Brownell Travel, Inc. v. Troy Haas
Claim Number: FA1411001589137
Complainant is Brownell Travel, Inc. (“Complainant”), represented by Michael S. Denniston of Bradley Arant Boult Cummings LLP, Alabama, USA. Respondent is Troy Haas (“Respondent”), West Virginia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <brownelltravell.com>, registered with GODADDY.COM, LLC.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically November 7, 2014; the National Arbitration Forum received payment November 7, 2014.
On November 11, 2014, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <brownelltravell.com> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name. GODADDY.COM, LLC verified that Respondent is bound by the GODADDY.COM, LLC registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 12, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 2, 2014, 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@brownelltravell.com. Also on November 12, 2014, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 11, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 National Arbitration 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.
Complainant’s Allegations in this Proceeding:
Complainant uses the BROWNELL mark to identify its travel agency and related services. Complainant registered the BROWNELL mark with the United States Patent and Trademark Office ("USPTO") (Reg. No. 4,145,614, registered May 22, 2012). The <brownelltravell.com> domain name is confusingly similar to the BROWNELL mark as the name incorporates the mark in full and adds the descriptive term “travel” with an additional letter “l” and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights in the disputed domain name. Respondent has not been commonly known by the disputed domain name. The WHOIS information identifies “Troy Haas” as registrant. Respondent does not operate a website through the disputed domain name; however, Respondent uses the disputed domain name in furtherance of fraudulent activity. In particular, Respondent uses the e-mail address associated with the <brownelltravell.com> domain name to impersonate Complainant’s Chief Executive Officer, and Respondent sent requests to Complainant’s Account Manager in an attempt to commit fraud upon Complainant. Such use does not amount to any bona fide offering, or a legitimate noncommercial or fair use.
Respondent’s registration and use of the disputed domain name to send an e-mail purporting to be from the CEO to an employee in Complainant’s accounting department is evidence that the disputed domain name was registered primarily for the purpose of disrupting Complainant’s business. Further, Respondent’s use of the domain name in furtherance of fraud is demonstrative of bad faith. Lastly, Respondent had actual knowledge of Complainant at the time of domain name registration. Registration with such knowledge is considered bad faith.
Respondent’s Contentions
Respondent did not submit a response. The Panel notes that Respondent registered the disputed domain name November 5, 2014.
Complainant established that it has rights and legitimate interests in the mark and the disputed domain name containing in its entirety Complainant’s protected mark.
Respondent has no such rights or legitimate interests in the mark or domain name containing Complainant’s protected mark.
Respondent registered and used the disputed domain name that is confusingly similar to Complainant’s protected mark in bad faith in an attempted fraud.
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 Complainant to 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.
Given 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(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Identical or Confusingly Similar:
Complainant uses the BROWNELL mark to identify its travel agency and related services. Complainant claims rights in the BROWNELL mark through registration with the USPTO (Reg. No. 4,145,614, registered May 22, 2012). The Panel agrees that USPTO registration is sufficient to demonstrate Complainant’s rights in the BROWNELL mark pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”).
