Brasfield & Gorrie, L.L.C. v. Admin Domain / Transfer Discounter
Claim Number: FA2003001888476
Complainant is Brasfield & Gorrie, L.L.C. (“Complainant”), represented by Robert C. Anderson of Balch & Bingham LLP, Alabama, USA. Respondent is Admin Domain / Transfer Discounter (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <brassfieldgorrie.com>, registered with Gransy, s.r.o..
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 16, 2020; the Forum received payment on March 16, 2020.
On March 18, 2020, Gransy, s.r.o. confirmed by e-mail to the Forum that the <brassfieldgorrie.com> domain name is registered with Gransy, s.r.o. and that Respondent is the current registrant of the name. Gransy, s.r.o. has verified that Respondent is bound by the Gransy, s.r.o. 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 19, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 8, 2020 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@brassfieldgorrie.com. Also on March 19, 2020, 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, the Forum transmitted to the parties a Notification of Respondent Default.
On April 10, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Preliminary Issue: Language of Proceedings
The Panel notes that Complainant requests that the language of this administrative proceeding proceed in the English language pursuant to UDRP Rule 11(a). Complainant makes this request in light of the Czech language Registration Agreement. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Factors which previous panels have seen as particularly compelling are: WHOIS information which establishes Respondent in a country which would demonstrate familiarity with the English language, filing of a trademark registration with an entity which shows an understanding of the English language, and any evidence (or lack thereof) exhibiting Respondent’s understanding of the Czech language included in the Registration Agreement. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language).
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstances of the present case, the Panel decides that the proceeding should be in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is in the construction industry and has served customers since 1967. Complainant has rights in the BRASFIELD & GORRIE mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,653,412, registered Nov. 26, 2002). Respondent’s <brassfieldgorrie.com> domain name is confusingly similar to Complainant’s BRASFIELD & GORRIE mark. Respondent incorporates the mark in its entirety and adds an additional “S.”
Respondent has no rights or legitimate interests in the <brassfieldgorrie.com> domain name as Respondent is not commonly known by the disputed domain name nor did Complainant authorize Respondent to use the mark in any way. Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent’s disputed domain name resolves to an inactive webpage.
Respondent registered and used the <brassfieldgorrie.com> domain name in bad as Respondent’s disputed domain name resolves to an inactive webpage.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Brasfield & Gorrie, L.L.C. (“Complainant”), of Birmingham, AL, USA. Complainant is the owner of the domestic registration for the mark BRASFIELD & GORRIE, which it has used continuously since at least as early as 1967, in connection with its provision of goods and services related to the construction industry.
Respondent is identified as Admin Domain / Transfer Discounter (“Respondent”), of Nanjing, China. Respondent’s address is not listed but the name and phone number given for its Registrar is associated with a Registrar located in the Czech Republic. The Panel notes that the <brassfieldgorrie.com> domain name was registered on or about February 15, 2005.
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”).
Complainant claims to have rights in the BRASFIELD & GORRIE mark through its registration with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights in mark per Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Here, Complainant has provided the Panel with information pertaining to its USPTO registration for the BRASFIELD & GORRIE mark (Reg. No. 2,653,412, registered Nov. 26, 2002). The Panel here finds that Complainant has adequately shown rights in the mark per Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <brassfieldgorrie.com> domain name is confusingly similar to Complainant’s BRASFIELD & GORRIE mark. Registration of a domain name that contains a mark in its entirety and adds an additional letter does not distinguish the domain name from the mark per Policy ¶ 4(a)(i). See Paperless Inc. v. ICS Inc, FA 1629515 (Forum Aug. 17, 2015) (establishing a confusing similarity between the <paperlessspost.com> domain name and the PAPERLESS POST trademark in part because the domain name contained the entire mark and added an additional “s”). Here, Complainant argues that Respondent incorporates the mark in its entirety with an additional of an extra “S.” The Panel here finds that Respondent’s domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel notes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then 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”).
The Panel here finds that Complainant has set forth the requisite prima facie case.
Complainant argues Respondent lacks rights or legitimate interest in the <brassfieldgorrie.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been given license or consent to use the BRASFIELD & GORRIE mark or register domain names using Complainant’s mark. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed 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)”). Here, the WHOIS information for the disputed domain name lists the registrant as “Admin Domain / Transfer Discounter” and there is no other evidence to suggest that Respondent was authorized to use the BRASFIELD & GORRIE mark or was commonly known by the disputed domain name. The Panel here finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant argues that Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent’s disputed domain name resolves to an inactive webpage. Failure of a domain name to resolve to an active webpage is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Here, Complainant has provided the Panel with a screenshot of Respondent’s <brassfieldgorrie.com> domain name’s resolving webpage that fails to resolve to an active page. The Panel here finds that Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
The Complainant has proven this element.
The Panel notes Complainant does not make any arguments that would fall under Policy ¶ 4(b). However, the Panel notes further that these arguments are merely illustrative rather than exclusive to support a finding of bad faith. See Bloomberg Finance L.P. v. Domain Admin - This Domain is For Sale on GoDaddy.com / Trnames Premium Name Services, FA 1714157 (Forum Mar. 8, 2017) (determining that Policy ¶ 4(b) provisions are mere illustrative of bad faith, and that the respondent’s bad faith may be demonstrated by other allegations of bad faith under the totality of the circumstances). As such, the Panel here finds Complainant’s Policy ¶ 4(a)(iii) arguments are sufficient to support a finding of bad faith.
Specifically, Complainant argues that Respondent registered and used the <brassfieldgorrie.com> domain name in bad faith as Respondent’s disputed domain name resolves to an inactive webpage. Failure to make an active use of a disputed domain name may be evidence of bad faith per Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). Here, Complainant has provided the Panel with a screenshot of Respondent’s disputed domain name that fails to resolve to an active webpage. The Panel here finds that Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <brassfieldgorrie.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: April 24, 2020
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