Brink’s Network, Incorporated v. EBMC EMIRATE CONSULTANT
Claim Number: FA2105001947571
Complainant is Brink’s Network, Incorporated (“Complainant”), represented by Brad R. Newberg of McGuireWoods LLP, Virginia, USA. Respondent is EBMC EMIRATE CONSULTANT (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <brinkssierraleone.com>, registered with OwnRegistrar, 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 25, 2021; the Forum received payment on May 25, 2021.
On May 27, 2021, OwnRegistrar, Inc. confirmed by e-mail to the Forum that the <brinkssierraleone.com> domain name is registered with OwnRegistrar, Inc. and that Respondent is the current registrant of the name. OwnRegistrar, Inc. has verified that Respondent is bound by the OwnRegistrar, 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 June 1, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 21, 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@brinkssierraleone.com. Also on June 1, 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 June 23, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson 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, Brink’s Network, Incorporated, is a security services provider. Complainant has rights in the BRINKS mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,313,790 registered Jan. 8, 1985). Respondent’s <brinkssierraleone.com> domain name is confusingly similar to Complainant’s mark since it fully incorporates Complainant’s BRINKS mark, adding the geographic term “sierraleone,” which is associated with Complainant’s business, and the “.com” generic top level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <brinkssierraleone.com> domain name as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use the BRINKS mark. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use because Respondent uses the domain name to pass off as Complainant and offer goods and services that directly compete with Complainant. Respondent also engages in phishing on the resolving website.
Respondent registered and uses the <brinkssierraleone.com> domain name in bad faith because Respondent uses the domain to pass off as Complainant and attract Internet users to Respondent’s website for commercial gain. Furthermore, Respondent’s bad faith is evidenced by Respondent’s operation of a phishing scam. Respondent also has constructive and/or actual knowledge of Complainant’s rights in the BRINKS mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Brink’s Network, Incorporated (“Complainant”), of Richmond, VA, USA. Complainant is the owner of domestic and global registrations fo the mark BRINKS and variations thereof which constitute the BRINKS family of marks. Complainant has used its BRINKS mark continuously since at least as early as 1859 in connection with its provision of cash management, route-based secure logistics, payment solutions, and related goods and services.
Respondent is Ebmc Emirate Consultant (“Respondent”), of Los Angeles, CA, USA. Respondent’s registrar’s address information is not provided. The Panel notes that the <brinkssierraleone.com> domain name was registered on or about June 1, 2020.
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”).
Complainant claims rights in the BRINKS mark through its registration with the USPTO (e.g., Reg. No. 1,313,790 registered Jan. 8, 1985). Registration of a mark with a national trademark agency is 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”).”). The Panel here finds Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <brinkssierraleone.com> domain name is confusingly similar to Complainant’s mark. The disputed domain name fully incorporates Complainant’s BRINKS mark, adding the geographic term “sierraleone,” which is associated with Complainant’s business, and the “.com” gTLD. Adding a geographic term and gTLD to a mark does not distinguish the disputed domain name from the mark, and especially so if the geographic term is associated with the complainant. See Dell Inc. v. SNAB Corporation, FA 1785051 (Forum May 30, 2018) (finding the inclusion of a geographic term did not distinguish the domain name and increased possible confusion, as “[t]he geographic term “hyderabad” is also suggestive of Complainant as Complainant has corporate offices in Hyderabad, India.”); see also Franklin Covey Co. v. franklincoveykorea, FA 1774660 (Forum Apr. 11, 2018) (finding that the <franklincoveykorea.com> domain name is confusingly similar to the FRANKLIN COVEY mark, as “[t]he addition of a geographic term and a gTLD do not negate confusing similarity between a domain name and a mark per Policy ¶ 4(a)(i).”). Complainant notes that the geographic term “sierraleone” is associated with Complainant’s business since Complainant operates in the country Sierra Leone through a subcontractor. The Panel here finds the disputed domain name is identical or confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
Rights or Legitimate Interests
The Panel notes 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 here finds that Complainant has set forth the requisite prima facie case.
Complainant argues that Respondent does not have rights or legitimate interests in the <brinkssierraleone.com> domain name because Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use the BRINKS mark. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the 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). Moreover, lack of authorization to use a mark is further evidence that a respondent is not commonly known by the mark. See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”). Here, the WHOIS information identifies “EBMC EMIRATE CONSULTANT” as the registrant. Complainant asserts that it has not licensed or permitted Respondent to use the BRINKS mark and there is no evidence provided to the contrary to support a finding that Respondent is commonly known by the disputed domain name. The Panel here finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii).
