutual.com>.  Respondent is not commonly known by the disputed domain names.  Complainant has not authorized or licensed Respondent to use the BROTHERHOOD MUTUAL mark in any regard, nor is Respondent affiliated with Complainant.  Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain.  Respondent has engaged in typosquatting, evincing a lack of rights and legitimate interests. Furthermore, Respondent’s <brotherhodmutual.com> and <wwwbrotherhoodmutual.com> resolve to websites hosting pay-per-click advertisements for goods and services in direct competition with Complainant.  See Compl., at Attached Ex. 4.

3.    Respondent registered and is using <brotherhodmutual.com> and <wwwbrotherhoodmutual.com> in bad faith.  The disputed domain names disrupt Complainant’s business by redirecting internet users to pay-per-click advertisements offering competing goods and services for Respondent’s commercial gain.  Respondent’s <brotherhodmutual.com> and <wwwbrotherhoodmutual.com> are examples of typosquatting, taking advantage of common typing errors made by internet users.  Respondent registered <brotherhodmutual.com> and <wwwbrotherhoodmutual.com> with actual knowledge of Complainant and its rights to the BROTHERHOOD MUTUAL mark.

 

2. Respondent

1.    Respondent did not submit a Response.

 

FINDINGS

1.    Respondent’s <brotherhodmutual.com> and <wwwbrotherhoodmutual.com> domain names are confusingly similar to Complainant’s BROTHERHOOD MUTUAL mark.

2.    Respondent does not have any rights or legitimate interests in the <brotherhodmutual.com> and <wwwbrotherhoodmutual.com> domain names.

3.    Respondent registered or used the <brotherhodmutual.com> and <wwwbrotherhoodmutual.com> domain names in bad faith.

 

DISCUSSION

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 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.”).

 

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 contends that <brotherhodmutual.com> and <wwwbrotherhoodmutual.com> resolve to identical websites, containing identical pay-per-click advertisements, footer disclaimers, HTML source codes, IP addresses, mail servers, and DNS TXT records.  See Compl., at ¶ [6][d]; id. at Attached Exs. 4–9.  Additionally, the domain name servers and IP addresses are “jointly hosted by ParkingCrew.net.”  See Compl., at [6][d]; id. at Attached Exs. 15–16.  

The Panel finds that Complainant has sufficiently presented evidence demonstrating that the listed entities are jointly controlled by a single Respondent who is using multiple aliases.

 

Identical and/or Confusingly Similar

Complainant is a national provider of property and liability insurance products available to churches and related ministries.  Complainant uses the BROTHERHOOD MUTUAL mark in conjunction with its business practices.  Complainant claims it registered the BROTHERHOOD MUTUAL mark with USPTO (e.g., Reg. No. 2,539,765; registered Feb. 19, 2002).  See Compl., at Attached Ex. 1.  The general consensus among panels is that registrations with USPTO are sufficient to show rights in a mark.  See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”).  Therefore, the Panel determines that Complainant’s USPTO registration is sufficient to show rights in the BROTHERHOOD MUTUAL mark.

 

Complainant asserts that Respondent’s <brotherhodmutual.com> and <wwwbrotherhoodmutual.com> are confusingly similar to Complainant’s BROTHERHOOD MUTUAL mark because they incorporate the mark in its entirety, eliminating spaces and adding the “.com” gTLD; <brotherhodmutual.com> omits an “o” from the word “brotherhood,” and <wwwbrotherhoodmutual.com> adds the generic term “www.”  The elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i).  See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Forum Apr. 30, 2007).  Moreover, “[t]he misspelling of a famous mark does not diminish the confusingly similar nature between the marks and the disputed domain names.”  Am. Online, Inc. v. David, FA 104980 (Forum Apr. 10, 2002).  Likewise, the addition of “www” takes advantage of a common typing error, and does not distinguish the domain name from the mark or overcome a finding of confusingly similar.  See Little League Baseball, Inc. v. Domain Manager / samirnet -domain names for sale, FA 1651999 (Forum Jan. 18, 2016).  Hence, the Panel finds that the alterations to Complainant’s mark in Respondent’s domain names are insufficient to differentiate the domain names from the mark pursuant to Policy ¶ 4(a)(i).  See Disney Enter. v. Kudrna, FA 686103 (Forum June 2, 2006).

