The Complainant is Brixmor Property Group Inc., United States of America (“United States”), represented by Neal, Gerber & Eisenberg LLP, United States.
The Respondent is Privacy Hero, Inc., Turks and Caicos Islands / Domain Admin, Honey Salt ltd, Turks and Caicos Islands, represented by Orrick, Herrington & Sutcliffe, LLP, United States.
The disputed domain name <brixmor.sucks> is registered with Rebel Ltd (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 24, 2021. On May 25, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 27, 2021, 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 May 27, 2021 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 May 28, 2021.
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 June 2, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 22, 2021. The Respondent requested an extension to file a response and the new Response due date was June 26, 2021. The Response was filed with the Center June 26, 2021. On June 28, 2021, the Respondent filed a supplemental filing, following which the Complainant submitted a supplemental filing on July 2, 2021.
The Center appointed Kiyoshi Tsuru, Douglas M. Isenberg, and Stephanie G. Hartung as panelists in this matter on July 22, 2021. The Panel finds that it was properly constituted. Each member of 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.
In accordance with Paragraphs 10 and 12 of the Rules, the Panel has decided to admit the Respondent’s and the Complainant’s supplemental filings. This, in order to provide the Parties with a fair opportunity to present their case (see section 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
The Complainant is Brixmor Property Group Inc., a real estate investment trust incorporated in the United States in 2003.
The Respondent was established in February 2020 to register and hold domain names for the benefit of a non-profit organization, Everything.sucks Inc., which provides Wiki-style pages at <everything.sucks>.
The Complainant owns the following trademark registrations, among others:
|
Mark |
Registration no. |
Registration Date |
Classes |
Jurisdiction |
|
BRIXMOR |
4,269,899 |
January 1, 2013 |
36, 37 |
United States |
|
BRIXMOR PROPERTY GROUP |
4,589,095 |
August 19, 2014 |
37 |
United States |
|
BRIXMOR PROPERTY GROUP |
4,385,614 |
August 13, 2013 |
36 |
United States |
The Complainant is the registrant of multiple domain names, including <brixmor.com>, <brixmor.org>, <brixmor.biz>, <brixmor.net>, and <brixmor.us>.
The disputed domain name was registered on January 3, 2021, and resolves to a website that contains information and comments about the Complainant, as well as several other links to similar websites.
I. Identical or Confusingly Similar
That the disputed domain name is identical and confusingly similar to its BRIXMOR and BRIXMOR PROPERTY GROUP marks.
That the addition of the generic Top-Level-Domain (“gTLD”) “.sucks” is irrelevant and does not distinguish the disputed domain name from the BRIXMOR and BRIXMOR PROPERTY GROUP marks.
II. Rights or Legitimate Interests
That the Respondent has no legal relationship with the Complainant, who has not consented to or authorized the registration of the disputed domain name. That the Complainant has objected the registration and use of the disputed domain name.
That the Respondent has not been commonly known as BRIXMOR or as <brixmor.sucks>. That the Respondent does not have any trademark registrations for BRIXMOR.
That the mere registration of a domain name does not confer trademark rights upon the registrant, and that such rights can only arise from the bona fide offering of goods and services. That the Respondent is not making a bona fide offering of goods or services. That, on the contrary, the Respondent is using the disputed domain name to redirect traffic to its website where there are other links to other “.sucks” websites that are for sale to third parties.
That the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. That the disputed domain name was offered for sale for USD 2,598, which exceeds out-of-pocket costs.
That the website to which the disputed domain name resolves indicates that it can be transferred for free to anyone who wants it. However, that this is not accurate, since said site requires users to bid for the disputed domain name.
That the disputed domain name is only a pretext for the Respondent’s cybersquatting, commercial activity, and tarnishment, none of which constitutes fair use; that this argument is supported by comments of third parties, which appear to be fake and/or automatically generated, to make the Respondent’s site appear as a legitimate criticism site.
That even if third parties’ comments were to be proven legitimate, the Respondent cannot claim that the use of the disputed domain name is for a legitimate, noncommercial fair use, such as a gripe site, since the Respondent is not exercising free speech rights itself.
