Brasfield & Gorrie, L.L.C. v. Sean Potter / Logan Brandon
Claim Number: FA2112001976890
Complainant is Brasfield & Gorrie, L.L.C. (“Complainant”), represented by Johnny L. Banks of BALCH & BINGHAM, LLP, Alabama, USA. Respondents are Sean Potter /Logan Brandon (collectively “Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <brasfieldgorrieconstruction.com> and <brasfieldgorrieconstruction.org>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 13, 2021; the Forum received payment on December 13, 2021.
On December 14, 2021, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <brasfieldgorrieconstruction.com> and <brasfieldgorrieconstruction.org> domain names are registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the names. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 20, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 10, 2022 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@brasfieldgorrieconstruction.com and postmaster@brasfieldgorrieconstruction.org. Also on December 20, 2021, 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 January 13, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.” Complainant contends that the <brasfieldgorrieconstruction.com> and <brasfieldgorrieconstruction.org> domain names are controlled by the same entity because each respondent provides false contact information, both domain names resolve to blank websites, both domain names have been used in similar phishing schemes, and both were registered with the same registrar and at a similar time. As the record contains no contrary information, the Panel holds that the Complaint may proceed against “Sean Potter /Logan Brandon.”
A. Complainant
1. Complainant engages in the construction business. Complainant has rights in the BRASFIELD & GORRIE mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,653,412, registered on November 26, 2002).
2. Respondent’s <brasfieldgorrieconstruction.com> and <brasfieldgorrieconstruction.org>[i] domain names are identical or confusingly similar to Complainant’s mark, as they merely add the generic word “construction” and the “.com” or “.org” generic top-level domain (“gTLD”).
3. Respondent has no rights or legitimate interests in the domain names.
4. Respondent is not commonly known by the domain names. Further, Respondent is not using the domain names in connection with a bona fide offering of goods and services or legitimate noncommercial or fair use because both domain names resolve to inactive websites.
5. Additionally, Respondent attempts to pass off as Complainant and phish for financial information via emails.
6. Respondent registered and uses the <brasfieldgorrieconstruction.com> and <brasfieldgorrieconstruction.org> domain names in bad faith. Respondent attempts to use the domain names in furtherance of a phishing scheme.
7. Furthermore, the domain names resolve to inactive websites
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the BRASFIELD & GORRIE mark. Respondent’s domain names are confusingly similar to Complainant’s BRASFIELD & GORRIE mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <brasfieldgorrieconstruction.com> and <brasfieldgorrieconstruction.org> domain names and that Respondent registered and uses the domain names in bad faith
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 has rights in the BRASFIELD & GORRIE mark through its registration of the mark with the USPTO (e.g., Reg. No. 2,653,412, registered on November 26, 2002). When a complainant registers a mark with the USPTO, it is sufficient to establish rights in the mark. See Recreational Equipment, Inc. v. Liu Chan Yuan, FA 2107001954773 (Forum Aug. 9, 2021) (“Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i)”). Therefore, Complainant has sufficiently established rights in the BRASFIELD & GORRIE mark.
Complainant argues Respondent’s <brasfieldgorrieconstruction.com> and <brasfieldgorrieconstruction.org> domain names are identical or confusingly similar to Complainant’s BRASFIELD & GORRIE mark, as they incorporate the mark in its entirety, only adding the generic term “construction” and gTLDs. The mere addition of a generic term and a gTLD is not enough to differentiate a domain name from a mark. See MTD Products Inc. v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”); see also Morgan Stanley v. Eugene Sykorsky / private person, FA 1651901 (Forum Jan. 19, 2016) (concluding that the addition of a generic term and top level domain to a trademark is inconsequential under a Policy ¶ 4(a)(i) analysis.). Therefore, the <brasfieldgorrieconstruction.com> and <brasfieldgorrieconstruction.org> domain names are identical or confusingly similar to Complainant’s BRASFIELD & GORRIE mark.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <brasfieldgorrieconstruction.com> and <brasfieldgorrieconstruction.org> domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent.) The Panel holds that Complainant has made a prima facie case.
Complainant contends Respondent lacks rights and legitimate interests in the <brasfieldgorrieconstruction.com> and <brasfieldgorrieconstruction.org> domain names because Respondent is not commonly known by the domain names. Past panels have looked at the available WHOIS information to determine whether a respondent is commonly known by a domain name. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Here, the WHOIS record shows Respondent is known as “Sean Potter / Logan Brandon.” Therefore, the Panel holds that Respondent is not commonly known by the <brasfieldgorrieconstruction.com> and <brasfieldgorrieconstruction.org> domain names under Policy ¶ 4(c)(ii).
Complainant also argues Respondent does not use the <brasfieldgorrieconstruction.com> and <brasfieldgorrieconstruction.org> domain names for a bona fide offering of goods and services or legitimate noncommercial or fair use because the domain names resolve to inactive webpages and Respondent attempts to use the domains to engage in email phishing. Registering a domain name incorporating the mark of another only to host an inactive website is not a bona fide offering of goods and services or legitimate noncommercial or fair use. See Dell Inc. v. link growth / Digital Marketing, FA 1785283 (Forum June 7, 2018) (“Respondent’s domain names currently display template websites lacking any substantive content.”); 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)). Complainant provides screenshots for both resolving websites, which show an error message that the website cannot be reached. Complainant also provides copies of emails in which Respondent uses one of the domain names to send phishing emails and Complainant argues the only reason for registering both domain names is to send phishing emails. There being no evidence in the record to contradict Complainant’s assertions, the Panel holds that the Respondent fails to use the <brasfieldgorrieconstruction.com> and <brasfieldgorrieconstruction.org> domain names for a bona fide offering of goods and services or legitimate noncommercial or fair use.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues Respondent acts in bad faith because the <brasfieldgorrieconstruction.com> and <brasfieldgorrieconstruction.org> domain names resolve to inactive websites. Evidence of bad faith exists when a domain name incorporating the mark of another only redirects users to a website that lacks content. See Regions Bank v. Darla atkins, FA 1786409 (Forum June 20, 2018) (“Respondent registered and is using the domain name in bad faith under Policy ¶ 4(a)(iii) because Respondent uses the domain name to host an inactive website.”). Complainant provides screenshots of the resolving websites showing they are inactive. Thus, the Panel holds that Respondent acted in bad faith when registering and using the <brasfieldgorrieconstruction.com> and <brasfieldgorrieconstruction.org> domain names.
Complainant further asserts Respondent acts in bad faith because Respondent uses the <brasfieldgorrieconstruction.com> and <brasfieldgorrieconstruction.org> domain names to engage in a phishing scheme via email. Using a domain name incorporating the mark of another to send fraudulent emails indicates bad faith. See Airbnb, Inc. v. JAMES GRANT, FA1760182 (Forum Dec. 28, 2017) (“Using a misleading email address to defraud unwary customers certainly constitutes bad faith.”); see also Zoetis Inc. and Zoetis Services LLC v. VistaPrint Technologies Ltd, FA1506001623601 (Forum July 14, 2015) (“Respondent’s attempt to use the <zoietis.com> domain name to phish for personal information in fraudulent emails also constitutes bad faith pursuant to Policy ¶ 4(a)(iii).”). Complainant provides screenshots of emails sent to Complainant’s customers, requesting direct deposit payments. Therefore, the Panel finds bad faith per Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <brasfieldgorrieconstruction.com> and <brasfieldgorrieconstruction.org> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: January 18, 2022
[i] The <brasfieldgorrieconstruction.com> domain name was registered on April 15, 2021, and the <brasfieldgorrieconstruction.org> domain name was registered on November 29, 2021.
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