DECISION

 

Brown Brothers Harriman & Co. v. Alvaro Rodriguez Espinosa / PERSONA FISICA CON ACTIVIDAD EMPRESARIAL

Claim Number: FA2312002075619

 

PARTIES

Complainant is Brown Brothers Harriman & Co. ("Complainant"), represented by Allen J. Baden of Baden Law Firm PC, Texas, USA. Respondent is Alvaro Rodriguez Espinosa / PERSONA FISICA CON ACTIVIDAD EMPRESARIAL ("Respondent"), Mexico.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <bbhbank.com>, registered with GoDaddy.com, LLC.

 

PANEL

The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Luz Helena Villamil Jimenez as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on December 18, 2023; Forum received payment on December 18, 2023.

 

On December 18, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the <bbhbank.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 December 19, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 8, 2024 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@bbhbank.com. Also on December 19, 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.

 

A timely Response was received and determined to be complete on January 8, 2024.

 

On January 9, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Luz Helena Villamil Jimenez 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.       Complainant

 

Complainant's assertions are summarized as follows:

Complainant, Brown Brothers Harriman & Co., was founded in 1818, and operates under the trade name and trademark BBH since at least as early as 1958. Complainant is a privately held financial services firm serving clients globally in three primary business areas: investor services, investment management and private banking.

 

Complainant owns the domain name <bbh.com>, which it registered on July 30, 1995 and which resolves as Complainant's website at www.bbh.com. Complainant owns several active registrations for the trademarks and service marks BBH.

 

Complainant's customers include financial institutions, mutual funds, pension funds, sovereign wealth funds, not-for-profit entities, trusts and high net worth individuals located worldwide. Complainant's customers, competitors and the financial services market are familiar with

Complainant's BBH trade name and trademark.

 

The core of Complainant's operations is finance and banking operations. Almost without exception, a search for the terms "BBH" and "Bank" on Google produces links to Complainant and its products and services.

 

As a financial and banking services institution, Complainant's activities are governed by and subject to strict regulatory requirements in each country in which it operates. A fundamental purpose of those regulatory requirements is to preserve the integrity of the world financial

markets and to protect the public. Thus, it is not only important for Complainant to protect its name and reputation, but also for world financial markets and customers to trust and rely on Complainant's integrity and the goodwill represented by its name and trademark.

 

Several facts and evidences demonstrate Complainant's significant and widely known reputation under the BBH trade name and trademark for the goods and services it provides.

Complainant is widely known as BBH and the BBH trademark is entitled to a broad scope of protection, given Complainant's long and exclusive use of the term, which has no meaning in any language, nor is it lawfully used or registered as a trademark by anyone in the financial services and banking industries other than Complainant.

 

Multiple panelists in UDRP actions have concluded Complainant is well known and the BBH trademark is famous.

 

The Disputed Domain Name incorporates Complainant's BBH trademark and trade name in its entirety. Using the term "bank" as part of the Disputed Domain Name is of no legal or practical relevance. Rather, it exacerbates confusion. Respondent is using the term "bank" for what is

likely to be or become a phishing scheme. Even if the site at the Disputed Home Page is being used only to serve advertisements, this act results only from causing public confusion as to the owner/source of the Disputed Domain Name.

 

There is no evidence Respondent is using the Disputed Domain Name in connection with any bona fide offering of goods or services. Notwithstanding exhaustive internet searches by Complainant's counsel, Complainant could not locate a person or entity operating (much less

operating legitimately) under the BBH BANK name or trademark.

 

Given Complainant's rights in its well-known and widely used BBH trademark for banking and other financial services, there are no circumstances in which a person or entity could use the BBH BANK name for legitimate commercial purposes.

 

Complainant states that where, as in the present case, a disputed domain name is so obviously connected with a well-known name, product or service, its use by someone with no connection to the name, product or service indicates opportunistic bad faith. Respondent had actual knowledge of Complainant's rights in the BBH trade name and trademark before Respondent registered the Disputed Domain Name, which constitutes bad faith under Policy 4(a)(iii).

 

B. Respondent

 

Respondent asserts that there are thousands or perhaps millions of words that when combined acquire bbh in their union.

 

Respondent also states that the compared domain names bbh.com and bbhbank.com are not confusingly similar because they look different and sound different.

 

Moreover, Respondent states that he is building a Bank net, and that bbhbank.com is a trademark in process of registration. He adds that he bought the domain <bbhbank.com> to GoDaddy, largest domain seller, because said company offered the domain for sale and he bought it. GoDaddy published the domain worldwide in his name. In light of this,

Respondent contends that he is not a fraudster, and neither GoDaddy is. He maintains that he has the purchase, the use, and the worldwide publication of the domain, and the purchase of the domain in question creates a verifiable right and interest because he paid for the right, and it is his interest.