That even if the website to which the disputed domain name resolves were a legitimate gripe site, such situation would not confer legitimate rights to the Respondent to register a domain name identical to the Complainant’s mark.
III. Registered and Used in Bad Faith
That the Respondent has registered and used the disputed domain name in bad faith with full knowledge of the BRIXMOR trademark.
That it is not plausible that the Respondent innocently registered the disputed domain name without the intention to exploit its similarity to the BRIXMOR trademark.
That the content of the website to which the disputed domain name resolves clearly refers to the Complainant, which demonstrates that the Respondent was aware of the Complainant and its BRIXMOR trademark.
That by virtue of the Complainant’s United States federal trademark registrations, the Respondent had actual knowledge of the Complainant’s rights in the BRIXMOR marks when the disputed domain name was registered.
That the Respondent intends to take advantage of the popularity of the Complainant’s trademark to redirect traffic, for commercial gain, to its own website, which indicates that the Respondent registered and is using the disputed domain name in bad faith.
That the Respondent registered and is using the disputed domain name, primarily, to resell it for out-of-pocket expenses, which constitutes registration and use in bad faith.
That the disputed domain name has not been used in connection to any genuine, noncommercial criticism, since the alleged third parties’ comments are being automatically generated or fabricated, rather than being left by individuals with genuine criticism.
That the Respondent is using the disputed domain name as a pretext to seek to legitimize its improper conduct, which aims to increase traffic to the web site associated with the disputed domain name, and the other “.sucks” domain names that are linked therein, which are also for sale.
That the disputed domain name was offered for sale for more than out-of-pocket costs of USD 2,598, which supports the fact that the Respondent registered and is using the disputed domain name in bad faith.
That the Respondent has incurred in a pattern of abusive registrations of gTLD “.sucks” domain names, some of which have been subject to domain name disputes under the Policy, which is further evidence of bad faith.
I. Identical or Confusingly Similar
The Respondent denies that the disputed domain name is identical to the Complainant’s trademark. It argues that the addition of a criticism gTLD such as “.sucks”, and its pejorative nature, instantly and obviously makes it nonidentical and prevents confusion.
That the inclusion of the gTLD “.sucks” makes abundantly clear that the website to which the disputed domain name resolves is not affiliated with the Complainant, and that it is linked to criticism content.
II. Rights or Legitimate Interests
That previous panels have repeatedly ignored the Respondent’s arguments and have failed to hold the Complainant to its burden of proof in a rush to issue a judgment against the Respondent.
That panels have ignored Boehringer Ingelheim Pharma GmbH & Co. KG v Honey Salt Ltd., CAC Case No. 103141, also involving the Respondent, in which the panel gave due weight to the Respondent’s evidence that it “uses or intends to use the disputed domain name for the purposes of legitimate criticism and free expression”, and in which the panel decided that the complainant had not made a prima facie case that the Respondent lacked rights or legitimate interests in the disputed domain name, especially in light of the “.sucks” gTLD.
That the Complainant fails to prove that the disputed domain name intends to misleadingly divert consumers or to tarnish the Complainant’s trademark because the disputed domain name is being used legitimately and fairly.
That using a trademark for criticism and commentary is noncommercial fair use. That it is irrelevant whether the Respondent is posting the criticism or is providing a forum for third parties to do so. That providing a forum for others to exercise free speech rights constitutes in itself a legitimate interest.
That the disputed domain name resolves to a genuine criticism site that provides a forum for criticism and discussion. That therefore the Complainant’s arguments that the website does not appear to be genuine are irrelevant, and factually incorrect.
That the fact that, before March 12, 2021, the disputed domain name was offered for sale, does not constitute in itself illegitimate use.
That the disputed domain name is available to be transferred for free.
That the disputed domain name is not misleading and there is no tarnishment of the Complainant’s trademark since the presence of the gTLD “.sucks” makes it clear that it is a criticism website and that is not affiliated with the Complainant.
