Brink’s Network, Incorporated v. Joshua Belkin
Claim Number: FA2103001937520
Complainant is Brink’s Network, Incorporated (“Complainant”), represented by Brad R. Newberg of McGuireWoods LLP, Virginia, USA. Respondent is Joshua Belkin (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <brinkssecurity-guinea.com> and <brinks-guinea.com>, registered with Namecheap, Inc.
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 March 22, 2021; the Forum received payment on March 22, 2021.
On April 15, 2021, Namecheap, Inc confirmed by e-mail to the Forum that the <brinkssecurity-guinea.com> and <brinks-guinea.com> domain names are registered with Namecheap, Inc and that Respondent is the current registrant of the names. 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 20, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 10, 2021 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@brinkssecurity-guinea.com, postmaster@brinks-guinea.com. Also on April 20, 2021, 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 12, 2021, 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant, Brink’s Network Incorporated, is a global leader in total cash management, route-based secure logistics and payment solutions, and cash management services. Complainant has rights in the BRINKS mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. 2,582,146, registered June 18, 2002). See Compl. Ex. B. Respondent’s <brinkssecurity-guinea.com> and <brinks-guinea.com> domain names are confusingly similar to Complainant’s BRINKS mark since each contains the entire mark, appending the terms “security” and/or “Guinea” and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <brinkssecurity-guinea.com> and <brinks-guinea.com> domain names as it is not commonly known by the disputed domain names and is not licensed to use the BRINKS mark. Additionally, Respondent does not use the disputed domain names for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use. Instead, Respondent diverts Internet traffic to its website, where it offers competing goods and services. Respondent also operates a phishing scam at the resolving webpages.
Respondent registered and uses the <brinkssecurity-guinea.com> and <brinks-guinea.com> domain names in bad faith. Respondent trades off Complainant’s trademark rights to offer competing goods and services. Respondent also operates a phishing scam in connection with the disputed domains. Additionally, Respondent registered the disputed domain names with actual knowledge of Complainant’s rights in the BRINKS mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is a global leader in total cash management, route-based secure logistics and payment solutions, and cash management services.
2. Complainant has established its trademark rights in the BRINKS mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. 2,582,146, registered June 18, 2002).
3. Respondent registered the <brinkssecurity-guinea.com> domain name on July 18, 2019 and the <brinks-guinea.com> domain name on February 24, 2020.
4. Respondent uses the domain names to divert Internet traffic to its website, where it offers competing goods and services and to operate a phishing scam at the resolving webpages.
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 rights in the BRINKS mark through its registration with the USPTO. Registration of a mark with a trademark agency such as the USPTO is generally sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).”). Complainant provides evidence of registration with the USPTO (e.g. Reg. 2,582,146, registered June 18, 2002). See Compl. Ex. B. Therefore, the Panel finds Complainant has rights in the mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s BRINKS mark. Complainant argues that Respondent’s <brinkssecurity-guinea.com> and <brinks-guinea.com> domain names are confusingly similar to Complainant’s BRINKS mark since they contain the entire mark, appending the terms “security” and/or “guinea” and the “.com” gTLD. Addition of generic, descriptive, and/or geographic terms and a gTLD is generally insufficient to negate confusing similarity between a domain name and the mark it incorporates per Policy ¶ 4(a)(i). See Ant Small and Micro Financial Services Group Co., Ltd. v. Ant Fin, FA 1759326 (Forum Jan. 2, 2018) (“Respondent’s <antfinancial-investorrelations.com> Domain Name is confusingly similar to Complainant’s ANT FINANCIAL mark. It incorporates the mark entirely. It adds a hyphen, the descriptive terms “investor relations,” and the “.com” gTLD, but these additions are insufficient to distinguish the Domain name from complainant’s mark for the purposes of Policy ¶ 4(a)(i).”); see also Ticketmaster Corp. v. Kumar, FA 744436 (Forum Aug. 17, 2006) (finding that the <indiaticketmaster.com> domain name was confusingly similar to the complainant’s TICKETMASTER mark). Therefore, the Panel finds the disputed domain names are identical or confusingly similar to Complainant’s BRINKS mark under 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”).
