The Complainant is Brother Industries, Ltd., Japan, represented by Davis Wright Tremaine LLP, United States of America (“US”).
The Respondent is Domain Admin, Privacy Protect, LLC (PrivacyProtect.org), United States of America / Mitchell Stark, Sequrity System, India.
The disputed domain name <brother-customerservice.com> (the “Disputed Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 27, 2020. On August 28, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 29, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 31, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 1, 2020.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 2, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 22, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 23, 2020.
The Center appointed Nick J. Gardner as the sole panelist in this matter on October 8, 2020. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Complainant is a multinational electronics company headquartered in Japan. It owns numerous registered trademarks for the word BROTHER including for example US registration No. 0800652 registered on December 21, 1965. These trademarks are referred to collectively in this decision as the “BROTHER trademark”. The Complainant has traded under the name “Brother” for over fifty years.
The Complainant uses various domain names including the BROTHER trademark to promote its business including <global.brother> and <brother-usa.com>.
The Disputed Domain Name was registered on July 2, 2019. It is linked to a website which purports to be an official site operated by the Complainant. It contains for example the following text:
“Brother Customer Service is one of the great brands that produce quality creative items for the printer and imaging, naming and sewing markets. Key items incorporate Laser Printers, Multi-Function Centers (MFCs), Fax machines, Label printers, and a wide scope of Home and Industrial Sewing Machines. A confided in brand worldwide that has confidence in the “Client First” approach in all parts of our business, Brother has constantly met the changed needs of our clients through our far-reaching scope of value arrangements. Our Brother Customer Support team are ready 24*7 for you.”
The Complainant’s case can be summarized as follows.
a) The Disputed Domain Name is confusingly similar to the BROTHER trademark. It simply adds the generic non-distinguishing words “customer” and “service”.
b) The Respondent does not have any rights or legitimate interests in the Disputed Domain Name.
c) The Respondent has registered and used the Disputed Domain Name in bad faith. The Disputed Domain Name must have been registered with knowledge of the Complainant and its trademark rights. The use by the Respondent of the word “brother” in combination with descriptive terms suggests that the Respondent is authorized by the Complainant when it is not. This is reinforced by the content of the Respondent’s website which suggest it is an official website of the Complainant when it is not. This is tricking people into doing business with the Respondent. This amounts to bad faith.
The Respondent did not reply to the Complainant’s contentions.
Preliminary Matters
The Panel notes that no communication has been received from the Respondent. However, given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar, then the Panel considers that this satisfies the requirement in paragraph 2(a) of the UDRP Rules to “employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent’s failure to file any Response. While the Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default (see, e.g., Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909).
The Panel also notes this is a case where one Respondent (“Domain Admin, Privacy Protect, LLC (PrivacyProtect.org)”) appears to be a privacy or proxy service.
The Panel in this case adopts the approach of most UDRP panels, as outlined in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 4.4.5, as follows:
“Panel discretion
In all cases involving a privacy or proxy service and irrespective of the disclosure of any underlying registrant, the appointed panel retains discretion to determine the respondent against which the case should proceed.
Depending on the facts and circumstances of a particular case, e.g., where a timely disclosure is made, and there is no indication of a relationship beyond the provision of privacy or proxy registration services, a panel may find it appropriate to apply its discretion to record only the underlying registrant as the named respondent. On the other hand, e.g., where there is no clear disclosure, or there is some indication that the privacy or proxy provider is somehow related to the underlying registrant or use of the particular domain name, a panel may find it appropriate to record both the privacy or proxy service and any nominally underlying registrant as the named respondent.”
In the present case the Panel considers the substantive Respondent to be Mitchell Stark, Sequrity System and references to the Respondent are to these.
Substantive Matters
Paragraph 4(a) of the Policy states that the Complainant must prove each of the three following elements:
(i) the Disputed Domain Name is identical with or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name;
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
The Complainant has submitted detailed evidence that it is the owner of various trademarks consisting of the word BROTHER.
Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trademark for purposes of the Policy, “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name” (see Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662). In the present case the addition of the non-distinctive term “customerservice”) does not suffice to negate the similarity between the Disputed Domain Name and the Complainant’s BROTHER trademark. In this regard it is established that, where a mark is the distinctive part of a disputed domain name, the disputed domain name is considered to be confusingly similar to the registered mark (DHL Operations B.V. v. DHL Packers, WIPO Case No. D2008-1694). It is also established that the addition of a descriptive term to the disputed domain name has little, if any, effect on a determination of legal identity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does not exclude the confusing similarity (PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189).
It is also well established that the specific Top-Level Domain (in this case “.com”) does not affect the domain name for the purpose of determining whether it is identical or confusingly similar – see for example Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
Accordingly the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.
Paragraph 4(c) of the Policy non-exhaustively lists three circumstances that demonstrate a right or legitimate interest in the domain name:
i. before any notice to you of the dispute, your use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
ii. you (as an individual, business or other organisation) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
iii. you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the BROTHER trademark.
The Complainant has prior rights in the BROTHER trademark which precede the Respondent’s registration of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Names and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see for example Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Panel finds that the Respondent has failed to produce any evidence to establish any rights or legitimate interests in the Disputed Domain Name. Accordingly the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled.
In the present case, the Panel concludes that it is inconceivable that the Respondent selected the Disputed Domain Name independently and without knowledge of the Complainant or its products. The website operated by the Respondent to which the Disputed Domain Name resolves is clearly masquerading as an official website operated by or on behalf of the Complainant and the Panel has no doubt the Respondent was by use of the Disputed Domain Name seeking to suggest it had a connection with the Complainant in the course of trade, by inaccurately suggesting that it was a website which was operated as part of the Complainant’s BROTHER business. In short it was attracting customers by masquerading as the Complainant. As such its behaviour clearly amounts to that specified in paragraph 4(b)(iv) of the Policy as being evidence of registration and use in bad faith, namely “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”.
Accordingly the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith and the third condition of paragraph 4(a) of the Policy has been fulfilled.
For all the foregoing reasons, in accordance with paragraphs 4 of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <brother-customerservice.com> be transferred to the Complainant.
Nick J. Gardner
Sole Panelist
Date: October 22, 2020