That the website to which the disputed domain name resolves is substantially different from the Complainant’s, and that it contains critical content from employees and customers of the Complainant. That therefore visitors cannot be under the illusion that it is owned by the Complainant or in any way endorsed by the Complainant.
III. Registered and Used in Bad Faith
That the level of traffic on the website to which the disputed domain name resolves is irrelevant since there are no pay-per-click advertisements, and because the Respondent has offered to transfer it for free.
That previous panels have found that the use of a complainant’s trademark for the purpose of directing visitors to a website that provides commentary, criticism, and review of the Complainant is a legitimate fair use.
That the Respondent did not reply to the Complainant’s letters because they were addressed to Privacy Hero, Inc., not to the Respondent. That even assuming the letters were forwarded to the Respondent, the significant amount of correspondence that the Respondent receives makes it impossible to respond to every piece.
That the Complainant did not have to wait for a response, since on March 12, 2021, the authorization code for the free transfer of the disputed domain was made available to the Complainant.
That the Complainant did not provide any evidence that shows that the Respondent registered the disputed domain name for the purpose of selling it.
That the fact the Respondent has registered several “.sucks” domain names does not evidence a “pattern of abusive registration”.
That the Complainant did not prove that the Respondent registered the disputed domain name to attract users for commercial gain.
At the outset, the Panel would remind the Parties that nothing new has been presented in these filings. Moreover neither Party sought leave to submit the same. Nevertheless, the Panel sets out their arguments below.
I. Respondent
The Respondent filed a supplemental filing consisting of a declaration of the Domain Name Manager of the Respondent.
That the Respondent registers and holds domain names for the benefit of the non-profit organization Everything.sucks Inc. That Everything.sucks operates a no-cost forum for social activism and free expression. That it created a platform on which users may engage in active debate and post comments about issues they are passionate about, ranging from popular brands to the moon landing.
That the purpose of Everything.sucks is to allow users to create commentary pages related to causes, individuals, products, and companies. That after a user creates a page, the Respondent registers a domain name using the topic of the criticism using the gTLD “.sucks” to easily direct users who wish to engage in criticism of that topic.
That each page may aggregate news, comment feeds, and social media posts from third parties’ websites to create additional context to Everything.sucks’ own generated content.
That all the pages feature the same visual layout and branding. That the branding ties the site visually to the Everything.sucks platform, as opposed to that of the Complainant’s website. That therefore no reasonable person would mistake the website to which the disputed domain name resolves with the Complainant’s official website.
That the Respondent registered the disputed domain name to promote free speech, commentary, and feedback as a permitted fair use and not to confuse consumers, compete with the Complainant, or sell competing products.
That all content is genuinely sourced, either from individual users, or aggregated from other legitimate news and review sites. Because aggregated sources are generated based on keywords, it is possible that some irrelevant information may be included from time to time.
That in March 2021 language was added to each Everything.sucks Wiki page to make it clearer that Honey Salt and Everything.sucks are not in the business of obtaining domain names to resell them. That therefore, an authorization code was included so that anyone who wanted the disputed domain name or any other could transfer it for free.
That the Complainant did not take advantage of the authorization code. That the Complainant is more interested in imposing legal fees and expenses to Respondent than actually owning the disputed domain name.
That the disputed domain name has not been listed for sale since March 12, 2021. That the Respondent has every intention of following through on the free transfer via authorization code as described on the bottom of the Respondent’s web sites, if an interested party should request it.
That none of the pages on Everything.sucks feature pay-per-click advertisements or have ever featured pay-per-click advertisements. That the links featured in the disputed domain name are internal navigation aids to direct users to other topics in the platform.
II. Complainant
That no bright line exists regarding the argument made by the Respondent that the inclusion of the gTLD “.sucks” would instantly and obviously render the disputed domain name non-identical and prevent confusion with the Complainant’s trademark. That on the contrary, as stated in the WIPO Overview 3.0, a disputed domain name consisting of a trademark and a negative or pejorative term is considered confusingly similar to the Complainant’s trademark for purposes of satisfying the first element.
