Bridge33 Capital LLC v. Lora Lacy
Claim Number: FA2308002057299
Complainant is Bridge33 Capital LLC (“Complainant”), represented by Laila S. Wolfgram of POLSINELLI PC, Missouri, USA. Respondent is Lora Lacy (“Respondent”), Indiana, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bridge33caiptaii.com>, registered with Wild West Domains, 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to Forum electronically on August 11, 2023; Forum received payment on August 11, 2023.
On August 16, 2023, Wild West Domains, LLC confirmed by e-mail to Forum that the <bridge33caiptaii.com> domain name is registered with Wild West Domains, LLC and that Respondent is the current registrant of the name. Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, 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 21, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 11, 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@bridge33caiptaii.com. Also on August 21, 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 12, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant, Bridge33 Capital LLC, is a commercial real estate investment firm.
Complainant claims rights to the BRIDGE33 mark through common law.
Respondent’s <bridge33caiptaii.com> domain name is identical or confusingly similar to Complainant’s BRIDGE33 mark as it incorporates the BRIDGE33 mark, adds a misspelling of the term “capital” (a part of Complainant’s entity name) and adds the “.com” generic top-level domain (“gTLD”) to form.
Respondent lacks rights and legitimate interests in the <bridge33caiptaii.com> domain name. Respondent is not commonly known by the at-issue domain name, nor has Complainant licensed or authorized Respondent to use its BRIDGE33 mark in the domain name. Additionally, Respondent does not use the at-issue domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the at-issue domain name to pass itself off as Complainant in furtherance of an email phishing scheme.
Respondent registered and uses the <bridge33capitals.com> domain name in bad faith. Respondent uses the confusingly similar nature of the at-issue domain name to attract users with a false impression of association with Complainant. Respondent’s bad faith may be also demonstrated through its inactive holding of the at-issue domain name. Further, Respondent uses the confusingly similar domain name to send phishing emails. Finally, Respondent registered and uses the <bridge33caiptaii.com> domain name with actual knowledge of Complainant’s rights in the BRIDGE33 mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the BRIDGE33 trademark.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at-issue domain name after Complainant acquired rights in the BRIDGE33 trademark.
Respondent uses the at-issue domain name to facilitate an email phishing scheme.
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 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 at-issue domain name is confusingly similar to a mark in which Complainant has rights.
There is no requirement under the UDRP that a complainant must show registration of a trademark to demonstrate its rights therein. Rights may be shown by persuasive evidence of common law trademark rights in a mark. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark); see also Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA 1625750 (Forum July 17, 2015) (“Complainant does not claim to own a trademark registered with a governmental authority. However, Policy ¶ 4(a)(i) does not require such registration if a complainant can demonstrate having common law rights.”).
Complainant proffers evidence of BRIDGE33 having acquired secondary meaning through public and continuous use of the mark as a business identifier and otherwise. Respondent, having failed to respond to the Complaint, offers no evidence challenging Complainant’s contentions regarding Complainant’s rights in the BRIDGE33 mark. Furthermore as shown elsewhere herein, Respondent’s registration and use of the <bridge33caiptaii.com> mark enables Respondent to deceive third parties into believing that they are dealing with Complainant when they are not. Thus, Respondent surely recognizes that Complainant has rights in the BRIDGE33 mark since Respondent is intent on exploiting the goodwill associated with the BRIDGE33 mark. In light of the foregoing, the Panel concludes that Complainant has acquired trademark rights in BRIDGE33 under Policy ¶ 4(a)(i). See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”).
Respondent’s <bridge33caiptaii.com> domain name is confusingly similar to Complainant’s BRIDGE33 mark. The domain name contains Complainant’s entire trademark followed by the term “caiptaii” with all followed by the “.com” top-level domain name. The differences between the <bridge33caiptaii.com> domain name and Complainant’s BRIDGE33 mark are insufficient to distinguish the domain name from Complainant’s mark for the purposes of the Policy. Therefore, the Panel finds pursuant to Policy ¶ 4(a)(i) that Respondent’s <bridge33caiptaii.com> domain name is confusingly similar to BRIDGE33. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognizable 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.”).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
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 legitimate interests in respect of the at-issue domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”).
The WHOIS information for the at-issue domain name reveals the domain name’s registrant as “Lora Lacy” and the record before the Panel contains no evidence tending to prove that Respondent is commonly known as <bridge33caiptaii.com>. The Panel therefore concludes that Respondent is not commonly known by the <bridge33caiptaii.com> domain name for the purposes of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Respondent’s <bridge33caiptaii.com> domain name is used to host email that pretends to be from Complainant. Respondent’s sham email is ultimately designed to deceive Complainant’s customers into giving up funds or information to Respondent. Such use of the <bridge33caiptaii.com> domain name indicates neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See Microsoft Corporation v. Terrence Green / Whois Agent / Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr. 4, 2016) (finding the respondent’s use of the disputed domain names to send fraudulent emails purportedly from agents of complainant to be neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
Given the forgoing, Complainant satisfies its initial burden and demonstrates Respondent’s lack of rights and lack of legitimate interests in respect of the at-issue domain name under Policy ¶ 4(a)(ii).
As discussed below without limitation, there is evidence that leads the Panel to find that Respondent acted in bad faith pursuant to the Policy.
Respondent used the at-issue domain name, as noted above regarding rights and legitimate interests, in connection with an email based scheme intent on defrauding Complainant’s customers. To wit, Respondent sent emails from <bridge33caiptaii.com> pretending to be initiated by one of Complainant’s employees so as to create the illusion that the recipient was communicating with Complainant. Respondent, cloaked as Complainant, injects itself into email dialog between Complainant and its customers in attempt to have funds meant for Complainant to be directed to Respondent’s account. Respondent’s use of the domain name to afford a phony email address in furtherance of fraud shows Respondent’s bad faith registration and use of the <bridge33caiptaii.com> domain name under Policy ¶¶ 4(b)(iii) and (iv). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the <abbuie.com> domain name to impersonate Complainant’s CEO. Such use is undeniably disruptive to Complainant’s business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii), and/or Policy ¶ 4(b)(iv)”); see also Microsoft Corporation v. Terrence Green / Whois Agent / Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr. 4, 2016) (finding the Respondent’s use of the disputed domain names to send fraudulent emails supported a finding of bad faith registration and use under Policy ¶ 4(b)(iii)).
Moreover, Respondent had actual knowledge of Complainant’s rights in the BRIDGE33 mark when it registered <bridge33caiptaii.com> as a domain name. Respondent’s actual knowledge is evident from Respondent’s use of the <bridge33caiptaii.com> domain name to attempt to pass itself off as Complainant via email and perpetrate fraud as discussed elsewhere herein. Respondent’s registration and use of a confusingly similar domain name with knowledge of Complainant’s rights in such domain name further shows Respondent’s bad faith pursuant to Policy ¶4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bridge33caiptaii.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: September 14, 2023
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