Brown Advisory Incorporated v. david clark / new gurl llc
Claim Number: FA2201001982535
Complainant is Brown Advisory Incorporated (“Complainant”), represented by Robert White of Lexsynergy Limited, United Kingdom. Respondent is david clark / new gurl llc (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <brownadvlsory.com>, registered with NameCheap, Inc..
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.
The Honorable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 31, 2022; the Forum received payment on January 31, 2022.
On January 31, 2022, NameCheap, Inc. confirmed by e-mail to the Forum that the <brownadvlsory.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 February 1, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 22, 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@brownadvlsory.com. Also on February 1, 2022, 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 March 1, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honorable Neil Anthony Brown QC 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.
A. Complainant
Complainant made the following contentions.
Complainant, Brown Advisory Incorporated, is an independent investment management and strategic advisory firm. Complainant maintains registration with multiple authorities including the United States Patent and Trademark Office (“USPTO”), European Union, and United Kingdom in the BROWN ADVISORY mark. See Compl. Annex 1. The <brownadvlsory.com> domain name is identical or confusingly similar to Complainant’s BROWN ADVISORY mark because it misspells Complainant’s mark by replacing the letter “i" with the letter “L” and adding in the “.com” generic top-level domain (“gTLD”) to form a domain name.
Respondent does not have any rights or legitimate interests in the <brownadvlsory.com> domain name because Respondent is not commonly known by the domain name. Respondent is not using the domain name in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use because the resolving webpage displays links competing and unrelated to Complainant’s business. Respondent further has impersonated Complainant.
Respondent registered and uses the <brownadvlsory.com> domain name in bad faith because Respondent impersonates Complainant in furtherance of a phishing scheme to gain personal information. Respondent’s domain name creates confusion among users as to its association and endorsement by Complainant, thus disrupting Complainant’s business. Further bad faith is found through Respondent’s typosquatting on Complainant’s mark, its use of a privacy service, and using false identifying WHOIS information when registering the domain.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is an independent investment management and strategic advisory firm.
2. Complainant has established its trademark rights in the BROWN ADVISORY mark by virtue of the registration of the mark with multiple authorities including the United States Patent and Trademark Office (“USPTO”) and authorities in the European Union and the United Kingdom.
3. Respondent registered the <brownadvlsory.com> domain name on November 30, 2021.
4. Respondent has caused the domain name to be used to impersonate Complainant by the resolving webpage displaying links competing with and unrelated to Complainant’s business.
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”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the BROWN ADVISORY mark through its registration with multiple authorities. Registration of a mark with multiple authorities may be sufficient to establish rights in a mark under Policy ¶ 4(a)(i). See Alibaba Group Holding Limited v. YINGFENG WANG, FA 1568531 (Forum Aug. 21, 2014) (“Complainant has rights in the ALIBABA mark under the Policy through registration with trademark authorities in numerous countries around the world.”). Complainant provides copies of its registration records with the European Union, United Kingdom, and the USPTO (e.g. Reg. No. 4,360,127 – Registered on July 2, 2013). See Compl. Annex 1. Therefore, the Panel finds that Complainant has rights in the BROWN ADVISORY mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s BROWN ADVISORY mark. Complainant argues the <brownadvlsory.com> domain name is identical or confusingly similar to Complainant’s BROWN ADVISORY mark because it misspells Complainant’s mark by replacing a letter “i" with a letter “L” and adding in the “.com” gTLD to form the domain name. A domain name may be identical or confusingly similar to a complainant’s mark, under Policy ¶ 4(a)(i), where a complainant’s mark is misspelled. See WordPress Foundation v. Bernat Lubos, FA 1613444 (Forum May 21, 2015) (finding that the <worspress.org> domain name is confusingly similar to the WORDPRESS mark under Policy ¶4(a)(i), stating, “On a standard QWERTY keyboard, the letters ‘s’ and ‘d’ are adjacent. A minor misspelling is not normally sufficient to distinguish a disputed domain name from a complainant’s mark.”). Therefore, the Panel finds that the <brownadvlsory.com> domain name is confusingly similar to Complainant’s BROWN ADVISORY mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established 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 finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s BROWN ADVISORY mark and to use it in its domain name, making only a minor typographical change;
(b) Respondent registered the <brownadvlsory.com> domain name on November 30, 2021;
(c) Respondent has caused the domain name to be used to impersonate Complainant by the resolving webpage displaying links competing with and unrelated to Complainant’s business;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues Respondent does not have any rights or legitimate interests in the <brownadvlsory.com> domain name because Respondent is not commonly known by the domain name. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute). Here, the WHOIS information identifies “david clark / new gurl llc” as the registrant. See Registrar Verification Email. Therefore, the Panel finds that Respondent is not commonly known by the <brownadvlsory.com> domain name under Policy ¶ 4(c)(ii);