Complainant also argues that Respondent fails to use the <brinkssierraleone.com> domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use because Respondent uses the domain name to pass off as Complainant and offer goods and services that directly compete with Complainant. Use of a disputed domain to pass off and sell products that compete with complainant’s business is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use. See Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Complainant provides screenshots of Complainant’s own website for comparison and Respondent’s website which advertises, promotes, and sells competing goods and services using Complainant’s BRINKS mark. The Panel here finds that Respondent is not using the domain name for 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).
Furthermore, Complainant argues that Respondent does not have rights or legitimate interests in the disputed domain name because Respondent engages in phishing. Previous panels have found that phishing is not indicative of rights and legitimate interests. 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).”). Here, Complainant contends that Respondent engages in phishing as it asks for information and advance payment before supposedly transporting the goods. The Panel here finds that Respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(a)(ii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
The Complainant has proven this element.
Complainant argues that Respondent registered and uses the <brinkssierraleone.com> domain name in bad faith because Respondent uses the domain to pass off as Complainant and attract Internet users to Respondent’s website for commercial gain. Use of a confusingly similar domain name to pass off as a complainant and offer competing goods or services can be evidence of bad faith disruption of a complainant’s business under Policy ¶ 4(b)(iii) and an attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See Fitness International, LLC v. ALISTAIR SWODECK / VICTOR AND MURRAY, FA1506001623644 (Forum July 9, 2015) (“Respondent uses the at-issue domain name to operate a website that purports to offer health club related services such as fitness experts, fitness models, fitness venues, exercise programs, and personal training, all of which are the exact services offered by Complainant. Doing so causes customer confusion, disrupts Complainant’s business, and demonstrates Respondent’s bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iii).”); see also CAN Financial Corporation v. William Thomson / CNA Insurance, FA1401001541484 (Forum Feb. 28, 2014) (finding that the respondent had engaged in bad faith under Policy ¶ 4(b)(iv), by using a confusingly similar domain name to attract Internet users to its own website where it sold competing insurance services); see additionally Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). Here, Complainant contends that since Respondent registered a domain name that not only incorporated Complainant’s BRINKS mark but also the geographic term “sierraleone” which was associated with Complainant’s business, Respondent attempted to pass off as Complainant and divert Internet users. Complainant also provides screenshots of Respondent’s website which features Complainants BRINKS mark and purports to sell competing goods and services. The Panel here finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Additionally, Complainant contends Respondent’s bad faith is evidenced by Respondent’s operation of a phishing scam. Per Policy ¶ 4(a)(iii), phishing for consumers’ information is itself evidence of bad faith. See Morgan Stanley v. Bruce Pu, FA 1764120 (Forum Feb. 2, 2018) (“[T]he screenshot of the resolving webpage allows users to input their name and email address, which Complainant claims Respondent uses that to fraudulently phish for information. Thus, the Panel agrees that Respondent phishes for information and finds that Respondent does so in bad faith under Policy ¶ 4(a)(iii).”); see also 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).”). The Panel again notes Complainant asserts that Respondent phishes for information and advanced payment while purporting to transport goods. The Panel here finds Respondent’s actions indicate bad faith registration and use per Policy ¶ 4(a)(iii).
Complaint also argues that Respondent registered the <brinkssierraleone.com> domain name with actual knowledge of Complainant’s rights in the BRINKS mark, based on Respondent’s use of Complainant’s mark and logo on the resolving website to offer competing goods and services. Registration with actual knowledge of a complainant’s trademark rights is sufficient to establish bad faith and may be demonstrated by a respondent’s use of the complainant’s logo and trademark on the website and making competing offers. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”). Complainant argues Respondent must have been well aware of Complainant’s rights in the BRINKS mark since Respondent purports to offer goods and services under the BRINKS mark and in the same geographic area. The Panel here finds that Respondent had actual knowledge of Complainant’s rights in the BRINKS mark and thus engaged in find bad faith registration and use pursuant to Policy ¶ 4(a)(iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
DECISION
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <brinkssierraleone.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: July 7, 2021
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