Brother Industries, Ltd. v. Carreto Corona Armando
Claim Number: FA2007001902947
PARTIES
Complainant is Brother Industries, Ltd. (“Complainant”), represented by G. Roxanne Elings of Davis Wright Tremaine LLP, New York, USA. Respondent is Carreto Corona Armando (“Respondent”), West Virginia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <brotherprintersupportpro.us>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 6, 2020; the Forum received payment on July 6, 2020.
On July 7, 2020, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <brotherprintersupportpro.us> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On July 13, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 3, 2020 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@brotherprintersupportpro.us. Also on July 13, 2020, 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 5, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 usTLD 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 usTLD Policy, usTLD 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
Complainant, operating under the BROTHER mark, makes and markets world-class printers for homes and businesses.
Complainant holds a registration for the BROTHER trademark and service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 5,522,396, registered July 24, 2018.
Respondent registered the domain name <brotherprintersupportpro.us> on August 28, 2018.
The domain name is confusingly similar to Complainant’s BROTHER mark.
Respondent has used the domain name to disrupt Complainant’s business by using it to create a false impression among Internet users that it functions as Complainant’s printer support service. The website resolving from the domain name displays the following message:
If you have complain [sic] regarding content and other issues please e-mail us on [sic]: abuse@brotherprintersupportpro.us.
Respondent has no rights to or legitimate interests in the domain name.
Respondent registered and has used the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark and service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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 that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept as true all reasonable claims and inferences set out in the Complaint unless the supporting evidence is manifestly contradictory. See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). But see 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”).
Complainant has rights in the BROTHER trademark and service mark sufficient for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See, for example, DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum December 30, 2018):
Complainant’s ownership of a USPTO registration for … [its mark] … demonstrate[s] its rights in such mark for the purposes of Policy ¶ 4(a)(i).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <brotherprintersupportpro.us> is confusingly similar to Complainant’s BROTHER trademark and service mark.
The domain name incorporates the mark in its entirety, merely adding the generic term “printer support,” which relates to an aspect of Complainant’s business, and the generic term “pro,” which can be taken as an indication of quality in the performance of that aspect of its business, plus the United States Top-Level Domain (“usTLD”) “.us.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See, for example, Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding that adding to a mark a generic Top Level Domain (“gTLD”) and the generic term “finance,” which described a UDRP complainant’s financial services business conducted under that mark, did not sufficiently distinguish the resulting domain name from the mark under Policy ¶ 4(a)(i)).
See also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum September 27, 2002):
[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.
This is because every domain name requires a gTLD or other TLD.
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent lacks rights to or legitimate interests in the challenged domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c)(i)-(iv), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that there is no evidence in the record to suggest that Respondent has been commonly known by the <brotherprintersupportpro.us> domain name, or that Complainant has licensed or otherwise authorized Respondent to use the BROTHER mark for any reason. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Carreto Corona Armando,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(iii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s mark in any manner). See also Navistar International Corporation v. N Rahmany, FA 620789 (Forum June 8, 2015) (finding, under Policy¶4(c)(ii), that a respondent was not commonly known by a disputed domain name where a UDRP complainant had not authorized that respondent to incorporate its mark in a domain name).
We next observe that Complaint asserts, without objection from Respondent, that Respondent has used the <brotherprintersupportpro.us> domain name to disrupt Complainant’s business by using it to create a false impression among Internet users that it functions as Complainant’s printer support service. In this connection, we also take cognizance of the fact that Complaint reveals that the website resolving from the domain name displays the following message:
If you have complain [sic] regarding content and other issues please e-mail us on [sic]: abuse@brotherprintersupportpro.us.
This message, taken together with the structure of the challenged domain name, strongly suggests that Respondent is using the domain name to perpetrate a fraud upon unsuspecting Internet users who respond to the invitation to contact it at the indicated e-mail address by soliciting sensitive personal and financial information according to a pattern commonly referred to as “phishing.” Phishing has been universally determined to demonstrate the absence of rights to or legitimate interests in a domain name that is confusingly similar to the mark of another. See, for example, Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum August 16, 2017) (finding that a respondent lacked both rights to and legitimate interests in a domain name with which it conducted a phishing scheme to procure “Internet users’ personal information).
In short, Respondent’s employment of the contested domain name is neither a bona fide offering of goods or services by means of it under Policy ¶ 4(c)(ii) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iv) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy.
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent has employed the disputed <brotherprintersupportpro.us> domain name to attempt to pass itself off a Complainant on line with the aim of inducing unsuspecting Internet users to part with their sensitive personal information in a fraudulent scheme commonly known as “phishing.” Under Policy ¶ 4(b)(iv), this use of the domain name demonstrates Respondent’s bad faith in registering and using it. See, for example, Qatalyst Partners LP v. Devimore, FA 1393436 (Forum July 13, 2011) (finding that using a domain name that was confusingly similar to the mark of another to pass itself off as a UDRP complainant online in a phishing scheme was evidence of bad faith registration and use).
Finally, under this head of the Policy, it is plain from the record that Respondent knew of Complainant and its rights in the BROTHER mark when Respondent registered the <brotherprintersupportpro.us> domain name. This further demonstrates Respondent’s bad faith in registering it. See, for example, Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum February 6, 2014):
The Panel … here finds actual knowledge [of the mark of UDRP complainant, and, therefore, a respondent’s bad faith registration of a confusingly similar domain name] through the name used for the domain and the use made of it.
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the usTLD Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <brotherprintersupportpro.us> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: August 18, 2020
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