That panels have stated that there is a risk of confusion among Internet users whose first language is not the language of the disputed domain name because “they are unlikely to recognize the negative connotations of the word that is attached to the trademark”, and that permitting standing for “.sucks” domain names avoids “gaming scenarios”, whereby the addition of the gTLD “.sucks” would potentially result in these cases falling out of the reach of the UDRP.
That the Respondent’s argument that the disputed domain name must be viewed in the context of the website to which the disputed domain name resolves is misplaced. That the language of the Policy clearly states that the Panel should not consider the context of the website when studying if the disputed domain name is identical or confusingly similar. Therefore, the content of the Respondent’s website has no place in the analysis of the first element.
That the Respondent claims that the Panel should not consider prior unfavorable decisions against them, since those panels ignored crucial facts such as the declaration submitted by the Respondent in its supplemental filing, as well as the Respondent's method for seeking and aggregating criticism, and that the Respondent never directly contacted the Complainant to sell the disputed domain name. That prior panels did consider these facts, and that they found that the Respondent could not establish any rights to or legitimate interests in the relevant domain names.
That the Respondent admits that it holds domain names for the benefit of a non-profit organization and that it uses those domain names to host a website that allows third parties to post criticism of the Complainant’s business. That the Respondent argues that these facts are irrelevant to determine whether the Respondent is making a fair use of the disputed domain name. That this is not true, since the Policy requires that the Respondent be the one exercising free speech rights, not third parties.
That the Respondent’s admissions weigh in favor of finding that the Respondent fails to demonstrate any fair use or legitimate interest in the disputed domain name.
That the Respondent does not deny that the website to which the disputed domain name resolves only requires third parties to provide their “First Name or Nickname”, and that the Respondent did not provide any evidence showing that independent users have posted any of the reviews related to the Complainant.
That the Respondent does not deny that all of the alleged comments include the commentator’s job title and employment status when the Respondent’s Comment Submission Form does not collect that information, which casts extreme doubt on the validity of said comments. That the Respondent’s claims that it also “aggregates” comments from third party’s websites, which means that the comments on the disputed domain name have not been left by any of the alleged users, but by users of third parties’ websites.
That the Respondent does not provide any evidence showing that the comments related to the Complainant and the disputed domain name are genuine. That the Respondent has failed to demonstrate any legitimate interests or genuine, noncommercial fair use of the disputed domain name, and furtherly establishes that the use of the disputed domain name is a pretext for cybersquatting.
That the Respondent did not deny that it offered the disputed domain name for USD 2,598. That instead, the Respondent claims that the Complainant cannot show that the Respondent “intended to gain some competitive advantage” from the disputed domain name since the Respondent now offers to transfer the disputed domain name for free. That the use of the disputed domain name was commercial, as the use of the Complainant’s trademark was used to draw traffic to the website, where the Respondent has cross-linked to other “.sucks” domain names.
That the Respondent tries to misrepresent to the Panel that the Complainant “has never taken advantage of this offer” to obtain the disputed domain name for free. However, the Complainant did provide the authorization code to several leading registrars, all of which stated the disputed domain name was not available for transfer. That the Respondent did not provide any evidence showing that it has transferred a “.sucks” domain name for free.
The Complainant must prove that the three elements of paragraph 4(a) of the Policy have been met:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests with respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Panel finds that the disputed domain name <brixmor.sucks> is identical to the Complainant’s trademark BRIXMOR, as the disputed domain name incorporates the mark in its entirety (see section 1.7 of the WIPO Overview 3.0; see also Alfred Dunhill, Inc. v. Registration Private, Domains By Proxy, LLC / Abdullah Altubayieb, WIPO Case No. D2017-0209).
The addition of the gTLD “.sucks” to the disputed domain name constitutes a technical requirement of the Domain Name System (“DNS”). Therefore, it has no legal significance in the analysis of the first element of the Policy (see CARACOLITO S SAS v. Nelson Brown, OXM.CO, WIPO Case No. D2020-0268). This Panel follows Sanofi v. Privacy Hero Inc. / Honey Salt ltd, pat honey salt, WIPO Case No. D2020-2836 in that “the practice of disregarding the TLD in determining identity or confusing similarity is applied irrespective of the particular TLD (including with regard to “new gTLDs”)”, such as “.sucks”.
