Tyler Technologies, Inc. v. Host Master / Transure Enterprise Ltd
Claim Number: FA2011001920065
Complainant is Tyler Technologies, Inc. (“Complainant”), represented by Alexis Crawford Douglas of K&L Gates LLP, United States. Respondent is Host Master / Transure Enterprise Ltd (“Respondent”), United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mybrazostech.com>, registered with Above.com Pty Ltd..
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 9, 2020; the Forum received payment on November 9, 2020.
On November 10, 2020, Above.com Pty Ltd. confirmed by e-mail to the Forum that the <mybrazostech.com> domain name is registered with Above.com Pty Ltd. and that Respondent is the current registrant of the name. Above.com Pty Ltd. has verified that Respondent is bound by the Above.com Pty Ltd. 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 November 16, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 7, 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@mybrazostech.com. Also on November 16, 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 December 14, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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
Complainant made the following contentions.
Complainant is the largest software company in the nation solely focused on providing integrated software and technology services to the public sector. Complainant has common law trademark rights in the BRAZOS mark based upon continuous use since late 2003 by court officials and public safety officers. Additionally, Complainant uses the BRAZOS mark in its own <brazostech.com> domain name. See Compl. Annex 1. Respondent’s <mybrazostech.com> is identical or confusingly similar to Complainant’s BRAZOS mark as it incorporates Complainant’s entire mark and merely adds the descriptive word “tech.”
Respondent lacks rights and legitimate interests in the <mybrazostech.com> domain name. Respondent is not commonly known by the disputed domain name nor has Respondent been authorized by Complainant to use the BRAZOS mark. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services as Respondent’s resolving website displays similar content to that of Complainant’s website. Furthermore, Respondent’s resolving website attempts to gather personal information from users and features rotating hyperlinks.
Respondent registered and uses the <mybrazostech.com> domain name in bad faith. Respondent uses the disputed domain name to intentionally divert Internet users to Respondent’s own webpage where Respondent is compensated via the rotating hyperlinks. Additionally, Respondent had actual knowledge of Complainant’s rights to the BRAZOS mark prior to registering the disputed domain name evidenced by the style of the resolving webpage and the hyperlinks displayed there.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is the largest software company in the nation solely focused on providing integrated software and technology services to the public sector.
2. Complainant has established its common law trademark rights in the BRAZOS mark based upon continuous use since late 2003 by court officials and public safety officers.
3. Respondent registered the <mybrazostech.com> domain name on June 15, 2016.
4. Respondent’s resolving website displays similar content to that of Complainant’s website. Furthermore, Respondent’s resolving website attempts to gather personal information from users and features rotating hyperlinks.
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 first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has common law trademark rights in the BRAZOS mark based upon longstanding use of the mark in a variety of circumstances. When a complainant lacks a registered trademark, common law rights in a mark may satisfy Policy ¶ 4(a)(i). See Psyonix Inc. v. robert gray / notpsyonix, FA 1759780 (Forum Jan. 3, 2018) (“Policy ¶ 4(a)(i) does not require a complainant to own a trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”). Additionally, secondary meaning can be evidenced by longstanding use, holding an identical domain name, advertising, and media recognition of the mark. See Marquette Golf Club v. Al Perkins, 1738263 (Forum July, 27, 2017) (finding that Complainant had established its common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including “longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising.”). Complainant argues that the BRAZOS mark has been used since late 2003 by court officials and public safety officers in the fields of electronic ticketing; processing citations; creation of accident reports; capturing, processing and transmitting data into public safety and court systems; and accessing the National Crime Information Center and warrant databases. Additionally, Complainant uses the BRAZOS mark in its own domain name <brazostech.com>. See Compl. Annex 1. Therefore, the Panel finds Complainant has demonstrated rights in the BRAZOS mark per Policy ¶ 4(a)(i).