(f) Complainant argues Respondent is not using the domain name in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use because Respondent’s website promotes competing and unrelated hyperlinks. A domain name that is used to promote links that compete with a complainant’s business or are unrelated to a complainant’s business may be evidence of a domain name not being used in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). Complainant provides a screenshot of the resolving webpage which advertises links of various categories. See Compl. Annex 10. Therefore, the Panel finds that Respondent is not using the <brownadvlsory.com> domain name in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii);
(g)
Complainant further argues Respondent is not using the <brownadvlsory.com>
domain name in connection with a bona fide offering of goods or services
nor for a legitimate noncommercial or fair use because Respondent impersonates
Complainant. Use of a domain name to impersonate a complainant may be evidence
of a domain name not being used in connection with a bona fide offering
of goods or services nor for a legitimate noncommercial or fair use under
Policy ¶¶ 4(c)(i) and (Iii). See H-D U.S.A., LLC v. Yoshihiro Nakazawa, FA
1736477 (Forum July 21, 2017) (“A complainant can use assertions of
passing off and offering competing goods or services to evince a lack of a bona
fide offering of goods or services or a legitimate noncommercial or fair
use.”). Having regard to all the evidence and drawing reasonable inferences
from it, the Panel agrees entirely with the submission of Complainant that in
all probability,
Respondent’s intention in registering a domain that is almost identical to the
Complainant’s
official domain was to carry out a fraudulent phishing attack (via email and/or
online) by masquerading as the Complainant. In
all the circumstances revealed by the evidence the Panel finds that Respondent
is not using the <brownadvlsory.com> domain name in connection
with a bona fide offering of goods or services nor for a legitimate
noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues Respondent registered and uses the <brownadvlsory.com> domain name in bad faith because Respondent creates a likelihood of confusion for commercial gain through competing and unrelated hyperlinks. Use of a domain name to host links that compete with and are unrelated to a complainant’s business may be evidence of bad faith under Policy ¶¶ 4(b)(iii) and (iv). See Zynex Medical, Inc. v. New Ventures Services, Corp, FA 1788042 (Forum July 2, 2018) (“The resolving webpage [] appears to display [competing] links such as “Electrical Stimulation” and “Physical Therapy Software.” Accordingly, the Panel agrees that Respondent disrupts Complainant’s business and attempted to benefit commercially from Complainant’s mark in bad faith under Policy ¶¶ 4(b)(iii) & (iv).”). Here, Respondent’s website resolves to a website that features links that, according to Complainant and which the Panel accepts, compete with and are unrelated to Complainant’s business. See Compl. Annex 10. Therefore, the Panel finds Respondent registered and uses the <brownadvlsory.com> domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Secondly,
Complainant argues Respondent registered and uses the <brownadvlsory.com> domain name in bad faith because Respondent
passes itself off as Complainant in an attempt to phish for personal
information from users. Use of a domain name to pass off in connection with a
phishing scheme may be evidence of bad faith under Policy ¶ 4(b)(iv). Qatalyst
Partners LP v. Devimore, FA 1393436 (Forum July 13, 2011) (finding that using the disputed
domain name as an e-mail address to pass itself off as the complainant in a
phishing scheme is evidence of bad faith registration and use). Complainant submits
Respondent’s domain name is used to obtain personal information for commercial
gain from users via email. That may well be the case but in any event and in
all the circumstances revealed by the evidence, the Panel finds that Respondent
registered and uses the <brownadvlsory.com> domain name in bad
faith under Policy ¶ 4(b)(iv). Moreover, having regard to all the evidence and
drawing reasonable inferences from it, the Panel agrees entirely with the
submission of Complainant that in all probability, Respondent’s
intention in registering a domain that is almost identical to the Complainant’s
official domain was to carry out a fraudulent phishing attack (via email and/or
online) by masquerading as the Complainant.
Thirdly, Complainant argues Respondent registered and uses the <brownadvlsory.com> domain name in bad faith because Respondent typosquatted on Complainant’s mark. Typosquatting may indicate bad faith registration and use under Policy ¶ 4(a)(iii). See Cost Plus Management Services, Inc. v. xushuaiwei, FA 1800036 (Forum Sept. 7, 2018) (“Typosquatting itself is evidence of relevant bad faith registration and use.”). Complainant asserts Respondent engages in typosquatting because Respondent’s domain name replaces the letter “i", found in Complainant’s BROWN ADVISORY mark, with a letter “L”. Therefore, the Panel finds Respondent registered and uses the <brownadvlsory.com> domain name in bad faith under Policy ¶ 4(a)(iii).
Fourthly, Complainant argues Respondent registered and uses the <brownadvlsory.com> domain name because Respondent provided false WHOIS information. False WHOIS information may be evidence of bad faith under Policy ¶ 4(a)(iii). See CNU ONLINE Holdings, LLC v. Domain Admin / Whois Privacy Corp., FA1504001614972 (Forum May 29, 2015) (“As the Panel sees that Respondent has provided false or misleading WHOIS information, the Panel finds bad faith in Respondent’s registration of the disputed domain name per Policy ¶ 4(a)(iii).”). Complainant submits Respondent’s information is false because the address is in New York City, but there is no such city in Germany, as the WHOIS information suggests. See Comp. Annex 13. Therefore, the Panel finds that Respondent registered and uses the <brownadvlsory.com> domain name in bad faith under Policy ¶ 4(a)(iii).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the BROWN ADVISORY mark and in view of the conduct that Respondent has engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <brownadvlsory.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown QC
Panelist
Dated: March 2, 2022
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