Brown Brothers Harriman & Co. v. Domain Administrator / PrivacyGuardian.org llc
Claim Number: FA2307002053069
Complainant is Brown Brothers Harriman & Co. (“Complainant”), represented by Allen J. Baden of Baden Law Firm PC, Texas, USA. Respondent is Domain Administrator / PrivacyGuardian.org llc (“Respondent”), Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bbhpoll.top>, registered with NameSilo, LLC.
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.
Richard Hill as Panelist.
Complainant submitted a Complaint to Forum electronically on July 13, 2023; Forum received payment on July 13, 2023.
On July 13, 2023, NameSilo, LLC confirmed by e-mail to Forum that the <bbhpoll.top> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 July 17, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 7, 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@bbhpoll.top. Also on July 17, 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 response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On August 8, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Richard Hill 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 states that it is a New York limited partnership, founded in 1818, and commonly referred to and operating under the BBH trade name and trademark since at least as early as 1958. Complainant employs over 5500 professionals in eighteen offices in North America, Europe and Asia. Complainant serves clients globally in three primary business areas: investor services, investment management and private banking. Complainant’s customers include financial institutions, mutual funds, pension funds, sovereign wealth funds, not-for-profit entities, trusts, family offices and high net worth individuals. In 1998, Complainant was the 9th largest global custodian at (U.S.) $295 Billion in custodial assets. By 2001, Complainant had (U.S.) $900 Billion in custodial assets, making it the 7th largest custodian worldwide. Two-thirds of these assets were outside the United States, as Complainant offers services under the BBH mark through 135 banks in 104 markets. In 2003, Complainant was ranked the 9th largest global custodian. In 2004, Complainant was ranked the 10th largest global custodian. By 2007, Complainant had (U.S.) $1.7 Trillion in assets in custody; of that $1.7 Trillion, global custodies make up 81%. In 2011, Complainant was the 31st largest wealth management firm in the United States with (U.S.) $11.1 Billion in United States private client assets. Today, Complainant has approximately (U.S.) $4.1 Trillion in assets in custody. Complainant’s customers, competitors and the financial markets are familiar with Complainant’s BBH trade name and trademark. Complainant owns the domain name <BBH.com>, which it registered July 30, 1995. Complainant asserts rights in the BBH mark through its registration in the United States in 2009. The mark is registered elsewhere around the world and it is famous.
Complainant alleges that the disputed domain name is confusingly similar to its BBH mark because it incorporates the mark in its entirety and merely adds the generic/descriptive term “poll” and the “.top” generic top-level domain (“gTLD”).
According to Complainant, Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed respondent to use its mark in any way. Respondent does not use the disputed domain name for a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. Instead, the disputed domain name resolves to an impostor website consisting of three pages: a Homepage, a Rules page, a Rankin (sic) page, all describing a contest to select the top three (out of five choices) most popular Complainant employees, with the winner of “your precious vote … to receive a $500 million manipulation fund from Brown Brothers Harriman & Co.” In addition to the site describing Complainant as the organizer of the contest (it is not!), the site identifies UOB Fund, TEMASEK Private Equity Fund and Nomura Global Fund as “co-organizers.” Complainant believes none of these entities know of the contest or are affiliated with Respondent or the fictional contest hosted on Respondent’s website. The title of the homepage for the resolving website is “2023 Brown Brothers Harriman & Co. Stock Analysis Final Top 3 Ranking Race” and uses photographs of five of Complainant’s employees along with excerpts from their biographies stolen from Complainant’s website. The contest described on the resolving website is a fiction. There is also a real and significant risk Respondent is using or will use the disputed domain name for phishing or other unlawful purposes.
Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith. Respondent is impersonating Complainant and creating a false sense of affiliation, thus consumer creating confusion. Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in its BBH mark. Respondent used a privacy service.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the mark BBH and uses it to provide investment and banking services.
Complainant’s rights in its mark date back to at least 2009.
