Beacon Capital Partners, LLC v. Gary Rynhoud / Beacon Capital Advisory Solutions / Delince Louis / Beacon Realty Partners, LLC
Claim Number: FA2308002057022
Complainant is Beacon Capital Partners, LLC (“Complainant”), represented by Robert M. O’Connell, Jr. of Orrick, Herrington & Sutcliffe LLP, Massachusetts, USA. Respondent is Gary Rynhoud / Beacon Capital Advisory Solutions / Delince Louis / Beacon Realty Partners, LLC (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <beaconcapitaladvisory.com> and <beaconrealtypartners.com> (the “disputed domain names”), registered with Google LLC (the “Registrar”).
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.
Lynda M. Braun as Panelist.
Complainant submitted a Complaint to Forum electronically on August 10, 2023; Forum received payment on August 10, 2023.
On August 10, 2023, the Registrar confirmed by e-mail to Forum that the <beaconcapitaladvisory.com> and <beaconrealtypartners.com> disputed domain names are registered with Google LLC and that Respondent is the current registrant of the names. The Registrar has verified that Respondent is bound by the Google 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 August 17, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 6, 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@beaconcapitaladvisory.com and postmaster@beaconrealtypartners.com. Also on August 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 September 7, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Lynda M. Braun 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 disputed domain names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: CONSOLIDATION OF MULTIPLE RESPONDENTS
In the instant proceedings, Complainant has alleged that the Respondent entities which control the disputed domain names at issue are effectively controlled by the same individual and/or entity and therefore, are appropriate Respondents in this proceeding. Paragraph 3(c) of the Rules provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” In addition, Paragraph 4(f) of the Policy provides that “[i]n the event of multiple disputes between you and a complainant, either you or the complainant may petition to consolidate the disputes before a single Administrative Panel.” This is allowed where it “promotes the shared interests of the parties in avoiding unnecessary duplication of time, effort and expense, reduces the potential for conflicting or inconsistent results arising from multiple proceedings, and generally furthers the fundamental objectives of the Policy.” UDRP Panels have looked to a variety of factors in determining whether multiple domains are, in fact, of common ownership. Such factors as similar naming conventions, similar website content and IP addresses, as well as similarities in some of the WhoIs information, for instance, may lead to the conclusion that domain names with differing WhoIs information are, nevertheless, owned by a single entity. See WIPO Case No. D2014-0474, Delta Dental Plans Association v. ICS INC., et al. (consolidation of 31 domains allowed where “[t]he Panel notes that each of the disputed domain names follows an identical naming convention).
Here, the disputed domain names are similar to one other and were registered within days of each other. Both disputed domain names were registered with the same Registrar, use the same privacy shield, use the same naming convention, and were registered under the same Customer Number. Previous UDRP panels have found common ownership on similar facts. See Chevron Intellectual Property LLC v. NAMES REDACTED, FA 1907869 (Forum Sept. 16, 2020) (disputed domains registered within approximately two months of each other using same registrar and privacy shield); Skechers U.S.A. v. Eggers, FA 1888651 (Forum Apr. 10, 2020) (domains contain same dominant term, were registered the same week using the same registrar); and Eli Lilly & Co. v. Michael, FA 1638884 (Forum Dec. 10, 2015) (domains incorporate the trademark followed by generic wording, were registered using same registrar and name server).
Thus, the Panel finds that the aforementioned facts present a compelling case for consolidation. Complainant should not be forced to expend time, effort and money filing duplicative proceedings against Respondents in this proceeding whose disputed domain names use the same privacy services, customer number, domain naming convention, and were registered within days of each other. In sum, the Panel concludes that consolidation of multiple respondents is appropriate in this case.
A. Complainant
Complainant is a leading real estate firm. Since 1946, Complainant and its predecessor company Beacon Properties Corporation have developed and managed dozens of high-profile properties in many major markets throughout the United States and Europe. Currently, Complainant entities hold more than sixty office and life-science properties in major markets across the United States totaling over 29 million square feet, and over 14 billion USD of assets under management. Complainant is a real estate investment trust, so in addition to offering real estate leasing and management services to its tenants, it also offers investment management services to its investors.