 

As regards the fact that the domain was registered and is being used in bad faith, Respondent asserts that his domain is in process of trademark registration and his brand name is very different from the Complainant's brand, but apparently the Complainant liked it a lot, and thus he wonders why the Complainant did not register his domain bbhbank.com before.

 

FINDINGS

Complainant bases its complaint on his ownership of the trademark and tradename BBH and the domain name <bbh.com> - this latter registered on July 30, 1995- which resolves to Complainant's website www.bbh.com. Evidence was submitted with the complaint to demonstrate that Complainant owns registrations in the United States and also in several other countries for the trademark BBH and other related trademarks, all of them containing the term BBH. In addition, evidence was submitted to demonstrate ownership of the webpage www.bbh.com.

 

Furthermore, the Complainant demonstrated that it engages in finance and banking operations under the trademark BBH, and the process contains as well evidence which demonstrates that the trademark BBH is a well-known brand, and that the reputation of the name BBH in connection with the services it provides is undeniable. Complainant has received multiple awards recognizing its excellence in the provision of financial and wealth management services. 

 

As to the Respondent, who registered the domain <bbhbank.com> on December 5, 2023, with his response to the Complaint he submitted copies of the applications filed on January 3, 2024 with the Mexican Industrial Property Office for the registration of the trademarks BBHBANK.COM in International Class 36, BBHBANK.COM in Class 38, BBHBANK in Class 36, BBHBANK in Class 38, BBH BANK in Class 36 and BBH BANK in Class 38.

 

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 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.

 

Identical and/or Confusingly Similar

The first requirement of the Policy in Paragraph 4(a)(i) for the Complainant to meet is to demonstrate its rights over a trademark identical or confusingly similar to a domain name registered by the Respondent.

 

In the present case, the Complainant submitted evidence to demonstrate that it is the exclusive owner of the trademark BBH and related trademarks where the term BBH is predominant, in international classes 9, 36 and 42, among others. The Complainant also demonstrated that the trademark BBH is widely recognized and well-known to an extent that it would not be possible for anyone to argue that it did not know the existence of said mark.

 

Complainant owns a plurality of registrations in the United States and abroad for the trademark BBH in connection with financial and banking services, which are the main activities the Complainant engages in. Now, the disputed domain happens to be conformed by the letters BBH (i.e., the trademark owned by the Complainant) together with the word "bank".

 

The Examiner concurs with Complainant in that said word is irrelevant in determining similarity of <bbhbank.com> with the trademark BBH. "BANK" is a generic term that defines certain financial activities, in fact, those in which the Complainant is engaged. Thus, the Respondent's assertion regarding the fact that he is "building a Bank net" is not surprising. The Respondent himself acknowledges that the term BANK is a generic word used for financial services, which means that said word should not be taken into account for the comparison of the domains in the present case, but only to confirm that the Respondent had the Complainant's trademark and domain name in mind when he decided to "coin" his domain name <bbhbank.com>. The Panel thus considers that the presence of the word "bank" in the disputed domain is not a coincidence, but rather a deliberate action by the Respondent. 

 

That said, it turns out convenient to refer to the attempted defense of the Respondent arguing that there is no confusing similarity between BBH and BBHBANK. Respondent's assertions are of the type of Murphy's law "if you cannot convince them, confuse them". However, only the Respondent is confused deeming that all the jumbled words in his response could be accepted to conclude that his domain name <bbhbank.com> has any kind of originality and distinctiveness vis a vis the Complainant's trademark and tradename BBH so as to conclude that it differs from them.

 

The similarities between the trademark BBH and the domain <bbhbank.com> are undeniable. BBH is fantasy word that derives from the corporate name of the Complainant – Brown Brothers Harriman -. Respondent's <bbhbank.com> domain name is confusingly similar to Complainant's mark because it incorporates the BBH mark and tradename in its entirety, merely adding the generic word "bank" and the ".com" gTLD. The addition of generic or descriptive terms and a gTLD is generally insufficient to overcome the confusing similarity between a domain name and a mark under Policy¶ 4(a)(i). See Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Svensson Viljae, FA 1784650 (Forum June 1, 2018) (finding confusing similarity where "[t]he disputed domain name <skechers-outlet.com> adds a hyphen and the generic term 'outlet' to Complainant's registered SKECHERS mark, and appends the '.com' top-level domain.").

