Brighthouse Services, LLC v. Domain Admin / Whois Privacy Corp. / Not disclosed Not disclosed
Claim Number: FA1807001799172
Complainant is Brighthouse Services, LLC (“Complainant”), represented by Minnie Kim of Moore & Van Allen PLLC, North Carolina, USA. Respondent is Domain Admin / Whois Privacy Corp. / Not disclosed Not disclosed (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <brighthousefinncial.com> and <brighthousefinancia.com>, registered with Internet Domain Service BS Corp.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 30, 2018; the Forum received payment on July 30, 2018.
On July 31, 2018, Internet Domain Service BS Corp confirmed by e-mail to the Forum that the <brighthousefinncial.com> and <brighthousefinancia.com> domain names are registered with Internet Domain Service BS Corp and that Respondent is the current registrant of the names. Internet Domain Service BS Corp has verified that Respondent is bound by the Internet Domain Service BS Corp 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 August 15, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 4, 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@brighthousefinncial.com, postmaster@brighthousefinancia.com. Also on August 15, 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 September 5, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant is a subsidiary of Brighthouse Financial, Inc., a public company with more than $220 billion in total assets and $2.7 million in insurance policies and annuity contracts. Complainant has used the BRIGHTHOUSE FINANCIAL mark in connection with financial services since at least as early as October 2016. Complainant has rights in the BRIGHTHOUSE FINANCIAL mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 5,287,259, registered Sep. 12, 2017, filed May 4, 2016). Respondent’s <brighthousefinncial.com> and <brighthousefinancia.com> domain names is identical or confusingly similar to Complainant’s mark as both domain names omit one letter from Complainant’s BRIGHTHOUSE FINANCIAL mark.
Respondent has no rights or legitimate interests in the <brighthousefinncial.com> <brighthousefinancia.com> domain names. Respondent is not commonly known by the disputed domain names, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, the domain names are associated with a URL that has been flagged as a malicious domain associated with malware/spyware.
Respondent registered and uses the <brighthousefinncial.com> and <brighthousefinancia.com> domain names in bad faith. Respondent engages in typosquatting by making slight variations on Complainant’s mark. Further, Respondent uses the domain names in connection with malware/spyware. Finally, Respondent’s decision to register nearly identical domain names demonstrates Respondent’s actual knowledge of Complainant’s BRIGHTHOUSE FINANCIAL mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Brighthouse Services, LLC, of Charlotte, North Carolina, USA. Complainant is the owner of a domestic registration for the mark BRIGHTHOUSE FINANCIAL, which it has continuously used since at least as early as 2016, in connection with marketing, promoting, and selling financial services, including insurance, annuities and related investment products.
Respondent is Domain Admin / Whois Privacy Corp. / Not disclosed Not disclosed, of Nassau, New Providence Bahamas. Respondent’s registrar’s address indicates the same location. The Panel notes that Respondent registered the <brighthousefinncial.com> and <brighthousefinancia.com> domain names on or about April 7, 2017.
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.”).
Complainant claims rights in the BRIGHTHOUSE FINANCIAL mark through its registration of the mark with the USPTO (e.g. Reg. No. 5,287,259, registered Sep. 12, 2017, filed May 4, 2016). Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (“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).”). Further, rights in a mark can date back to the filing of the trademark application. See ADP, LLC v. Dennis Shifrin / Streamline, FA 1732114 (Forum June 13, 2017) (holding that “the relevant date for Complainant’s mark is the filing date.”). The Panel here finds that Complainant has established rights in the BRIGHTHOUSE FINANCIAL mark dating back to May 4, 2016 (filing date) for the purposes of Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <brighthousefinncial.com> and <brighthousefinancia.com> domain names are identical or confusingly similar to Complainant’s mark as both domain names omit one letter from Complainant’s BRIGHTHOUSE FINANCIAL mark. The Panel also notes that the domain names add the “.com” generic top-level domain (“gTLD”) and find that similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶4(a)(i). See Twitch Interactive, Inc. v. zhang qin, FA 1626511 (Forum Aug. 4, 2015) (finding, “The relevant comparison then resolves to the trademark, TWITCH, with the term, ‘titch,’ which, as can be readily seen, merely removes the letter ‘w’ from the trademark. In spite of that omission the compared integers remain visually and aurally very similar and so Panel finds them to be confusingly similar for the purposes of the Policy.”); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel here finds that the <brighthousefinncial.com> and <brighthousefinancia.com> domain names are confusingly similar to the BRIGHTHOUSE FINANCIAL mark under Policy ¶4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that 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 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). The Complainant here has set forth the requisite prima facie case.