The disputed domain name was registered in 2023.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
Respondent uses the disputed domain name to pass off as Complainant: the resolving website describes a competition purportedly organized by Complainant, which is not the case; it displays Complainant’s business name, and photographs and biographies of some of Complainant’s actual employees.
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 disputed domain name incorporates Complainant’s BBH mark in its entirety and merely adds the generic/descriptive term “poll” and the “.top” generic top-level domain (“gTLD”). Under Policy ¶ 4(a)(i), adding a descriptive or generic term and a gTLD to a mark is insufficient in differentiating the domain name from the mark. See Empowered Medical Solutions, Inc. d/b/a QRS-Direct and QRS Magnovit AG v. NULL NULL / QUANTRON RESONANCE SYSTEMS / JIM ANDERSON / HTR / unknown HTR / HTR, FA 1784937 (Forum June 8, 2018) (“Adding or removing descriptive terms or a gTLD is insufficient to differentiate a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i).”); see also MTD Products Inc v J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”). Therefore the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has not licensed or otherwise authorized Respondent to use its mark. Respondent is not commonly known by the disputed domain name: under Policy ¶ 4(c)(ii), relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name. See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sept. 4, 2018) (concluding that Respondent was not commonly known by the disputed domain name where “the WHOIS of record identifies the Respondent as “Bhawana Chandel,” and no information in the record shows that Respondent was authorized to use Complainant’s mark in any way.”). Here, the WHOIS record identifies the registrant of the disputed domain name as “Domain Administrator / PrivacyGuardian.org llc”. Therefore the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant presents evidence showing that Respondent uses the disputed domain name to pass off as Complainant: the resolving website describes a competition purportedly organized by Complainant, which is not the case; it displays Complainant’s business name, and photographs and biographies of some of Complainant’s actual employees. Under Policy ¶¶ 4(c)(i) and (iii), using a disputed domain name to pass off as a Complainant does not constitute a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (“In effect, Respondent attempted to pass itself off as Complainant online. Such blatant unauthorized use of Complainant’s mark is evidence that Respondent has no rights or legitimate interests in the disputed domain name”); see also Choice Hotels International, Inc. v. Hotel Partners a/k/a eGO Inc., FA 190506 (Forum Oct. 6, 2003) (“Respondent’s attempt to pass itself off as Complainant at the disputed domain name, without authorization or license by Complainant . . . is evidence that Respondent lacks rights or legitimate interests in the disputed domain name”); see also Bloomberg L.P v. Bloomberg Realty (India) Private Limited, FA 1439263 (Forum May 30, 2012) (“Use of a domain name which intentionally trades on the fame of another cannot constitute a bona fide offering of goods and services.”). Therefore the Panel finds that Respondent fails to use the disputed domain name to make a bona fide offering of goods or services, or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). And the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, as already noted, Respondent uses the disputed domain name to pass off as Complainant. Under the Policy, using a disputed domain name to take advantage of the confusing similarity between the domain name and the mark is evidence of bad faith registration and use. See Carey Int’l, Inc. v. Kogan, FA 486191 (Forum July 29, 2005) (“[T]he Panel finds that Respondent is capitalizing on the confusing similarity of its domain names to benefit from the valuable goodwill that Complainant has established in its marks. Consequently, it is found that Respondent registered and used the domain names in bad faith”); see also Fossil, Inc. v. www.fossil-watch.org c/o Host Master, FA 335513 (Forum Nov. 9, 2004) (“Respondent’s use of the disputed domain name to pass itself off as Complainant is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii)”). Therefore the Panel finds that Respondent registered and uses the disputed domain name in bad faith under the Policy.
Further, Respondent registered the disputed domain name with actual knowledge of Complainant’s mark: the resolving website displays Complainant’s business name and photographs and biographies of some of Complainant’s actual employees. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant’s rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also 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 Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to Respondent’s registration of the disputed domain name and that this constitutes bad faith under 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 <bbhpoll.top> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: August 8, 2023
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