Brown Brothers Harriman & Co. v. Evgeniya Shipilova
Claim Number: FA2305002042583
Complainant is Brown Brothers Harriman & Co. (“Complainant”), represented by Allen J. Baden of Baden Law Firm PC, Texas, USA. Respondent is Evgeniya Shipilova (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bbhgroups.com> (“Domain Name”), registered with GoDaddy.com, LLC.
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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to Forum electronically on May 1, 2023; Forum received payment on May 1, 2023.
On May 2, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the <bbhgroups.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 May 3, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 23, 2023 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@bbhgroups.com. Also on May 3, 2023, 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 formal response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On May 24, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Nicholas J.T. Smith as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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 was founded in 1818 and serves clients internationally in investor services, investment management and private banking. Complainant has rights in the BBH mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,594,867, registered on March 24, 2009). Respondent’s <bbhgroups.com> domain name is identical or confusingly similar to Complainant’s BBH mark as it merely adds the generic word “groups” and the “.com” generic top-level-domain ("gTLD").
Respondent lacks rights or legitimate interests in the <bbhgroups.com> domain name. Respondent is not commonly known by the Domain Name, nor has Respondent been authorized by Complainant to use the BBH mark. Respondent has not used the Domain Name in connection with a bona fide offering of goods or services as Domain Name resolves to a webpage (“Respondent’s Website”) that appears to offer competing services to Complainant.
Respondent registered and uses the <bbhgroups.com> domain name in bad faith. Respondent’s website disrupts Complainant’s business as Respondent registered the Domain Name to confuse or mislead users as to Respondent’s affiliation with Complainant. Additionally, Respondent’s opportunistic bad faith is evidenced by Respondent using the Domain Name that contains Complainant’s well-known mark with the addition of the generic term “groups.” Finally, Respondent had actual knowledge of Complainant’s rights to the BBH mark prior to registering the Domain Name.
B. Respondent
Respondent failed to submit a formal Response in this proceeding. On May 3, 2023 Respondent sent an e-mail suggesting that it was prepared to take down the Respondent’s Website and transfer the Domain Name in exchange for funds to cover its expenses. She stated that her firm designs websites and the Respondent’s Website was a showcase website depicting a fictional organization to be displayed to clients in the banking/investment community and there was no bad intent in the registration or use of the Domain Name.
Respondent provided no documentation to support the claims made in her e-mail, including the nature of her business and the reasoning behind the registration of the Domain Name and creation of the Respondent’s Website.
Further communication between the parties took place however in the absence of a settlement between the parties or a clear statement that Respondent consents to a transfer of the Domain Name without conditions (such as payment of its expenses) it is necessary to consider the elements of the Policy in deciding this matter.
Complainant holds trademark rights for the BBH mark. The Domain Name is confusingly similar to Complainant’s BBH mark. Complainant has established that Respondent lacks rights or legitimate interests in the Domain Name and that Respondent registered and has used the Domain Name 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:
(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 has rights in the BBH mark through its registration of the mark with the USPTO (e.g., Reg. No. 3,594,867, registered on March 24, 2009). Registration with the USPTO can sufficiently establish rights in a mark under Policy ¶ 4(a)(i). See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a national trademark authority).
The Panel finds that the <bbhgroups.com> domain name is confusingly similar to Complainant’s BBH mark because it wholly incorporates Complainant’s BBH mark and adds the generic term “groups” and the gTLD “.com.” Adding a generic term and a gTLD to a mark to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”); see also Dell Inc. v. pushpender chauhan, FA 1784548 (Forum June 11, 2018) (“Respondent merely adds the term ‘supports’ and a ‘.org’ gTLD to the DELL mark. Thus, the Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s DELL mark per Policy ¶ 4(a)(i).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first 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, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the BBH mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS lists “Evgeniya Shipilova” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).
The Domain Name is presently inactive but prior to the commencement of the proceeding redirected to the Respondent’s Website where Respondent purported to offer financial services including asset management to the public under the BBH mark. The Complainant also offers identical services to the public under its BBH mark which is well-known and registered in numerous jurisdictions, including Australia, the location of Respondent. The use of a confusingly similar domain name to redirect to a competing website does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use of the name under Policy ¶¶ 4(c)(i) or (iii). See 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).”). See also Coryn Group, Inc. v. Media Insight, FA 198959 (Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii). The Respondent has asserted in an informal e-mail that it operates a website design business and registered the Domain Name (and created the Respondent’s Website) as an example of its web design skills. The mere assertion of good faith intent, absent any supporting evidence (such as evidence of Respondent’s business and use of the Respondent’s Website to market Respondent’s skills to customers) is not sufficient to satisfy the burden on the Respondent to show that it does have rights or legitimate interests in the Domain Name. This is particularly the case given the use of the Domain Name to purportedly advertise services in direct competition with Complainant under Complainant’s well-known mark.
The Panel finds on the balance of probabilities that, at the time Respondent registered the Domain Name, April 14, 2023, Respondent had actual knowledge of Complainant’s BBH mark since the Complainant is a well-known entity and the Respondent’s Website offered financial services and asset management services, the same services offered by Complainant. Furthermore, Respondent failed to expressly state that she registered the Domain Name unaware of Complainant and provides no supporting evidence for her assertion that she lacked bad faith intent when registering a domain name that incorporates the BBH mark and using it for a website purporting to the exact services offered by Complainant under the same BBH mark. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and uses the Domain Name in bad faith as Respondent uses the Domain Name to redirect Internet users to Respondent’s Website where Respondent purports to offer services in direct competition with Complainant. Using a confusingly similar domain name to divert Internet users to a respondent’s competing website can show bad faith registration and use per Policy ¶ 4(b)(iii). See ZIH Corp. v. ou yang lin q, FA1761403 (Forum Dec. 29, 2017) (finding bad faith where the respondent used the infringing domain name to disrupt the complainant’s business by diverting Internet users from the complainant’s website to the respondent’s website where it offered competing printer products). Accordingly, the Panel finds that Respondent registered and uses the Domain Name in bad faith pursuant to Policy ¶ 4(b)(iii).
The Panel finds 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 <bbhgroups.com> domain name be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: May 24, 2023
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