Brighthouse Services, LLC v. Tulip Trading Company
Claim Number: FA1807001799182
Complainant is Brighthouse Services, LLC (“Complainant”), represented by Minnie Kim of Moore & Van Allen PLLC, North Carolina, USA. Respondent is Tulip Trading Company (“Respondent”), Saint Kitts and Nevis.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwbrighthouselifeinsurance.com>, registered with Key-Systems GmbH.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding.
Hon. Carolyn Marks Johnson sits here as Panelist.
Complainant submitted a Complaint to the Forum electronically July 30, 2018; the Forum received payment July 30, 2018.
On July 31, 2018, Key-Systems GmbH confirmed by e-mail to the Forum that the <wwwbrighthouselifeinsurance.com> domain name is registered with Key-Systems GmbH and that Respondent is the current registrant of the name. Key-Systems GmbH verified that Respondent is bound by the Key-Systems GmbH registration agreement and 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 14, 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@wwwbrighthouselifeinsurance.com. Also, on August 14, 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 August 18, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit here as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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’s Contentions in this Proceeding:
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). See Compl. Ex. A2. Respondent’s <wwwbrighthouselifeinsurance.com> domain name is identical or confusingly similar to Complainant’s mark as the domain name merely adds the letters “www” and replaces the “FINANCIAL” portion of Complainant’s mark with the term “life insurance.”
Respondent has no rights or legitimate interests in the <wwwbrighthouselifeinsurance.com> domain name. Respondent is not commonly known by the disputed domain name and Complainant has not authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or any legitimate noncommercial or fair use. Rather, the domain name appears to resolve to a parked webpage with various sponsored links. See Compl. Ex. B2.
Respondent registered and uses the <wwwbrighthouselifeinsurance.com> domain name in bad faith. Respondent uses the domain name to profit by feeding off the various sponsored links displayed on the resolving domain. See Compl. Ex. B2. Further, Respondent’s decision to register a nearly identical domain name demonstrates Respondent’s actual knowledge of Complainant’s BRIGHTHOUSE FINANCIAL mark.
B. Respondent’s Allegations in Response in this Proceeding:
Respondent did not submit a response in this proceeding. The Panel notes that Respondent registered the <wwwbrighthouselifeinsurance.com> domain name May 5, 2018 a date that is more recent in time than Complainant’s date of registration and rights in the mark. See Compl. Ex. B1.
Complainant established that it has rights to and legitimate interests in the mark contained in its major portions within the disputed domain name.
Respondent registered and used a disputed domain name that is confusingly similar to Complainant’s protected mark and did so 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 to 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.
Given 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 will draw such inferences as the Panel 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.”).
Identical or Confusingly Similar:
Complainant has 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). See Compl. Ex. A2. 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).”). Accordingly, the Panel finds that Complainant established rights in the BRIGHTHOUSE FINANCIAL mark for the purposes of Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s disputed <wwwbrighthouselifeinsurance.com> domain name is identical or confusingly similar to Complainant’s mark as the domain name merely adds the letters “www” and replaces the “FINANCIAL” portion of Complainant’s mark with the term “life insurance.” The Panel notes that the domain name adds the “.com” generic top-level domain (“gTLD”) and finds that similar changes in a registered mark do not distinguish a domain name for the purposes of Policy ¶4(a)(i). See Citizens Financial Group, Inc. v. Paul Taylor, FA 1714579 (Forum Mar. 14, 2017) (“Similarly, addition of the letters “www” to the beginning of a mark in order to from a domain name does not distinguish the domain name for the purposes of a Policy ¶ 4(a)(i) analysis for confusing similarity.”); see also VNY Model Management, Inc. v. Lisa Katz / Domain Protection LLC, FA 1625115 (Forum Aug. 17, 2015) (finding that Respondent’s <vnymodels.com> domain name is confusingly similar to the VNY MODEL MANAGEMENT mark under Policy ¶ 4(a)(i).); see also AOL LLC v. AIM Profiles, FA 964479 (Forum May 20, 2007) (finding that the respondent failed to differentiate the <aimprofiles.com> domain name from the complainant’s AIM mark by merely adding the term “profiles”); 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 agrees with Complainant and finds that the infringing domain name is confusingly similar to the BRIGHTHOUSE FINANCIAL mark under Policy ¶4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent registered a disputed domain name that contains a major portion of Complainant’s protected mark and is confusingly similar to that mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights and Legitimate Interests:
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 of proof shifts to Respondent to show it does have such 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 contends that Respondent has no rights or legitimate interests in the <wwwbrighthouselifeinsurance.com> domain name. Where no response is filed, 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 “Tulip Trading Company” as the registrant for the domain name. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the BRIGHTHOUSE FINANCIAL mark. Panels may use these 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 name prior to its registration, and Complainant has not given Respondent permission to use the mark in any manner. Accordingly, the Panel agrees here that Respondent is not commonly known by the infringing domain name under Policy ¶ 4(c)(ii).
Complainant also argues that Respondent uses the disputed domain name to resolve in a website that contains a series of hyperlinks redirecting users to various generic services, presumably to commercially benefit from pay-per-click fees. Using a domain name to offer generic links to various services does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Ferring B.V. v. Shanshan Huang / Melissa Domain Name Services, FA1505001620342 (Forum July 1, 2015) (“Placing unrelated third party links for the benefit of a respondent indicates a lack of a bona fide offering of goods or services, and a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively.”). Complainant provides a screenshot of the resolving webpage, which appears to redirect users to the URL <edmunds.com>, a car buying/selling website. See Compl. Ex. B2. Accordingly, the Panel may find that Respondent uses the domain name for services unrelated to Complainant, failing to make a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name containing the major portions of Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant claims that Respondent registered and uses the <wwwbrighthouselifeinsurance.com> domain name in bad faith because Respondent attempts to capitalize off Complainant’s goodwill by displaying generic links to third-party services. Offering for-profit links to various services supports findings of bad faith under Policy ¶ 4(b)(iv). See Plain Green, LLC v. wenqiang tang, FA1505001621656 (Forum July 1, 2015) (finding that the respondent’s use of the disputed domain name to feature generic third-party hyperlinks constituted bad faith according to Policy ¶ 4(b)(iv)). Complainant provides a screenshot of the resolving webpage, which appears to redirect users to the URL <edmunds.com>, a car buying/selling website. See Compl. Ex. B2. On this proof, the Panel finds that Respondent’s use of the domain name to capitalize off Complainant’s goodwill for profit demonstrates bad faith under Policy ¶ 4(b)(iv).
Further, Complainant claims that Respondent had actual knowledge of Complainant’s rights in the BRIGHTHOUSE FINANCIAL mark at the time of registering the at-issue domain name. Actual knowledge of a complainant's rights in a mark prior to registering a confusingly similar domain name can evidence bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (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 decision to register a nearly identical domain name demonstrates Respondent’s actual knowledge of Complainant’s BRIGHTHOUSE FINANCIAL mark. The Panel agrees with Complainant and finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith under Policy ¶ 4(a)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wwwbrighthouselifeinsurance.com> domain name be TRANSFERRED from Respondent to Complainant,
Hon. Carolyn Marks Johnson, Panelist
Dated: September 17, 2018.
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