Brown Brothers Harriman & Co. v. Arturo Rolling
Claim Number: FA1611001703557
Complainant is Brown Brothers Harriman & Co. (“Complainant”), represented by Allen J. Baden of Edge Law Group, California, USA. Respondent is Arturo Rolling (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bbh.in.net>, 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 17, 2016; the Forum received payment on November 17, 2016.
On November 19, 2016, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <bbh.in.net> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. 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 November 28, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 19, 2016 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@bbh.in.net. Also on November 28, 2016, 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 December 20, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant has rights in the BBH mark based on its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,594,867, registered Mar. 24, 2009). Respondent’s <bbh.in.net> domain name is confusingly similar to Complainant’s BBH mark because it incorporates the entire mark while adding “.in.net” generic top level domain (“gTLD”).
Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not licensed or otherwise authorized Respondent to use its BBH mark in any fashion, and Respondent is not commonly known by the disputed domain name. Respondent has been using the <bbh.in.net> domain name to host adult-oriented material, which cannot be construed as a bona fide offering of goods and services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
Respondent’s <bbh.in.net> domain name creates a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement with the Complainant’s BBH mark. Respondent is attempting to commercially gain in bad faith, and is doing so by hosting adult-oriented material that tarnishes Complainant’s goodwill in the BBH mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Brown Brothers Harriman & Co. of New York, NY, USA. Complainant is the owner of domestic and international registrations for the mark BBH, which it has continuously used since at least as early as 1958 in connection with its provision of goods and services in the financial services industry.
Respondent is Arturo Rolling of St. Augustine, FL, USA. Respondent’s registrar’s address is unlisted. Respondent registered the <bbh.in.net> domain name on or about September 19, 2016
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 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 (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.”).
Complainant contends that it has rights in the BBH mark based on its registration with the USPTO (e.g., Reg. No. 3,594,867, registered Mar. 24, 2009). Prior panels have found that such a registration confers rights in a mark pursuant to Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). The Panel here finds that Complainant has rights in the BBH mark pursuant to the Policy.
Complainant argues that Respondent’s <bbh.in.net> domain name is confusingly similar to Complainant’s BBH mark under Policy ¶ 4(a)(i). Complainant asserts that Respondent has incorporated the entire BBH mark and has merely added the “.in.net” extension to the domain name. Past panels have held that the addition of generic terms or a gTLD are not sufficient to alleviate confusing similarity between a complainant’s mark and a disputed domain name. See Magnum Piering, Inc. v. Mudjackers, D2000-1525 (WIPO Jan. 29, 2001) (finding that the generic term “INC” does not change the confusing similarity); see also Thom Browne, Inc. v. Huili Zhang, FA 1358629 (Forum Dec. 22, 2010) (finding, “The addition of the gTLD ‘.net’ also has no effect on the Policy ¶ 4(a)(i) analysis.”). The Panel here finds that the <bbh.in.net> domain name is confusingly similar to Complainant’s BBH mark under Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
Complainant has proven this element.
The Panel recognizes 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), and then the burden shifts to Respondent to show it does have 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). Complainant has met this burden.
Complainant contends that Respondent has no rights or legitimate interests in the <bbh.in.net> domain name. Complainant asserts that it has not licensed or otherwise authorized Respondent to use its BBH mark in any fashion, and that Respondent is not commonly known by the disputed domain name. The Panel notes that the WHOIS information for the domain name in question lists “Arturo Rolling” as the registrant. Previous panels have held that a respondent is not commonly known by a domain name where supporting WHOIS information is lacking and there is no contradictory evidence in the record. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). The Panel here finds that Respondent is not commonly known by <bbh.in.net>.
Complainant further asserts that Respondent is not using the disputed domain name to make a bona fide offering of goods and services under Policy ¶ 4(c)(i), or using it to make a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Complainant argues that Respondent is using <bbh.in.net> to divert Internet users and to tarnish Complainant’s reputation. Complainant alleges that Respondent is displaying adult-oriented material at the resolving website of the disputed domain name. Past panels have found that hosting adult-oriented material does not confer any rights or legitimate interests in a disputed domain name. See Twitter, Inc. v. Kiribati Media / Kiribati 200 Media Limited-, FA 1603444 (Forum Mar. 19, 2015) (holding that, generally, a disputed domain which hosts adult-oriented material is not a bona fide offering of goods or services or a legitimate noncommercial or fair use). The Panel here finds that Respondent is not making a bona fide offering of goods and services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because Respondent has not provided a response to this action Respondent has failed to meet its burden regarding proof of any rights or legitimate interests in the disputed domain.
Complainant has proven this element.
Complainant argues that Respondent has registered and is using the <bbh.in.net> domain name in bad faith. Complainant asserts that Respondent’s domain name creates a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement with Complainant’s BBH mark, and that Respondent is attempting to commercially gain in bad faith. Complainant alleges that Respondent is commercially gaining from the adult-oriented material that is allegedly being hosted on the disputed domain name. Activities of the type asserted by Complainant support a conclusion that Respondent registered and used the disputed domain in bad faith in violation of Policy ¶ 4(b)(iv). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”).
Complainant also alleges that Respondent is tarnishing the goodwill of its BBH mark by hosting adult-oriented material on the <bbh.in.net> domain name. Complainant has not provided any screen shots or photographic evidence of the content it alleges to be adult-oriented material, but nonetheless argues that Respondent’s hosting of adult-oriented material is in itself bad faith. Prior panels have agreed that hosting adult-oriented material can constitute bad faith under Policy ¶ 4(a)(iii). See Nat’l Ass’n of Stock Car Auto Racing, Inc. v. RMG Inc – BUY or LEASE by E-MAIL, D2001-1387 (WIPO Jan. 23, 2002) (“[I]t is now well known that [adult-oriented material providers] rely on misleading domain names to attract users by confusion, in order to generate revenue from click-through advertising, mouse-trapping, and other pernicious online marketing techniques.”). The Panel here finds that to the extent Respondent is hosting adult-oriented material on <bbh.in.net>, Respondent’s actions constitute bad faith registration and use under Policy ¶ 4(a)(iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
Complainant has proven this element.
Because 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 <bbh.in.net> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: January 3, 2017
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