In light of the above, the first element of the Policy has been met.
Paragraph 4(c) of the Policy sets forth the following examples as circumstances where a respondent may have rights or legitimate interests in the disputed domain name:
(i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if it did no acquire trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial 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.
Notwithstanding that the burden of proof in proceedings substantiated under the Policy is on the side of the Complainant, previous panels appointed under said Policy have recognized that proving that a respondent lacks rights to or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element of the Policy shifts to the respondent to come forward with relevant evidence demonstrating actual rights to or legitimate interests in the domain name. If the respondent fails to produce such relevant evidence, the complainant is deemed to have satisfied the second element (see Sanofi v. Privacy Hero Inc. / Honey Salt ltd, pat honey salt, supra; see alsosection 2.1 of the WIPO Overview 3.0).
The Complainant has argued that the BRIXMOR mark is highly distinctive, that it has acquired significant goodwill, and that it has been extensively promoted. The Respondent has not contested these allegations. The Panel notes that the BRIXMOR mark does not correspond to a dictionary word and that this fanciful mark is related exclusively with the Complainant and its business, which suggests that the Respondent had the Complainant and its trademark BRIXMOR in mind when it registered the disputed domain name, and that it has targeted the said Complainant.
The Complainant alleges that the Respondent is not making a bona fide offering of goods and services, because it is using the disputed domain name to redirect traffic to its website where there are other links to different “.sucks” websites, and because the disputed domain name has been offered for sale for USD 2,598, which exceeds out-of-pocket costs.
The Respondent argues that it expressly communicates to the users of its websites that the “.sucks” domain names that it owns are not for sale, and that the disputed domain name has been available for transfer for free to anyone who wants it, via an authorization code that could be redeemed to obtain said disputed domain name. The Complainant contested this affirmation and submitted evidence showing that instead it was presented with an option to submit a bid for the disputed domain name.
Whether the disputed domain name would ultimately be offered to the Complainant for a fee or not this would not support a claim by the Respondent to a right or legitimate interest under the Policy insofar as paragraph 4(c)(iii) speaks to the registrant itself making a noncommercial or fair use of the relevant domain name, and not to the registrant offering it (again, for a fee or not) to a third party for their own registration.
In light of the above, the Complainant has made a prima facie case that the Respondent does not have rights to or legitimate interests in the disputed domain name.
The Complainant argues that the disputed domain name resolves to a forum containing unverifiable fake citations by third parties, which do not seem genuine and which are automatically generated, and that the Respondent has not submitted any explanation or evidence on why it believes these comments to be genuinely made by real people on specific dates. The Respondent contests this allegation. The case file contains evidence showing that Everything.sucks contains similar, standard comments that are phrased somewhat uniformly in relation to a significant number of different brands. The Respondent claims that these commentaries are genuine, and that they are sourced “from individual users or aggregated from other legitimate news and review sites”. The Respondent also argues that “aggregated sources are generated based on keywords”, and that therefore “it is possible that some irrelevant information may be inadvertently included from time to time”. This shows that insofar as the corresponding websites go, the comments related to the brands targeted by the Respondent and Everything.sucks are automatically generated (see Sanofi v. Privacy Hero Inc. / Honey Salt ltd, pat honey salt, supra; see also Association des Centres Distributeurs E. Leclerc - A.C.D. Lec. v. Privacy Hero Inc. / Honey Salt ltd, Pat Honeysalt, WIPO Case No. D2021-0186). Indeed, the Respondent effectively concedes this.