Complainant argues that the <brownelltravell.com> domain name is confusingly similar to the BROWNELL mark as the name incorporates the mark in full and adds the descriptive term “travel” with an additional letter “l” and the gTLD “.com.” The Panel notes that addition of the term “travel” heightens confusing similarity as Complainant uses the mark to identify its travel services. See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights. The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”). Further, the Panel agrees that the inclusion of a second letter “l” to “travel” does not preclude a finding of confusing similarity, and the affixation of a gTLD serves no distinguishing value in the analysis. See Webster Financial Corp. and Webster Bank, Nat’l Ass’n v. Domainstand.com LLC, FA 1452259 (Nat. Arb. Forum Aug. 15, 2012) (finding <websterbankareana.com> confusingly similar to the WEBSTER BANK mark despite the additions of a misspelled version of the descriptive term “arena” and a gTLD). Accordingly, the Panel finds that the <brownelltravell.com> domain name is confusingly similar to the BROWNELL mark pursuant to Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights to or Legitimate Interests:
Complainant must first make a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden of proof shifts to Respondent to show it does have such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant claims that Respondent has no rights or legitimate interests in the disputed domain name. Specifically, Complainant argues that Respondent has not been commonly known by the disputed domain name. Complainant notes that the WHOIS information identifies “Troy Haas” as registrant. The Panel agrees that no basis exists to find Respondent commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant asserts that Respondent does not operate a website through the disputed domain name, but that Respondent used the disputed domain name in furtherance of fraudulent activity. In particular, Complainant explains that Respondent used the e-mail address associated with the <brownelltravell.com> domain name to impersonate Complainant’s Chief Executive Officer, and sent requests to Complainant’s Account Manager in an attempt to commit fraud upon Complainant. See Compl., at Attached Ex. E. Prior panels have determined that such use does not amount to any bona fide offering, or a legitimate noncommercial or fair use. See HealthSouth Corp. v. VistaPrint Technologies Ltd., FA 1581088 (Nat. Arb. Forum Oct. 29, 2014) (finding respondent’s use of the domain name to impersonate the complainant’s CEO in e-mail correspondence with the CFO requesting a significant wire transfer amounts to neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use). The Panel here finds that Respondent’s impersonation of Complainant’s CEO through the e-mail string associated with the disputed <brownelltravell.com> domain name in furtherance of apparent fraudulent activity does not constitute a Policy ¶ 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name containing Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant argues that Respondent’s registration and use of the disputed domain name to send an e-mail purporting to be from the CEO to an employee in Complainant’s accounting department is evidence that the disputed domain name was registered primarily for the purpose of disrupting Complainant’s business. The Panel recalls the e-mail thread attached as Complainant’s Exhibit E and finds that Respondent’s activities contain the requisite degree of competition to disrupt, as required by Policy ¶ 4(b)(iii), because it is an attempt to compete by invading and expropriating a company assets. The Panel finds bad faith registration and use under this provision. See, e.g., Louis Vuitton Malletier S.A., L.L.C. v. David, FA 1138296 (Nat. Arb. Forum Mar. 5, 2008) (concluding that the complainant’s business is disrupted by the respondent’s registration and use of the disputed domain name for the purpose of selling counterfeit products); H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”).
Complainant argues that Respondent’s use of the domain name in furtherance of a fraud demonstrates bad faith. The Panel recalls that Respondent used the e-mail string associated with the <brownelltravell.com> domain name to impersonate Complainant’s CEO. See Compl., at Attached Ex. E. Prior panels found that a respondent’s impersonation of the complainant’s personnel to perpetrate fraud constitutes bad faith under Policy ¶ 4(a)(iii). See National Oilwell Varco, L.P. v. Craig Wood / NOV, FA 1575951 (Nat. Arb. Forum September 22, 2014) (“We are persuaded by the evidence that Respondent’s use of the <nov-inc.com> domain name to commit a commercial fraud while purporting to act in the name of Complainant, all as alleged in the Complaint, demonstrates bad faith in the registration and use of the domain name.”). Accordingly, the Panel finds evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).
Lastly, Complainant argues that Respondent’s use establishes actual knowledge of Complainant at the time of the domain name’s registration, and that the registration took place with such knowledge. This is registration in bad faith. The Panel finds that Respondent had actual knowledge based on Respondent’s familiarity with Complainant’s CEO, whom respondent impersonated, as well as knowledge of personnel within Complainant’s accounting department. See SHUAA Capital psc v. Oba Junkie / shuaa capital psc, FA 1581255 (Nat. Arb. Forum Oct. 29, 2014) (“Respondent’s knowledge of Complainant’s mark is apparent by Respondent’s attempt to project itself as Complainant.”). Accordingly, the Panel finds additional evidence of bad faith pursuant to Policy ¶ 4(a)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN 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 <brownelltravell.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Date: December 20, 2014.
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