Brasfield & Gorrie, L.L.C. v. Daniel Roberts
Claim Number: FA1904001840239
Complainant is Brasfield & Gorrie, L.L.C. (“Complainant”), represented by Robert C. Anderson of Balch & Bingham LLP, Alabama, United States. Respondent is Daniel Roberts (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <brasfieldgorrieusa.com>, registered with NameCheap, Inc.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 23, 2019; the Forum received payment on April 23, 2019.
On April 25, 2019, NameCheap, Inc. confirmed by e-mail to the Forum that the <brasfieldgorrieusa.com> 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 ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 25, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 15, 2019 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@brasfieldgorrieusa.com. Also on April 25, 2019, 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 May 16, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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
1. Respondent’s <brasfieldgorrieusa.com> domain name is confusingly similar to Complainant’s BRASFIELD & GORRIE mark.
2. Respondent does not have any rights or legitimate interests in the <brasfieldgorrieusa.com> domain name.
3. Respondent registered and uses the <brasfieldgorrieusa.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is a company in the construction industry operating since 1967. Complainant holds a registration for the BRASFIELD & GORRIE mark with the Unites States Patent and Trademark Office (“USPTO”) (Reg. No. 2,653,412, registered Nov. 26, 2002).
Respondent registered the <brasfieldgorrieusa> domain name on April 22, 2019, and uses it conduct a phishing scheme.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The Panel finds that Complainant has rights in the BRASFIELD & GORRIE mark based upon its registration of the mark with the USPTO. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
Respondent’s <brasfieldgorrieusa> domain name incorporates Complainant’s BRASFIELD & GORRIE mark, omits the “&”, and adds the geographical term “usa” and the “.com” generic top-level domain (“gTLD”). These changes do not sufficiently distinguish a domain name from a mark under a Policy ¶4(a)(i) analysis. See Dell Inc. v. Suchada Phrasaeng, FA 1745812 (Forum Sep. 28, 2017) (“Adding geographical terms does not sufficiently distinguish a domain name from a mark to prevent a finding of confusingly similarity under a Policy ¶4(a)(i) analysis.” Furthermore, the omission of ampersands and the inclusion of a gTLD are disregarded in Policy ¶4(a)(i) analysis.); see also 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.”). Thus, the Panel finds that Respondent’s <brasfieldgorrieusa> domain name is confusingly similar to Complainant’s BRASFIELD & GORRIE mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 <brasfieldgorrieusa> domain name because Respondent is not commonly known by the disputed domain name. Evidence that a registrant’s name is materially different from the domain name at issue is evidence that the respondent is not commonly known by the domain name. See Bittrex, Inc. v. Caroline Alves Maia, FA 1796113 (Forum Aug. 6, 2018) (“UDRP panels have consistently held that evidence of a registrant name that is materially different from the domain name at issue is competent evidence that the respondent is not commonly known by the domain name.”). The WHOIS information indicates that the Respondent is known as “Daniel Roberts”. Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name because Respondent is not commonly known by the disputed domain name.
Complainant also argues that Respondent is not making a legitimate non-commercial or fair use of the disputed domain name because it resolves to an inactive webpage. A respondent’s non-use of a disputed domain name has been held to be neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Microsoft Corporation v. Terrence Green / Whois Agent / Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr. 4, 2016) (finding the respondent’s use of the disputed domain names to send fraudulent emails purportedly from agents of complainant to be neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)). Complainant provides a screenshot of the disputed domain name’s resolving inactive webpage, which features the text “404-The site you were looking for couldn’t be found.” Thus, the Panel finds that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use and thus has no rights in the disputed domain name under Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the <brasfieldgorrieusa> domain name in bad faith because Respondent uses it to pass off as Complainant in a phishing scheme whereby Respondent poses as Complainant’s Director of Finance. Complainant provides emails sent from Respondent as evidence of the phishing scheme. The Panel therefore agrees that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv) by engaging in phishing. See Qatalyst Partners LP v. Devimore, FA 1393436 (Forum July 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use per Policy ¶ 4(b)(iv)).
Complainant also argues that Respondent registered and uses the <brasfieldgorrieusa> domain name in bad faith because the disputed domain name resolves to either an inactive webpage, or redirects to Complainant’s actual webpage. Using a disputed domain name to resolve to a complainant’s webpage or to an inactive webpage is evidence of bad faith registration and use per Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). Thus, the Panel finds further bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Complainant has satisfied 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 <brasfieldgorrieusa.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: May 17, 2019
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