The Respondent’s claimed modus operandi, consisting of the registration of domain names that fully incorporate third party trademarks in order to cause themto resolve to websites that allegedly host genuine gripe fora, seems to have been engineered to create the appearance that there are genuine free speech issues associated to said domain names. The Respondent’s conduct has been consistent in a substantial number of cases resolved by panels appointed under the Policy, for example: Equinor ASA v. Redacted for Privacy, Privacy Hero Inc. / Pat Honey Salt, Honey Salt ltd., WIPO Case No. D2021-0796; Bureau Veritas v. Pat Honey Salt, Honey Salt ltd., WIPO Case No. D2021-0769; BforBank v. Privacy Hero Inc. / Pat Honey Salt, Honey Salt ltd., WIPO Case No. D2021-0765; Trivago N.V. v. Pat Honey Salt, Honey Salt ltd., WIPO Case No. D2021-0692; Bouygues SA v. Pat Honey Salt, Honey Salt ltd., WIPO Case No. D2021-0672; Association des Centres Distributeurs E. Leclerc – A.C.D. Lec. v. Privacy Hero Inc. / Honey Salt ltd, Pat Honeysalt, supra; Tetra Laval Holdings & Finance S.A. v. Privacy Hero Inc / Pat Honeysalt, Honey Salt Ltd., WIPO Case No. D2020-3398; Sanofi v. Privacy Hero Inc. / Honey Salt ltd, pat honey salt, supra; M and M Direct Limited v. Pat Honey Salt, Honey Salt Limited, WIPO Case No. D2020-2545; and Compagnie Générale des Établissements Michelin MC PROJECTS B.V Maastricht v. Pat Honey Salt, Honey Salt Limited, WIPO Case No. D2020-2517). All of these cases have been resolved in favor of the respective complainants.
This Panel agrees with precedents issued by panels previously appointed under the Policy in that the website to which the disputed domain name resolves is not a legitimate site that represents a genuine and fair exercise of free speech rights. On the contrary, it appears to be a pretext for cybersquatting and commercial activity (see section 2.6.1. of the WIPO Overview 3.0; see also Tetra Laval Holdings & Finance S.A. v. Privacy Hero Inc / Pat Honeysalt, Honey Salt Ltd., supra, Marc John Randazza v. Contact Privacy Inc. Customer 1248477621 / Don Juravin, WIPO Case No. D2020-3041; Sanofi v. Privacy Hero Inc./Honey Salt ltd, pat honey salt, supra, and Wikimedia Foundation Inc. v. Protected Domain Services - Customer ID: NCR 1181691 / webudaipur, web udaipur, WIPO Case No. D2011-0107).
This case is distinguished from some traditional cases involving the term “sucks”, in that rather than the disputed domain name (and the website to which it resolves) being the result of organic, specific, genuine and noncommercial criticism, a majority of the statements comprised in Everything.sucks seem to be generated by an algorithm that draw from aggregated sources based on keywords (see section 2.6.1 of the WIPO Overview 3.0).
This Panel agrees with the panel that decided Tetra Laval Holdings & Finance S.A. v. Privacy Hero Inc / Pat Honeysalt, Honey Salt Ltd., supra (citing, in turn Sanofi v. Privacy Hero Inc. / Honey Salt ltd, pat honey salt, supra) in that, absent an explanation of the Respondent as to why the website to which the disputed domain name resolves contains links to other web pages about third parties’ brands, with similar content, it appears not unlikely that the inclusion of these links was intended to increase the traffic to the respective domain names and websites, which would increase their attractiveness and price in case they are being offered for sale.
Based on the above, the Panel infers that the Respondent is artificially creating demand for domain names in the “.sucks” space, by generating the need for trademark holders to acquire domain names that, but for the conduct of the Respondent, would not be normally obtained by them. Trademark owners are compelled to buy the Respondent’s domain names for amounts in excess of normal out-of-pocket costs.
As to the applicability of Boehringer Ingelheim Pharma GmbH & Co. KG v Honey Salt Ltd., supra, cited by the Respondent as a single decision in which Respondent has prevailed on the merits in a UDRP proceeding, the Panel notes not only that this is a clear outlier amongst the many cases brought against the Respondent but notably also that the panel in that case seems, in the face of prior cases against the Respondent, to have relied on a lack of relevant arguments and evidence having been submitted (even to the point of overlooking the Respondent’s admission as to the domain name in that case being for sale) by the complainant in that case. Here, in contrast, the Complainant has established a prima facie case that the Respondent does not have rights to or legitimate interests in the disputed domain name, and the case file comprises evidence showing that the Respondent is not making a legitimate noncommercial or fair use of the domain name, nor making a bona fide offering of goods or services.