 

In light of the foregoing, there is no doubt for the Panel that the Policy requirement in Paragraph 4(a)(i) is met as to the fact that the disputed domain name <bbhbank.com> is confusingly similar to the trademark and tradename BBH owned by the Complainant.

 

Rights or Legitimate Interests

In the Complainant's words, "There is no evidence Respondent is using the Disputed Domain Name in connection with any bona fide offering of goods or services. Notwithstanding exhaustive internet searches by

Complainant's counsel, Complainant could not locate a person or entity operating (much less operating legitimately) under the BBH BANK name or trademark. Given Complainant's rights in its well-known and widely used BBH trademark for banking and other financial services, there are no circumstances in which a person or entity could use the BBH BANK name for legitimate commercial purposes. It is hard to envision even a permissible non-commercial use of the terms, as BANK refers to services offered Complainant."

 

The Respondent's allegation to support his rights and legitimate interests is another pearl. In his words, "the purchase of the domain in question creates a verifiable right and interest. I paid for that right. It is my interest. The trademark registration process is proof of that right and is proof of that interest".

 

Respondent intends to make believe that he does not have any idea of how the registration of domain names works, and pretends to have acted in complete good faith because he was convinced that since he purchased the domain name <bbhbank.com> this fact entails an undisputable right. However, his rights and legitimate interests are only an argument he carefully developed. Respondent was notified of the Complaint on December 19, 2023, and on January 3, 2024 (i.e., 15 days after the Complaint was served and 5 days prior to his deadline to respond the Complaint) he filed 6 trademark applications at the Mexican Industrial Property Office, including two applications for the trademark BBH BANK in Classes 36 and 38. This circumstance, instead of justifying his behavior, contributes to establish his malicious intent to appropriate the name, to cause confusion with the Complainant's trademark, tradename and domain name BBH and to benefit from said confusion. In other words, the Respondent has an interest in the domain, but not a legitimate interest at all. And this grants no rights.

 

In light of the foregoing, the Panel considers that the Policy requirement in Paragraph 4(a)(ii) is met inasmuch as the Respondent has no rights or legitimate interests in respect of the domain name <bbhbank.com>.

 

Registration and Use in Bad Faith

According to Paragraph 4(b) of the Policy, when certain circumstances are present in a given case they shall be evidence of the registration and use of a domain name in bad faith. Among such circumstances the Policy mentions in Paragraph 4(b)(iv) using the domain name to intentionally attempt to attract, for commercial gain, internet users to the Respondent's web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's site or location or of a product or service on the Respondent's web site or location.

 

In the present case, the extreme similarity of the disputed domain name <bbhbank.com> with the registered trademark BBH clearly indicates that there was a prima facie intention of the Respondent to attract internet users for commercial gain. The Panel concurs with the Complainant in that there should have been no reason for using and registering the disputed domain name other than to 1) disrupt the business of Complainant by causing people to mistakenly believe they are visiting a website of the Complainant, or 2) attract for commercial gain people to Respondent's website, falsely believing it is Complainant's online location, by creating a likelihood of confusion with Complainant's BBH Marks.

 

Complainant is also right when asserting that Respondent registered a domain name virtually identical to Complainant's famous mark but adding the word "BANK", which happens to describe the services rendered by Complainant, and also the services that the Respondent mentioned he intends to render. In the present case the disputed domain name strongly implies a direct relationship with Complainant, and shows an opportunistic bad faith. Further, by attempting to pass itself off to the public as if owned, affiliated or sponsored by Complainant, Respondent would be taking advantage of the goodwill established in Complainant's BBH mark. Respondent would then be attempting to a commercial gain by attracting consumers to its <bbhbank.com> website by creating a likelihood of confusion regarding the source of Respondent's website.

 

It is not to be overlooked the Respondent's contention that his brand name is very different from the Complainant's brand, and that apparently the Complainant liked it a lot, and thus he wonders why the Complainant did not register the domain <bbhbank.com> before.

 

Someone should be very reckless and daring to make such a statement. The Complainant owns the trademark BBH and it uses it in connection with a broad list of banking and financial services on the website bbh.com, and as such is known by the public and has received several awards and recognitions. Following the Respondent's argument, it would be hard to imagine how many useless domain names a company would have to register together with its main brand to halt opportunistic third parties from registering confusing similar domain names.

 

Due to all the above, it is imperative to conclude that the disputed domain name <bbhbank.com> has been registered and is being used in bad faith under Policy ¶ 4(a)(iii), since the documentation submitted by the Respondent clearly evidences his intention to take advantage of the reputation and recognition of the Complainant's trademark and tradename.

 

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 <bbhbank.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Luz Helena Villamil Jimenez, Panelist

Dated: January 22, 2024