Brink’s Network, Incorporated v. Gidi Media
Claim Number: FA2301002029524
Complainant is Brink’s Network, Incorporated (“Complainant”), USA, represented by Stephanie Martinez of McGuireWoods LLP, Virginia, USA. Respondent is Gidi Media (“Respondent”), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <brinkscourier.online>, 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.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to Forum electronically on January 27, 2023; Forum received payment on January 27, 2023.
On January 27, 2023, Namecheap, Inc. confirmed by e-mail to Forum that the <brinkscourier.online> 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 3, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 23, 2023 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@brinkscourier.online. Also on February 3, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On March 3, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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
i) Complainant, Brink’s Network, Incorporated, provides route-based secure logistics and solutions, including international transportation of cash and valuables. For the past 163 years, Complainant has worked assiduously to build a substantial reservoir of consumer goodwill for its services and the family of BRINKS-formative marks. Complainant has rights in the BRINK’S mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,309,375, registered December 11, 1984). The disputed domain name is confusingly similar to Complainant’s mark because it contains the BRINK’S mark in its entirety, merely adding the generic term “courier”, and the generic top-level domain (“gTLD”) “.online” to form the disputed domain name.
ii) Respondent does not have rights or legitimate interests in the disputed domain name. Respondent is not licensed or authorized to use the BRINK’S mark and is not commonly known by the disputed domain name. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Respondent uses the disputed domain name for competing services. The webpages hosted at the disputed domain name reinforce the confusion by using, without authorization, Complainant’s well-known BRINKS marks and logo and falsely suggesting to consumers that Respondent’s webpages are associated with or sponsored by Complainant.
iii) Respondent registered and uses the disputed domain name in bad faith. Respondent uses the disputed domain name to attract Internet users for financial gain by offering competing services. The webpages hosted at the disputed domain name directly copy Complainant’s BRINKS logo mark, with minimal changes, in a blatant attempt to pass off Respondent’s business as a legitimate business authorized by Complainant. Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the BRINK’S mark. Respondent’s bad faith is demonstrated by the fact the disputed domain name presents a textbook case of cybersquatting, given that the disputed domain name is virtually identical to the BRINKS mark.
B. Respondent
Respondent did not submit a response in this proceeding.
1. The disputed domain name was registered on November 25, 2022.
2. Complainant has established rights in the BRINK’S mark based upon registration with the USPTO (e.g., Reg. No. 1,309,375, registered December 11, 1984).
3. The disputed domain name’s resolving webpages directly copy Complainant’s BRINKS logo mark, with minimal changes.
4. The disputed domain name’s resolving webpages offer competing services with Complainant.
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 asserts rights in the BRINK’S mark based upon registration with the USPTO (e.g., Reg. No. 1,309,375, registered December 11, 1984). Registration of a mark with the USPTO is considered a valid showing of rights under Policy ¶ 4(a)(i). Since Complainant has provided evidence of registration of the BRINK’S mark with the USPTO, the Panel finds that Complainant has established rights in the mark under Policy ¶ 4(a)(i).
Complainant contends the disputed domain name <brinkscourier.online> is confusingly similar to Complainant’s mark. The addition of the generic terms, and the gTLD “.com” to form the disputed domain name is insufficient in distinguishing a disputed domain name from a mark per Policy ¶ 4(a)(i). 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 Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).). The disputed domain name incorporates the BRINK’S mark in its entirety, merely adding the generic term “courier”, and the generic top-level domain (“gTLD”) “.online.” Therefore, the Panel finds that the disputed domain name is confusingly similar to the BRINK’S mark under Policy ¶ 4(a)(i).
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”).
Complainant asserts Respondent does not have rights or legitimate interests in the disputed domain name as Respondent is not licensed or authorized to use the BRINK’S mark and is not commonly known by the disputed domain name. 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 H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.”). 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 Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The unmasked WHOIS information for the disputed domain name lists the registrant as “Gidi Media.” The Panel thus finds Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Complainant claims Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Respondent uses the disputed domain name for offering competing services with Complainant. Use of a well-known mark to attract Internet users to a disputed domain name where a respondent sells competing services to a complainant is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Vanguard Trademark Holdings USA LLC v. Dan Stanley Saturne, FA 1785085 (Forum June 8, 2018) (“Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use” where “Respondent is apparently using the disputed domain name to offer for sale competing services.”); see also General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). As support, Complainant points to the use of the BRINK’S mark in the disputed domain name and BRINK’S marks and logos on the resolving webpage, the offering of competing transportation and logistics services, the inclusion of a “Get a Quote” link that leads to a dead site, the appearance of routine cybersquatting based on multiple similar websites containing the same review with unique wording, inconsistent and allegedly false contact information given on the website, as well as unrelated information in the “Haulage” section of the website. Therefore, the Panel finds that Respondent does not use the disputed domain name for any bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. 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 has no rights or legitimate interests in the disputed domain name.
Complainant asserts Respondent registered and uses the disputed domain name in bad faith as Respondent uses the disputed domain name to attract Internet users for financial gain by offering competing services. Any attempt to commercially benefit from a likelihood of confusion is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See ShipCarsNow, Inc. v. Wet Web Design LLC, FA1501001601260 (Forum Feb. 26, 2015) (“Respondent’s use of the domain name to sell competing services shows that Respondent is attempting to commercially benefit from a likelihood of confusion. Therefore the Panel finds that a likelihood of confusion exists, that Respondent is attempting to commercially benefit from Complainant’s mark, and that Complainant has rights that predate any rights of the Respondent, all of which constitutes bad faith under Policy ¶ 4(b)(iv).”); see also MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
The Panel recalls that Complainant points to the use of the BRINK’S mark in the disputed domain name and BRINK’S marks and logos on the resolving webpage, the offering of competing transportation and logistics services, the inclusion of a “Get a Quote” link that leads to a dead site, the appearance of routine cybersquatting based on multiple similar websites containing the same review with unique wording, inconsistent and allegedly false contact information given on the website, as well as unrelated information in the “Haulage” section of the website. Therefore, the Panel finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant further argues that Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the BRINK’S mark. Complainant points to the distinctiveness of the BRINK’S mark and the use of Complainants mark in the disputed domain name and similar logos on the resolving website which offers the same services as Complainant in the same geographic areas. The Panel infers, due to the notoriety of Complainant’s mark and the manner of use of the disputed domain name that Respondent had knowledge of Complainant’s rights in the BRINK’S mark at the time of its registering the disputed domain name, and finds that Respondent registered the disputed domain in bad faith under 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 <brinkscourier.online> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: March 3, 2023
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