 

Rights or Legitimate Interests

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names 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 asserts that Respondent does not have rights or legitimate interests in <brotherhodmutual.com> and <wwwbrotherhoodmutual.com>.  To support its assertion, Complainant illustrates that Respondent is not commonly known by the disputed domain names.  WHOIS information associated with this case identifies the Respondent as “JIANG LI/Privacy Gods” of “Privacy Gods Limited.”  See Compl., at Attached Ex. 17–18.  A respondent is not commonly known by the disputed domain name where there is no evidence in the record, including the WHOIS information, suggesting that the respondent is commonly known by the disputed domain name.  See e.g., Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006).  Therefore, because “nothing in [Respondent’s] WHOIS information implies that [Respondent] is ‘commonly known by’ the disputed domain name,” the Panel concludes that Respondent is not commonly known by <brotherhodmutual.com> and <wwwbrotherhoodmutual.com>.

 

Complainant avers it has not authorized or licensed Respondent to use the BROTHERHOOD MUTUAL mark in any regard, nor is Respondent affiliated with Complainant.  Complainant contends that Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain.  To support its contention, Complainant argues that Respondent has engaged in typosquatting, evincing a lack of rights and legitimate interests.  “Taking advantage of Internet users’ typographical errors, known as typosquatting, demonstrates a respondent’s lack of rights or legitimate interests under Policy ¶ 4(a)(ii).”  Chegg Inc. v. yang qijin, FA1503001610050 (Forum Apr. 23, 2015).  Additionally, panels have determined that “[t]yposquatting … as a means of redirecting consumers against their will to another site, does not qualify as a bona fide offering of goods or services, whatever may be the goods or services offered at that site.”  Nat’l Ass’n of Prof’l Baseball Leagues, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003). 

 

Additionally, Complainant contends that Respondent’s <brotherhodmutual.com> and <wwwbrotherhoodmutual.com> resolve to websites hosting pay-per-click advertisements for goods and services in direct competition with Complainant.  See Compl., at Attached Ex. 4.  Panels have found that, because the

“[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use.  H-D Michigan Inc. v. Buell, FA 1106640 (Forum Jan. 2, 2008).  Therefore, the Panel determines that Respondent lacks rights and legitimate interests in <brotherhodmutual.com> and <wwwbrotherhoodmutual.com> pursuant to Policy ¶ 4(c)(i) and ¶ 4(c)(iii).

 

Registration and Use in Bad Faith

Complainant argues that Respondent registered and is using <brotherhodmutual.com> and <wwwbrotherhoodmutual.com> in bad faith.  To remind the Panel, Respondent’s <brotherhodmutual.com> and <wwwbrotherhoodmutual.com> resolve to webpages hosting pay-per-click advertisements to providing goods and services in direct competition with Complainant.  See Compl., at Attached Ex. 4.  Complainant asserts that the disputed domain names disrupt Complainant’s business by redirecting internet users to competing goods and services for Respondent’s commercial gain.  “The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).”  Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015).

 

Next, Complainant argues that Respondent’s <brotherhodmutual.com> and <wwwbrotherhoodmutual.com> are examples of typosquatting, taking advantage of common typing errors made by internet users.  “Respondents who capitalize on common typing errors engage in bad faith registration under Policy ¶ 4(a)(iii).”  Adorama, Inc. v. Moniker Privacy Services, FA1503001610020 (Forum May 1, 2015).  Therefore, the Panel finds that Respondent registered and used the domain names in bad faith because Respondent “created ‘a likelihood of confusion with [C]omplainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location’ . . . through Respondent’s persistent practice of ‘typosquatting.’”  Canadian Tire Corp. v. domain adm’r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003).

 

Finally, Complainant asserts that Respondent registered <brotherhodmutual.com> and <wwwbrotherhoodmutual.com> with actual knowledge of Complainant and its rights to the BROTHERHOOD MUTUAL mark. “[A]lthough the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith,” panels have found “actual knowledge through the name used for the domain and the use made of it.”  Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014).  Complainant asserts that in light of the fame and long-standing use of Complainant's BROTHERHOOD MUTUAL mark, it is inconceivable that Respondent could have registered the disputed domain name without actual and/or constructive knowledge of Complainant's rights in the mark.  See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum March 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”).  Thus, where the circumstances indicate that Respondent had actual knowledge of Complainant's BROTHERHOOD MUTUAL mark when it registered  <brotherhodmutual.com> and <wwwbrotherhoodmutual.com>, the Panel finds bad faith.  Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Forum Apr. 10, 2006).

 

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <brotherhodmutual.com> and <wwwbrotherhoodmutual.com> domain names be TRANSFERRED from Respondent to Complainant.

John J. Upchurch, Panelist

Dated:  August  22, 2017