The next question that arises is whether Respondent’s <mybrazostech.com> domain name is identical or confusingly similar to Complainant’s BRAZOS mark as it encompasses the entirety of Complainant’s mark and merely adds the descriptive word “tech.” Adding a descriptive term and a gTLD to a mark fails to distinguish sufficiently a disputed domain name from a mark per Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). Therefore, the Panel finds the disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established 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 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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s BRAZOS mark and to use it in its domain name adding the generic word “tech” to the mark;
(b) Respondent registered the <mybrazostech.com> domain name on June 15, 2016;
(c) Respondent’s resolving website displays similar content to that of Complainant’s website. Furthermore, Respondent’s resolving website attempts to gather personal information from users and features rotating hyperlinks;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant contends Respondent lacks rights or legitimate interests in the <mybrazostech.com> domain name as Respondent is not commonly known by the disputed domain name nor has Complainant authorized or licensed to Respondent any rights in the BRAZOS mark. When a response is lacking, relevant WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name); see also 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. In light of Respondent’s failure to provide any evidence to the contrary, the Panel finds there is no basis to find Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).”). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name lists the registrant as “Host Master / Transure Enterprise Ltd,” and Complainant argues there is no other evidence to suggest that Respondent was authorized to use the BRAZOS mark. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent fails to use the <mybrazostech.com> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent’s resolving website has similar content to Complainant’s website. Using a confusingly similar domain name to pass off as a complainant may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See ShipChain, Inc. v. 谢东东 / 谢东东, FA 1785189 (Forum June 21, 2018) (“The resolving webpages between Complainant’s and Respondent’s websites are virtually the same. Respondent’s use of the disputed domain name does not confer rights and legitimate interests under Policy ¶¶4(c)(i) and (iii).”). Here, Complainant notes that Complainant provides a login page for patrol officers and users to collect data on the scene, issue citations, and generate activity reports via its portal at to U.S. clients and argues that Respondent’s website appears to provide similar content geared toward police and public safety. See Compl. Annex 7. Therefore, the Panel finds Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii);
(g) Complainant argues that Respondent fails to use the <mybrazostech.com> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent’s resolving website attempts to gather personal information from users and features rotating hyperlinks. Using a confusingly similar domain name to phish for personal information and to host hyperlinks related to a complainant may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business); see also Enterprise Holdings, Inc. v. I S / Internet Consulting Services Inc., FA 1785242 (Forum June 5, 2018) (“On its face, the use of a domain name that is confusingly similar to the mark of another in order to facilitate a phishing scheme cannot be described as either 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).”). Here, Complainant argues that on October 20 and 30, 2020 when Complainant and its client accessed Respondent’s website, Complainant and its client first received a message suggesting Respondent was attempting to gather personal information from users. See Compl. Annex 8. Additionally, Complainant argues that on October 25 and 28, 2020, when Complainant’s counsel accessed Respondent’s website, the disputed domain name resolved to a page featuring rotating hyperlinks for, among other things, “police dept” and “cost of life alert service”. See Compl. Annex 2. Therefore, the Panel finds Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant contends Respondent registered and uses the <mybrazostech.com> domain name in bad faith as Respondent uses the disputed domain name intentionally to divert Internet users to Respondent’s own webpage where Respondent is compensated via the rotating hyperlinks. Using a confusingly similar domain to divert Internet users to a respondent’s own website for financial gain can demonstrate bad faith per Policy ¶ 4(b)(iv). See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). The Panel notes that Complainant provides screenshots of Respondent’s resolving website and highlights the rotating hyperlinks for, among other things, “police dept” and “cost of life alert service”. See Compl. Annex 2. Therefore, the Panel finds Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Secondly, Complainant contends Respondent registered the <mybrazostech.com> domain name with actual knowledge of Complainant’s rights in the BRAZOS mark prior to registering the disputed domain name evidenced by the similar website layout and hyperlinks. Actual knowledge of a complainant’s rights in a mark evidences bad faith per Policy ¶ 4(a)(iii) and may be shown by a respondent’s attempt to pass itself off as a complainant or display competing content. See Norgren GmbH v. Domain Admin / Private Registrations Aktien Gesellschaft, FA1501001599884 (Forum Feb. 25, 2014) (holding that the respondent had actual knowledge of the complainant and its rights in the mark, thus demonstrating bad faith registration under Policy ¶ 4(a)(iii), where the respondent was using the disputed domain name to purposely host links related to the complainant’s field of operation). The Panel notes that Complainant provides screenshots of Respondent’s resolving website and highlights the rotating hyperlinks for, among other things, “police dept” and “cost of life alert service”. See Compl. Annex 2. Therefore, the Panel finds Respondent registered the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Thirdly, in addition and having regard to the totality of the evidence, the Panel
finds that, in view of Respondent’s registration of the disputed domain name using the BRAZOS mark and in view of the conduct that Respondent has engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mybrazostech.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: December 15, 2020
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