Brotherhood Mutual Insurance Company v. Alan Keith
Claim Number: FA1803001774796
Complainant is Brotherhood Mutual Insurance Company (“Complainant”), represented by Dwayne K. Goetzel, Texas, USA. Respondent is Alan Keith (“Respondent”), Louisiana, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <brotherhoodmutuals.com>, registered with Wild West Domains, LLC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 6, 2018; the Forum received payment on March 6, 2018.
On March 7, 2018, Wild West Domains, LLC confirmed by e-mail to the Forum that the <brotherhoodmutuals.com> domain name is registered with Wild West Domains, LLC and that Respondent is the current registrant of the name. Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, LLC 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 March 12, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 2, 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@brotherhoodmutuals.com. Also on March 12, 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 April 5, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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
The Domain Name is identical and/or confusingly similar to trademarks or service marks in which Complainant has rights, as listed above.
The Domain Name is “brotherhoodmutuals.com,” which is just a misspelling or typosquatting of Brotherhood Mutual (by adding an “s” at the end), and is thereby confusingly similar to the Mark. Chrysalis Holdings, LLC v. Megan Payne, FA1706001734328 (Forum June 28, 2017) (finding a domain name containing common misspelling of a protected mark to be confusingly similar).
Complainant has used the BROTHERHOOD MUTUAL mark since at least as early as 1935, in diverse manners customary to the relevant industry, which is decades prior to the registration of the Domain Name.
As per ADP, LLC v. Melissa Jacobs, FA1705001730293 (Forum June 16, 2017), a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶4(a)(i).
Respondent has no legitimate interests in the Domain Name, as indicated below:
(1) No bona fide offering.
Respondent is not associated with or affiliated with Complainant, and is not authorized to use the Mark in question.
Complainant previously contacted Respondent, and asked for return of the Domain Name. Respondent did not respond, and has refused to comply to date, thereby necessitating this arbitration complaint.
The Domain Name incorporates the entirety of Complainant’s BROTHERHOOD MUTUAL mark, and was previously used to capture email addresses.
The lack of any current use of the Domain Name indicates that the Respondent is not engaged in a bona fide offering of goods or services in connection with the Domain Name.
(2) Not known by the Domain Name.
Respondent is not known as “Brotherhood Mutual” or “Brotherhood Mutuals.” As indicated in Tercent Inc. v. Lee Yi, FA 139720 (Forum Feb. 10, 2003), “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name,” which is one factor in determining that Policy ¶4(c)(ii) does not apply.
The registration information for the Domain Name is hidden behind a privacy proxy (Domains by Proxy, LLC). Respondent cannot be commonly known by a domain name where its identity is hidden by a WhoIs privacy service. See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel notes that the WHOIS information merely lists a privacy service as registrant” and therefore “there is no basis to find Respondent is commonly known by the disputed domain name pursuant to Policy ¶4(c)(ii)”).
In addition, typosquatting is proof that a respondent lacks a legitimate interest in a domain name. Morgan Stanley v. Raul Tamez / Morgan Stanley Inc., FA1705001732705 (Forum June 30, 2017); see also IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”).
(3) No legitimate noncommercial or fair use is made.
Respondent’s use of the Domain Name is not in connection with any noncommercial or fair use. Respondent is engaged in typosquatting, in order to misdirect consumers who might otherwise misspell “Brotherhood Mutual” in the context of a search.
The Domain Name was registered and is used in bad faith, as indicated below:
(1) Knowledge of Complainant.
Complainant was offering its goods and services under the BROTHERHOOD MUTUAL trademark for years prior to Respondent’s acquisition of the Domain Name. Complainant’s BROTHERHOOD MUTUAL trademark was well known and was registered with the U.S. Patent and Trademark Office prior to Respondent’s acquisition of the Domain Name. See Orange Glo Int’l v. Blume, FA 118313 (Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof”).
Further, Complainant registered its own domain name (brotherhoodmutual.com) on September 26, 1996, which was years prior to Respondent’s registration of the Domain Name at issue. Respondent therefore knew or should have known that it was not authorized to register or utilize the Domain Name for its own commercial services. Further, Complainant’s attorney contacted Respondent on February 2, 2018 regarding the Domain Name, but Respondent ignored this communication and never bothered to respond.
(2) Typosquatting as Evidence of Bad Faith
In Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Forum Jun. 23, 2003), the Panel found that the respondent engaged in typosquatting, which was evidence of bad faith registration and use under Policy ¶4(a)(iii). See also National Geographic Society v Domain Admin / Private Registrations Aktien Gesellschaft, FA1412001596598 (Forum Feb. 6, 2015). Since Respondent has engaged in typosquatting, the findings from the foregoing cases are equally applicable here.