Accordingly, the requirements of the second element of the Policy have been met.
Bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark. According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, shall be evidence of registration and use in bad faith:
(i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s web site or location or of a product or service on its web site or location.
The Complainant has ascertained its rights over the BRIXMOR and BRIXMOR PROPERTY GROUP marks. The dates of registration of the Complainant’s marks significantly precede the date of registration of the disputed domain name. The Complainant has proven that said trademarks are highly distinctive and that they have been widely publicized.
Taking the above into consideration, as well as the fact that the Respondent has targeted the Complainant, the Panel finds that the Respondent knew about the Complainant when the disputed domain name was registered, which supports a finding of bad faith registration under the Policy (see section 3.2.1 of the WIPO Overview 3.0; see also Tetra Laval Holdings & Finance S.A. v. Privacy Hero Inc / Pat Honeysalt, Honey Salt Ltd., supra; L’Oréal v. Contact Privacy Inc. Customer 0149511181 / Jerry Peter, WIPO Case No. D2018-1937; Gilead Sciences Ireland UC / Gilead Sciences, Inc. v. Domain Maybe For Sale c/o Dynadot, WIPO Case No. D2019-0980; and Boehringer Ingelheim Pharma GmbH & Co. KG v. Marius Graur, WIPO Case No. D2019-0208).
The Complainant has proven that the disputed domain name was in effect being offered for sale shortly after its registration, in the amount of USD 2,598. This, in view of the finding that the Respondent has no rights to or legitimate interests in the disputed domain name, constitutes evidence of bad faith use under paragraph 4(b)(i), of the Policy (see section 3.1 of the WIPO Overview 3.0; see also Tetra Laval Holdings & Finance S.A. v. Privacy Hero Inc / Pat Honeysalt, Honey Salt Ltd., supra; and Aygaz Anonim Sirketi v. Arthur Cain, WIPO Case No. D2014-1206; M and M Direct Limited v. Pat Honey Salt, Honey Salt Limited, supra).
As discussed under the section on rights and legitimate interests, the Panel finds that the disputed domain name has been used as a pretext for cybersquatting and in a scheme to artificially create demand for the disputed domain name which incentivizes the Complainant to acquire a domain name that it otherwise would not need to obtain (see Compagnie Générale des Établissements Michelin and MC PROJECTS B.V Maastricht v. Pat Honey Salt, Honey Salt Limited, supra).
The Complainant has proven and has cited numerous precedents that show that the disputed domain name has been used in a model of cross-promotion of different “.sucks” domain names (incorporating distinctive brands), in which traffic is driven to the website to which the disputed domain name and other domain names resolve (for example, those that have been the subject matter of the above referenced cases decided under the policy), in order to offer different “.sucks” domain names for sale (see Tetra Laval Holdings & Finance S.A. v. Privacy Hero Inc / Pat Honeysalt, Honey Salt Ltd., supra; Sanofi v. Privacy Hero Inc. / Honey Salt ltd, pat honey salt, supra).
Another indicator of bad faith is the pattern of abusive registrations in which the Respondent has been involved (see the list of cases comprised in the rights or legitimate interests section). This pattern, established by the decisions cited above, further supports a finding of bad faith pursuant to paragraph 4(b)(ii) of the Policy, which provides that a “pattern of such conduct” is evidence of bad faith (see Tetra Laval Holdings & Finance S.A. v. Privacy Hero Inc / Pat Honeysalt, Honey Salt Ltd., supra;Sanofi v. Privacy Hero Inc. / Honey Salt ltd, pat honey salt, supra).
On this basis, this Panel concludes that Respondent has registered and is using the disputed domain name in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <brixmor.sucks> be transferred to the Complainant.
Kiyoshi Tsuru
Presiding Panelist
Douglas M. Isenberg
Panelist
Stephanie G. Hartung
Panelist
Date: August 5, 2021