DECISION

 

Brownstein Hyatt Farber Schreck, LLP v. Christopher Williams

Claim Number: FA2503002145818

 

PARTIES

Complainant is Brownstein Hyatt Farber Schreck, LLP ("Complainant"), represented by Matthew D. Francis of Brownstein Hyatt Farber Schreck, Colorado, USA. Respondent is Christopher Williams ("Respondent"), Arizona, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <brownstelnhyattfarberschreck.com>, registered with NameCheap, Inc.

 

PANEL

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.

 

Sandra J. Franklin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on March 18, 2025; Forum received payment on March 18, 2025.

 

On March 19, 2025, NameCheap, Inc. confirmed by e-mail to Forum that the <brownstelnhyattfarberschreck.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 March 24, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 14, 2025 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@brownstelnhyattfarberschreck.com. Also on March 24, 2025, 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 April 15, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Sandra J. Franklin 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

1.       Respondent's <brownstelnhyattfarberschreck.com> domain name is confusingly similar to Complainant's mark.

 

2.       Respondent does not have any rights or legitimate interests in the <brownstelnhyattfarberschreck.com> domain name.

 

3.       Respondent registered and uses the <brownstelnhyattfarberschreck.com> domain name in bad faith.

 

B. Respondent did not file a Response.

 

FINDINGS

Complainant offers legal services and holds a registration for the BROWNSTEIN HYATT FARBER SCHRECK mark with the United States Patent and Trademark Office ("USPTO") (Reg. No. 3,626,797, registered May 26, 2009).

 

Respondent registered the <brownstelnhyattfarberschreck.com> domain name on March 5, 2025, and uses it for pay-per-click links, and to pass off as Complainant in emails.

 

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.

 

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").

 

Identical and/or Confusingly Similar

The Panel finds that Complainant has rights in the BROWNSTEIN HYATT FARBER SCHRECK mark based upon the registration of the mark with the USPTO. See Brooks Sports, Inc. v. Joyce Cheadle, FA 1819065 (Forum Dec. 28, 2018) (finding that Complainant's registration of the BROOKS mark with the USPTO sufficiently conferred its rights in the mark under Policy ¶ 4(a)(i)).

 

Respondent's <brownstelnhyattfarberschreck.com> domain name uses the entire BROWNSTEIN HYATT FARBER SCHRECK mark and simply adds a gTLD. Adding a top-level domain does not distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i).  See Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) ("A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs. Likewise, the absence of spaces must be disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax prohibits them.").  Therefore, the Panel finds that Respondent's <brownstelnhyattfarberschreck.com> domain name is confusingly similar to Complainant's BROWNSTEIN HYATT FARBER SCHRECK mark under Policy ¶ 4(a)(i).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) ("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.").

 

Complainant argues that Respondent does not have rights or legitimate interests in the <brownstelnhyattfarberschreck.com> domain name because Respondent is not commonly known by the domain name and is not licensed or authorized to use Complainant's BROWNSTEIN HYATT FARBER SCHRECK mark. The WHOIS information for the disputed domain name lists the registrant as "Christopher Williams". Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name, and thus has no rights under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA 1626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named "Fred Wallace" as registrant of the disputed domain name); see also The Toronto-Dominion Bank v. RD BANK /-, FA 1554468 (Forum May 13, 2014) ("WHOIS information for the <rdbank.com> domain name lists 'RD BANK /-' as the domain name's registrant. However, there is nothing in the record that corroborates the WHOIS data's suggestion that Respondent may be commonly known by the <rdbank.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii)."). 

 

Complainant also argues that Respondent does not use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use, as Respondent uses the domain name to send fraudulent emails. Using a disputed domain name to pass off as a complainant in emails is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.  See Emerson Electric Co. v. Adilcon Rocha, FA 1735949 (Forum July 11, 2017) (finding that respondent's attempt to pass off as complainant through emails does not constitute a bona fide offering of goods or services and, as such, respondent lacked rights or legitimate interests in the disputed domain name). Complainant provides evidence showing that Respondent uses the disputed domain name to pass off as an employee of Complainant and to solicit payments. The Panel finds that this is not a bona fide offering of goods or services or a legitimate noncommercial or fair use, and thus Respondent has no rights under Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii).

 

Complainant demonstrates that the <brownstelnhyattfarberschreck.com> domain name resolves to pay-per-click links such as "Print to Order Merch". The Panel finds that this is also not a bona fide offering of goods or services or a legitimate noncommercial or fair use, and constitutes further evidence that Respondent has no rights under Policy ¶¶ 4(c)(i) or (iii). See Vance Int'l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees); see also Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Forum Feb. 27, 2001) (finding that Respondent's commercial use of the domain name to confuse and divert internet traffic is not a legitimate use of the domain name).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

Complainant contends that Respondent registered and uses the <brownstelnhyattfarberschreck.com> domain name in bad faith to send fraudulent emails. Registering a disputed domain name to pass off as a complainant in emails disrupts Complainant's business for Respondent's gain and evinces bad faith registration and use under Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(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 CoorsTek, Inc. v. Gwendolyn K Bohn / CoorsTek Inc, FA 1764186 (Forum Feb. 2, 2018) ("Respondent sent email to users seeking employment at Complainant's business and asked for personal information such as a photo ID. Therefore, the Panel finds Respondent's emails constitute a phishing scheme and this indicates bad faith registration and use per Policy ¶ 4(a)(iii).").  Accordingly, the Panel finds bad faith under Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv).

 

Complainant argues that Respondent registered the <brownstelnhyattfarberschreck.com> domain name with actual knowledge of Complainant's rights in the mark to pass off as Complainant in emails. The Panel agrees and finds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum Jan. 5, 2018) ("[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.").

 

Complainant claims that Respondent registered and uses the <brownstelnhyattfarberschreck.com> domain name in bad faith to divert users to pay-per-click links. The Panel agrees and finds bad faith attraction for commercial gain under Policy ¶ 4(b)(iv).  See CFA Properties, Inc. v. El Mariache/ Mariache Corp, FA 1660175 (Forum Mar. 8, 2016) (finding bad faith registration and use because "Respondent used the <chickfilafoundation.org> domain name to attract Internet users for commercial gain because the resolving website contains links to third party businesses, from which Respondent presumably receives pay-per-click fees").

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).

 

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

 

 

 

Sandra J. Franklin, Panelist

Dated: April 16, 2025