Complainant contends that Respondent has no rights or legitimate interests in the <brighthousefinncial.com> and <brighthousefinancia.com> domain names. Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “Domain Admin / Whois Privacy Corp” as the registrant for the <brighthousefinncial.com> domain name, and “Domain Admin” as the registrant for the <brighthousefinancia.com> domain name. Complainant asserts that no evidence exists that Respondent has ever been legitimately known by the BRIGHTHOUSE FINANCIAL mark. Panels may use complainants’ undisputed assertions as evidence of lacking rights or legitimate interests. 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). Complainant alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the domain names prior to their registration, and Complainant has not given Respondent permission to use the mark in any manner. The Panel here finds that Respondent is not commonly known by the infringing domain names under Policy ¶ 4(c)(ii).
Complainant further argues that the domain names are associated with a URL which has been flagged as a malicious domain associated with malware/spyware. Using a domain name in connection with malware generally does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Google LLC v. Above.com Domain Privacy, FA1753950 (Forum Nov 14, 2017) (Complainant provides screenshots of the Respondent’s website which contains a questionnaire for users to enter in non-personal information, and an installation request for Adobe Flash Player, which installs malware on a user’s computer. Phishing schemes and downloading malicious software can evince a failure to provide a bona fide offering of goods or services or legitimate noncommercial or fair use.). Complainant provides a screenshot of the message displayed when it attempts to access the disputed domain name, which indicates that the content is blocked because “it has been determined by Web Reputation Filters to be a security threat to your computer.” The Panel here finds that Respondent’s use of the domain names in connection with malicious software does not confer rights and legitimate interests in the domain names for the purposes of Policy ¶¶ 4(c)(i) or (iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which bad faith may be found. See, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000). The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. See, e.g., Match.com, LP v. BillZag and NWLAWS.ORG, D2004-0230 (WIPO June 2, 2004). While Complainant has not made any arguments that would fit within the bounds of Policy ¶ 4(b) elements, the Panel may consider Respondent’s actions under a nonexclusive inquiry of Policy ¶ 4(a)(iii).
Complainant contends that by removing one letter from Complainant’s mark in each domain name, Respondent engages in typosquatting. A finding of typosquatting can evince bad faith under Policy ¶ 4(a)(iii). See Adorama, Inc. v. Moniker Privacy Services, FA1503001610020 (Forum May 1, 2015) (“Respondent has also engaged in typosquatting, which is additional evidence of bad faith registration and use under Policy ¶ 4(a)(iii). Respondents who capitalize on common typing errors engage in bad faith registration under Policy ¶ 4(a)(iii).”). Respondent omits the letter “l” from one domain name, and omits the letter “a” from the other. The Panel here finds that Respondent’s removal of one letter constitutes typosquatting, evincing bad faith registration and use by the Respondent.
Next, Complainant argues that Respondent uses the domain names in connection with malware/spyware. Use of a domain name in connection with malware can lead to a finding of bad faith under Policy ¶ 4(a)(iii). See eNom, Incorporated v. Muhammad Enoms General delivery / Enoms.com has been registered just few days after Enom.com, therefore could not have been regstere, FA1505001621663 (Forum July 2, 2015) (“In addition, Respondent has used the disputed domain name to install malware on Internet users’ devices. The Panel finds that this is bad faith under Policy ¶ 4(a)(iii).”). As noted in the previous section, Complainant provides a screenshot of the message displayed when it attempts to access the disputed domain names, which indicates that the content is blocked because “it has been determined by Web Reputation Filters to be a security threat to your computer.” The Panel here finds that Respondent uses the domain names in attempts to install malicious software onto users’ computers in bad faith under the Policy.
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
Complainant has proven this element.
DECISION
As Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <brighthousefinncial.com> and <brighthousefinancia.com> domain names be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: Sept. 19, 2018
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page