Brown Brothers Harriman & Co. v. zbt / ef li
Claim Number: FA2306002047108
Complainant is Brown Brothers Harriman & Co. (“Complainant”), represented by Allen J. Baden of Baden Law Firm PC, Texas, USA. Respondent is zbt / ef li (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bbhvote.com> (“Domain Name”), registered with NameSilo, LLC.
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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to Forum electronically on June 1, 2023; Forum received payment on June 1, 2023.
On June 1, 2023, NameSilo, LLC confirmed by e-mail to Forum that the <bbhvote.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, LLC 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 June 1, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 21, 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@bbhvote.com. Also on June 1, 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 June 27, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Nicholas J.T. Smith 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
Complainant, Brown Brothers Harriman & Co., offers investor services, investment management, and private banking. Complainant has rights in the BBH mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,594,879, registered on March 24, 2009). Respondent’s <bbhvote.com> domain name is identical or confusingly similar to Complainant’s BBH mark as it merely adds the term “vote” and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <bbhvote.com> domain name. Respondent is not commonly known by the Domain Name, nor has Complainant authorized or licensed Respondent to use its BBH mark in the Domain Name. Respondent does not use the Domain Name for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use, as Domain Name resolves to a webpage (“Respondent’s Website”) where Respondent attempts to create a false sense of affiliation with Complainant.
Respondent registered and uses the <bbhvote.com> domain name in bad faith. Respondent’s Website disrupts Complainant’s business as Respondent registered the Domain Name to confuse or mislead users as to Respondent’s affiliation with Complainant. Additionally, Respondent engages in opportunistic bad faith and registered the Domain Name with actual knowledge of Complainant’s rights in the BBH mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the BBH mark. The Domain Name is confusingly similar to Complainant’s BBH mark. Complainant has established that Respondent lacks rights or legitimate interests in the Domain Name and that Respondent registered and has used the Domain Name in bad faith.
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 has rights in the BBH mark through its registration of the mark with the USPTO (e.g., Reg. No. 3,594,867, registered on March 24, 2009). Registration with the USPTO can sufficiently establish rights in a mark under Policy ¶ 4(a)(i). See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a national trademark authority).
The Panel finds that the <bbhvote.com> domain name is confusingly similar to Complainant’s BBH mark because it wholly incorporates Complainant’s BBH mark and adds the generic term “vote” and the gTLD “.com.” Adding a generic term and a gTLD to a mark to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”); see also Dell Inc. v. pushpender chauhan, FA 1784548 (Forum June 11, 2018) (“Respondent merely adds the term ‘supports’ and a ‘.org’ gTLD to the DELL mark. Thus, the Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s DELL mark per Policy ¶ 4(a)(i).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the 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 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (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.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the BBH mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. 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)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS lists “zbt / ef li” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).
The Domain Name resolves to the Respondent’s Website. The Respondent’s Website purports to be a website where visitors can pick analysts who work for Complainant as part of a stock tipping competition. The Respondent’s Website states that this competition is organised by the Complainant, sponsored by various competitors of Complainant and the winner of the contest receives a US$100 million prize. As set out in the Complaint, none of these statements are true and the Domain Name and Respondent’s website is being used by Respondent to create a false sense of affiliation with Complainant. The use of a confusingly similar domain name to redirect to a website that creates a false sense of affiliation does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use of the name under Policy ¶¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds on the balance of probabilities that, at the time Respondent registered the Domain Name, May 22, 2023, Respondent had actual knowledge of Complainant’s BBH mark since the Complainant is a well-known entity and the Respondent’s Website falsely asserts that it is operated by the Complainant, including providing details about analysts employed by Complainant. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and uses the Domain Name in bad faith as Respondent uses the Domain Name to falsely assert that it is the Complainant and run a fake competition purportedly associated with the Complainant. Undoubtedly Respondent is seeking to profit commercially from confusion thus caused among Internet users as to the Complainant’s association with the Domain Name. Such use amounts to bad faith registration and use per Policy ¶ 4(b)(iv). See D Michigan, Inc. v. Petersons Auto., FA 135608 (Forum January 8, 2003) (finding that a disputed domain name was registered and used in bad faith within the compass of Policy ¶ 4(b)(iv) where that respondent used the domain name to attract Internet users to its fraudulent website by using a UDRP complainant’s famous marks and likeness). Accordingly, the Panel finds that Respondent registered and uses the Domain Name in bad faith pursuant to Policy ¶ 4(b)(iv).
The Panel finds Complainant has satisfied 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 <bbhvote.com> domain name be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: June 28, 2023
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