Complainant owns United States trademark registrations for numerous trademark registrations, including registrations in the United States, through the United States Patent and Trademark Office (“USPTO”) (e.g., BEACON CAPITAL PARTNERS, United States Registration No. 3,260,333, registered on July 10, 2007, in international class 36). Complainant also owns registrations for the BEACON CAPITAL PARTNERS trademarks in Australia, Canada, the European Community and twelve other jurisdictions.
The foregoing trademarks will hereinafter collectively be referred to as the “BEACON CAPITAL PARTNERS Mark”.
B. Respondent
Respondent failed to submit a formal Response in this proceeding, although on August 24, 2023, Respondent filed a letter Response. The letter stated that Respondent registered the disputed domain name <beaconcapitaladvisory.com> because it was available through the Google Registrar but denied that he had anything to do with registering or using the disputed domain name <beaconrealtypartners.com>.
On August 21, 2023, Respondent also composed an email to Kelsey T of Forum, which stated:
Dear Kelsey,
Please confirm if you may be free for a call to try and resolve this issue.
I am 100% to "give up" the domain name under contention. I applied for a google address, for an email account, via their website and that website was confirmed as available.
Thanks and regards
Gary
The Panel finds that Complainant has registered trademark rights in the BEACON CAPITAL PARTNERS Mark as described above. The Panel also finds that the disputed domain names are confusingly similar to the Complainant’s BEACON CAPITAL PARTNERS Mark, that Respondent has no rights or legitimate interests in respect of the disputed domain names, and that the disputed domain names were registered and are being used in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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 disputed domain name should be cancelled or transferred:
(1) the disputed 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 disputed domain name; and
(3) the disputed domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a formal 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 Panel finds that the disputed domain name is confusingly similar to the BEACON CAPITAL PARTNERS Mark as set forth below.
The Panel finds that Complainant has rights in the BEACON CAPITAL PARTNERS Mark per Policy paragraph 4(a)(i) through its registration of the mark with the USPTO (e.g., BEACON CAPITAL PARTNERS, United States Registration No. 3,260,333, registered on July 10, 2007, in international class 36), as well as with other trademark offices worldwide. Registration of a mark with multiple trademark agencies is sufficient to establish rights in a mark pursuant to Policy paragraph 4(a)(i). See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sep. 4, 2018) (“Complainant has rights in the GMAIL mark based upon its registration of the mark with numerous trademark agencies around the world.”).
The Panel further finds that Respondent’s disputed domain name <beaconcapitaladvisory.com> is confusingly similar to Complainant’s BEACON CAPITAL PARTNERS Mark as it consists of the entirety of Complainant’s trademark followed by the term “advisory”, omitting the term “partners”, and then followed by the gTLD “.com”. Moreover, the Panel finds that Respondent’s disputed domain name <beaconrealtypartners.com> is confusingly similar to Complainant’s BEACON REALTY PARTNERS Mark as it consists of the entirety of Complainant’s trademark followed by the term “realty”, omitting the terms “capital” and “partners”, and then followed by the gTLD “.com”. The addition of a term and a gTLD fail to distinguish a disputed domain name from a trademark per Policy paragraph 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (confusing similarity exists where a disputed domain name contains a complainant’s entire mark and differs only by the addition of a term and gTLD; the differences between the domain name and its incorporated trademark are insufficient to differentiate one from the other for purposes of the Policy).
Similarly, gTLDs are irrelevant for purposes of a Policy paragraph 4(a)(i) analysis. The disputed domain names include Complainant’s Mark in its entirety and then simply add a term, followed by the “.com” gTLD. Given that Respondent’s disputed domain names merely add a term and a gTLD to Complainant’s Mark, the Panel concludes they are confusingly similar to Complainant’s Mark under Policy paragraph 4(a)(i).
Accordingly, the Panel finds that Policy paragraph 4(a)(i) has been established by Complainant.
