Brasfield & Gorrie, L.L.C. v. James Burns
Claim Number: FA2304002039262
Complainant is Brasfield & Gorrie, L.L.C. (“Complainant”), USA, represented by Johnny L. Banks III of BALCH & BINGHAM, LLP, Alabama, USA. Respondent is James Burns (“Respondent”), Missouri, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <brasfieldqorrie.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.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to Forum electronically on April 7, 2023; Forum received payment on April 7, 2023.
On April 7, 2023, NameCheap, Inc. confirmed by e-mail to Forum that the <brasfieldqorrie.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 April 14, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 4, 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@brasfieldqorrie.com. Also on April 14, 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 May 11, 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, Brasfield & Gorrie, L.L.C., is a construction company. Complainant has rights in the BRASFIELD & GORRIE mark through trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,653,412, which was registered on November 26, 2002). The disputed domain name is identical or confusingly similar to the BRASFIELD & GORRIE mark as it merely changes a letter.
ii) Respondent lacks rights or legitimate interests in the disputed domain name since Respondent is not commonly known by the disputed domain name. Respondent also does not use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use. The disputed domain name resolves to an inactive page and is being used as an email for phishing.
iii) Respondent registered and uses the disputed domain name in bad faith by failing to actively use the domain name and phishing.
B. Respondent
Respondent did not submit a response in this proceeding.
1. The disputed domain name was registered on March 22, 2023.
2. Complainant has established rights in the BRASFIELD & GORRIE mark through trademark registrations with the USPTO (e.g., Reg. No. 2,653,412, which was registered on November 26, 2002).
3. The disputed domain name resolves to an inactive page and is being used as an email for phishing.
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 claims rights in the BRASFIELD & GORRIE mark through trademark registrations with the USPTO (e.g., Reg. No. 2,653,412, which was registered on November 26, 2002). Registration of a mark with the USPTO is a valid showing of rights in a mark under Policy ¶ 4(a)(i). Since Complainant provides evidence of registration of the BRASFIELD & GORRIE mark with the USPTO, the Panel finds that Complainant has established rights in the BRASFIELD & GORRIE mark per Policy ¶ 4(a)(i).
Complainant argues the disputed domain name <brasfieldqorrie.com> is identical or confusingly similar to its BRASFIELD & GORRIE mark since it simply exchanges the letter “G” for a “Q.” Misspelling a mark, such as through exchanging letters, is insufficient to defeat a finding of confusing similarity. See Omaha Steaks International, Inc. v. DN Manager / Whois-Privacy.Net Ltd, FA 1610122 (Forum July 9, 2015) (finding, “The domain name differs from the mark only in that the domain name substitutes the letter ‘a’ in the word ‘steak’ with the letter ‘c’ and adds the generic top-level domain (‘gTLD’) ‘.com.’ These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy.”). Given that Respondent only misspells the BRASFIELD & GORRIE mark by a single letter, the Panel finds the disputed domain name is confusingly similar to Complainant’s BRASFIELD & GORRIE 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 argues Respondent has no rights or legitimate interests in the disputed domain name because Respondent is not commonly known by the disputed domain name. In the absence of a response, WHOIS information may be used to determine whether a respondent is commonly known by the disputed 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). The WHOIS information for the disputed domain name lists the registrant as “James Burns.” Therefore, the Panel finds Respondent is not commonly known by, and lacks rights or legitimate interests in, the disputed domain name per Policy ¶ 4(c)(ii).
Complainant also argues the disputed domain name resolves to a blank page. A respondent’s failure to actively use a disputed domain name or associate content with a domain name may show a respondent lacks rights or legitimate interests. See Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) (“both Domain Names resolve to a web site that shows the words, ‘Not Found, The requested URL / was not found on this server.’ Inactive holding of a domain name does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii).”). Complainant provides a screenshot showing the disputed domain name resolves to an error page which states, “This site can’t be reached.” The Panel finds Respondent’s failure to actively use the disputed domain name as evidence Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
Lastly, Complainant claims Respondent uses the disputed domain name for an email phishing scheme. Phishing has consistently been found not to confer rights or legitimate interests. See Chevron Intellectual Property LLC v. Thomas Webber / Chev Ronoil Recreational Sport Limited, FA 1661076 (Forum Mar. 15, 2016) (finding that the respondent had failed to provide a bona fide offering of goods or services or any legitimate noncommercial or fair use, stating, “Respondent is using an email address to pass themselves off as an affiliate of Complainant. Complainant presents evidence showing that the email address that Respondent has created is used to solicit information and money on false pretenses. The disputed domain name is being used to cause the recipients of these emails to mistakenly believe Respondent has a connection with Complainant and is one of the Complainant’s affiliates.”). Complainant provides an email from one of Complainant’s clients received from the disputed domain name soliciting wiring account information. As the Panel determines Respondent uses the disputed domain name for phishing, it finds that Respondent has no rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
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 argues the disputed domain name resolves to an inactive site. A respondent’s failure to actively use a disputed domain name may support finding bad faith. The Panel agrees that the passive holding of a domain name does not necessarily circumvent a finding that the domain name is being used in bad faith within the requirements of paragraph 4(a)(iii) of the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (finding that in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the panel must give close attention to all the circumstances of the respondent’s behavior, and a remedy can be obtained under the Policy only if those circumstances show that the respondent’s passive holding amounts to acting in bad faith.)
The particular circumstances of this case that the Panel has considered are:
i) Complainant has been using its mark BRASFIELD & GORRIE for over 50 years since 1967;
ii) The disputed domain name is being used as an email for phishing; and
iii) Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name.
Taking into account all of the above, the Panel concludes that Respondent’s passive holding of the disputed domain name constitutes bad faith under Policy, paragraph 4(a)(iii) and that Respondent is using the disputed domain name in bad faith.
Complainant further claims the disputed domain name is being used as a fraudulent email for phishing. Phishing may be independent evidence of bad faith. See Zoetis Inc. and Zoetis Services LLC v. VistaPrint Technologies Ltd, FA 1506001623601 (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).”). As indicated above, Respondent attempts to solicit wire transfer account information from one of Complainant’s clients. The Panel determines Respondent is phishing, and thus it finds Respondent registered and uses the disputed domain name in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <brasfieldqorrie.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: May 15, 2023
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