Respondent’s bad faith usage has diverted consumers from Complainant’s online location to a site (previously) accessible under the Domain Name, which is likely to cause confusion among relevant consumers, harm the goodwill represented by Complainant’s trademarks, and prevent Complainant from using its trademarks in association with the Domain Name. Further, since Respondent was previously capturing email addresses from users who mistakenly went to the site accessible by the Domain Name, it is likely that Respondent is using such information for competitive or harmful purposes.
In sum, Respondent has, without regard to the goods or services of Complainant, a bad faith intent to profit from Complainant’s trademarks, and has registered, trafficked or used a domain name that is identical, confusingly similar or dilutive of Complainant’s marks, which are distinctive and famous.
The activities of Respondent are and have been without authorization from Complainant and were taken in bad faith as indicated by (1) Respondent’s lack of use of the Domain Name in association with a bona fide offering of goods or services, (2) Respondent’s lack of use of the Domain Name as a trade name to refer to itself, (3) Respondent’s lack of any trademark or intellectual property rights in the Domain Name, (4) Respondent’s registration of the Domain Name well after the accrual of rights in Complainant, (5) the open, obvious and well-publicized use of the BROTHERHOOD MUTUAL marks by Complainant, and (6) Respondent’s bad faith in registering a domain name that is simply a misspelling of Complainant’s well-known marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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.”).
Complainant claims rights in the BROTHERHOOD MUTUAL mark based upon its registration with the United States Patent and Trademark Office (“USPTO”). Registration with a governmental trademark agency, such as the USPTO, is sufficient to prove Policy ¶4(a)(i) 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).”). Complainant has established its rights in the BROTHERHOOD MUTUAL mark.
Complainant claims Respondent’s <brotherhoodmutuals.com> domain name is confusingly similar to Complainant’s mark because it is just a minor misspelling of Complainant’s BROTHERHOOD MUTUAL mark with an added “s” at the end. Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶4(a)(i). See LodgeWorks Partners, L.P. v. Isaac Goldstein / POSTE RESTANTE, FA 1717300 (Forum Apr. 5, 2017) (“The Panel agrees; Respondent’s <archerhotels.com> is confusingly similar to complainant’s ARCHER HOTEL mark.”). A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. The <brotherhoodmutuals.com> domain name is confusingly similar to the BROTHERHOOD MUTUAL mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case 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 has 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 claims Respondent has no rights or legitimate interests in the <brotherhoodmutuals.com> domain name because Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the BROTHERHOOD MUTUAL mark. Absent information in the record to the contrary (and there is none in this case), the WHOIS information and common sense allow the Panel to decide Respondent is not commonly known by the disputed domain names. 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)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). A privacy service was used by Respondent to register the disputed domain name, but it was lifted as a result of the commencement of this proceeding. The WHOIS presently identifies Respondent as “Alan Keith.” There is no obvious relationship between “Alan Keith” and the disputed domain name. There is no evidence Complainant authorized Respondent to register a domain name using Complainant’s mark. This leads to the conclusion Respondent does not have any rights or legitimate interests in the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Respondent is not commonly known by the disputed domain name under Policy ¶4(c)(ii).
Complainant claims the disputed domain name redirects users to a website that lacks any content. This is not completely true because the Panel believes there is no website at the domain name to resolve (much less an empty one). Failure to make an active use of a confusingly similar domain name is evidence of a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶4(c)(i) or Policy ¶4(c)(iii). See Kohler Co. v xi long chen, FA 1737910 (Forum Aug. 4, 2017) (”Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <kohler-corporation.com> resolves to an inactive webpage displaying the message “website coming soon!”). Respondent has failed to provide 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).
Complainant claims Respondent has not made a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name because Respondent used the disputed domain name to itself pass off as Complainant and operate a phishing scheme. Using a disputed domain name to “pass off” as a complainant in furtherance of a scheme to phish for user information does not constitute rights or legitimate interests under Policy ¶¶4(c)(i) & (iii). See DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (”Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”). Respondent lacks rights and legitimate interests in the <brotherhoodmutuals.com> domain name under Policy ¶¶4(c)(i) and (iii).
Respondent registered the domain name using a WHOIS privacy service. Respondent could not have acquired any rights to the domain name because Respondent has done nothing to publicly associate itself with the domain name.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent registered and used the disputed domain name in bad faith by attempting to pass off as Complainant and engaging in a phishing scheme. Using a disputed domain name to pass off as a complainant and conducting a phishing scheme constitutes bad faith under Policy ¶4(b)(iv). See DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that the respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that the complainant endorsed and sponsored the respondent’s website); see also 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).”), See Google Inc. v. Domain Admin / Whois Privacy Corp., FA1506001622862 (Forum Aug. 10, 2015). Respondent’s actions constitute bad faith under Policy ¶4(b)(iii).
Using a WHOIS privacy service in a commercial context raises a rebuttable presumption of bad faith registration and use. Respondent has done nothing to rebut that presumption. This Panel is willing to find bad faith on these grounds alone.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <brotherhoodmutuals.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Tuesday, April 10, 2018
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