The Panel finds that Respondent holds no rights or legitimate interests in the disputed domain names. Under the Policy, Complainant is required to make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain names. Once such a prima facie case is made, Respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain names. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy paragraph 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 Respondent did not carry its burden to come forward with evidence of its rights or legitimate interests in the disputed domain names. In support, the Panel finds that Respondent is not commonly known by the disputed domain names or any name similar to them, nor has Complainant authorized or licensed Respondent to use its BEACON CAPITAL PARTNERS Mark in the disputed domain names. In addition, Respondent does not use the disputed domain names for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use.
Moreover, under Policy paragraphs 4(c)(i) and (iii), using a disputed domain name and its resolving website to resolve to a page that hosts and distributes malware does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy paragraphs 4(c)(i) or (iii). See Coachella Music Festival, LLC v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1785199 (Forum June 5, 2018) (“Respondent uses the <coachella.com> domain name to direct Internet users to a website which is used to attempt to install malware on visiting devices. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy paragraph 4(c)(i), nor a non-commercial or fair use under Policy paragraph 4(c)(iii).”).
In addition, Respondent fails to use the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use and instead inactively holds the disputed domain names. Under Policy paragraphs 4(c)(i) and (iii), failure to make active use of disputed domain names is not a legitimate noncommercial or fair use. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy paragraph 4(c)(i) or Policy paragraph 4(c)(iii) where it failed to make an active use of the domain name).
In short, there is no evidence that Respondent is using or is planning to use the disputed domain names for a bona fide offering of goods or services, nor is Respondent commonly known by the disputed domain names or making any legitimate noncommercial or fair use of the disputed domain names. Accordingly, the Panel concludes that Respondent cannot establish any rights or legitimate interests in the disputed domain names.
Accordingly, the Panel finds that Policy paragraph 4(a)(ii) has been established by Complainant.
Registration and Use in Bad Faith
The Panel finds that, based on the record, the Complainant has demonstrated the existence of Respondent’s bad faith registration and use pursuant to paragraph 4(b) of the Policy.
First, the use of disputed domain names to intentionally attempt to attract Internet users to a respondent’s websites or online locations by creating a likelihood of confusion or a false association with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website or online location demonstrates registration and use in bad faith. See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006).
Second, the Panel finds that Respondent was using the disputed domain names in bad faith as Respondent was distributing malware on the disputed domain names’ resolving webpages. Registering disputed domain names to divert Internet users to resolving webpages that host and distribute malware is evidence of bad faith under Policy paragraph 4(b)(iv). See Google, Inc. v. Petrovich, FA 1339345 (Forum Sept. 23, 2010) (finding that a disputed domain name which resolves to a landing page that distributes malware to Internet users’ computers demonstrates Respondent’s bad faith under Policy paragraph 4(b)(iv)).
Third, the Panel concludes that Respondent registered and is using the disputed domain names in bad faith because the domains resolve to inactive landing pages. Failure to make active use of disputed domain names is evidence of bad faith under Policy paragraph 4(a)(iii). See Marsh Supermarkets Company, LLC, formerly known as Marsh Supermarkets, Inc. v. Choi Sungyeon, FA 1532854 (Forum Feb. 25, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <marshsupermarkets.com> domain name in bad faith pursuant to Policy paragraph 4(a)(iii) because Respondent has failed to make an active use of the disputed domain name.”).
Finally, the Panel finds that Respondent registered and used the disputed domain names in bad faith because Respondent registered the disputed domain names with actual knowledge of Complainant's rights in the BEACON CAPITAL PARTNERS Mark. Actual knowledge of a complainant’s mark prior to registering disputed domain names is sufficient to establish bad faith under Policy paragraph 4(a)(iii). It strains credulity to think that Respondent did not have actual knowledge of Complainant’s BEACON CAPITAL PARTNERS Mark. Prior knowledge of a complainant’s trademark and use of disputed domain names that incorporate the trademark is sufficient to find bad faith under Policy paragraph 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (finding actual knowledge due to the domain name chosen and the use made of it); Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s mark at the time of registration).
Accordingly, the Panel finds that Policy paragraph 4(a)(iii) has been established by Complainant.
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <beaconcapitaladvisory.com> and <beaconrealtypartners.com> disputed domain names be TRANSFERRED from Respondent to Complainant.
Lynda M. Braun, Panelist
Dated: September 17, 2023
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