(a) Respondent has chosen to take Complainant’s BRINKS trademark and to use it in its domain names, adding the terms “security” and/or “guinea” which do not negate the confusing similarity between the domain names and the trademark;
(b) Respondent registered the <brinkssecurity-guinea.com> domain name on July 18, 2019 and the <brinks-guinea.com> domain name on February 24, 2020;
(c) Respondent uses the domain names to divert Internet traffic to its website, where it offers competing goods and services and to operate a phishing scam at the resolving webpages;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant submits that Respondent lacks rights and legitimate interests in the <brinkssecurity-guinea.com> and <brinks-guinea.com> domain names as it is not commonly known by the disputed domain names and is not licensed to use the BRINKS mark. When no response is submitted, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name under Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute). Additionally, lack of authorization to use a mark further evidences that a respondent lacks rights and legitimate interests in the mark. 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). Here, the WHOIS information of record identifies the registrant as “Joshua Belkin” and nothing in the record rebuts Complainant’s assertion that it never authorized Respondent to use the BRINKS mark in the disputed domain names. See Amend. Compl. Ex. A. Therefore, the Panel finds Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent does not use the <brinkssecurity-guinea.com> and <brinks-guinea.com> domain names for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use, but instead diverts Internet traffic to its website, where it offers competing goods and services. Use of a disputed domain name to redirect Internet users to a competing webpage is not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Invesco Ltd. v. Premanshu Rana, FA 1733167 (Forum July 10, 2017) (“Use of a domain name to divert Internet users to a competing website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.”). Complainant provides a screenshot of the resolving webpage at the disputed domain names, noting that Respondent falsely suggests affiliation with Complainant and purports to offer for sale goods and services that compete directly with Complainant. See Compl. Ex. D. Thus, the Panel agrees that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶¶ 4(c)(i) and (iii);
(g) Complainant also argues that Respondent operates a phishing scam at the resolving webpages. Use of a disputed domain name in connection with phishing suggests that a respondent lacks rights and legitimate interests in a disputed domain name under Policy ¶ 4(a)(ii). See Morgan Stanley v. Zhange Sheng Xu / Zhang Sheng Xu, FA1501001600534 (Forum Feb. 26, 2015) (“The Panel agrees that the respondent’s apparent phishing attempt provides further indication that the respondent lacks any rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”). Complainant provides screenshots of Respondent’s webpages as well as a service contract claiming that Respondent’s request for advance payment from consumers constitutes phishing. See Compl. Exs. D & E. As the Panel agrees, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain names per Policy ¶ 4(a)(ii).
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 has no rights or legitimate interests in the disputed domain names.
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 names were registered in bad faith and have 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 names were registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and uses the <brinkssecurity-guinea.com> and <brinks-guinea.com> domain names in bad faith because Respondent trades off Complainant’s trademark rights to offer competing goods and services. Use of a disputed domain name to pass off as and compete with a complainant is evidence of bad faith disruption of business pursuant to Policy ¶ 4(b)(iii). See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). As previously noted, Complainant provides a screenshot of the resolving webpage at the disputed domain names, noting that Respondent falsely suggests affiliation with Complainant and purports to offer for sale goods and services that compete directly with Complainant. See Compl. Ex. D. The Panel therefore finds Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(b)(iv).
Secondly, Complainant argues that Respondent operates a phishing scam in connection with the <brinkssecurity-guinea.com> and <brinks-guinea.com> domain names. Phishing activities evidence bad faith under Policy ¶ 4(a)(iii). See Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA1506001625750 (Forum July 17, 2015) (“Respondent uses the <klabzuba-oilgas.com> domain to engage in phishing, which means Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).”). Complainant provides screenshots of Respondent’s webpages as well as a service contract claiming that Respondent’s request for advance payment from consumers constitutes phishing. See Compl. Exs. D & E. As the Panel agrees, the Panel finds bad faith pursuant to Policy ¶ 4(a)(iii).
Thirdly, Complainant submits that Respondent registered the <brinkssecurity-guinea.com> and <brinks-guinea.com> domain names with actual knowledge of Complainant’s rights in the BRINKS mark. Per Policy ¶ 4(a)(iii), actual knowledge of a Complainant’s trademark rights is sufficient to establish bad faith and can be demonstrated by the fame of the mark and the use the respondent makes of the domain name. See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Complainant argues that Respondent must have had actual knowledge of Complainant’s right in the BRINKS mark since it fully incorporated the mark in the disputed domain names and used the domain names to compete with Complainant. As the Panel agrees that actual knowledge is present, it finds bad faith pursuant to Policy ¶ 4(a)(iii).
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 <brinkssecurity-guinea.com> and <brinks-guinea.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: May 13, 2021
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