WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Brown Brothers Harriman & Co. v. Fundacion Private WhoIs

Case No. D2013-0524

1. The Parties

The Complainant is Brown Brothers Harriman & Co. of New York, New York, United States of America, represented by Edge Law Group., United States of America.

The Respondent is Fundacion Private WhoIs of Panama, Panama.

2. The Domain Name and Registrar

The disputed domain name <bbhretail.com> is registered with Internet.bs Corp. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 16, 2013. On March 18, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 20, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent was listed as the registrant and providing the contact details for the disputed domain name.

The Center verified that the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 21, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was April 10, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 11, 2013.

The Center appointed Adam Taylor as the sole panelist in this matter on April 18, 2013. 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.

4. Factual Background

The Complainant is a financial services firm incorporated in the United States. It offers investor services, investment management, wealth management, corporate banking and mergers and acquisitions advice. The Complainant employs over 4,000 finance professionals in 17 offices across North America, Europe and Asia.

In 2011, the Complainant was the 31^st largest wealth management firm in the United States. It currently manages securities and other financial assets with a value of approximately USD 3 trillion.

The Complainant has traded under the name BBH since 1958 and its main website is located at “www.bbh.com”.

The Complainant owns the following trade marks for BBH:

The disputed domain name was registered on March 1, 2013.

As of March 13, 2013, there was a website at the disputed domain name impersonating the Complainant including the Complainant’s name and logo and using a layout and colour scheme very similar to that of the Complainant’s own website.

5. Parties’ Contentions

A. Complainant

Identical or Confusingly Similar

The Respondent's addition of the common term "retail" to the Complainant's BBH trade mark is not sufficient to exclude confusing similarity between the disputed domain name <bbhretail.com> and the BBH trade mark.

The Complainant states that it is receiving calls from the public seeking to confirm the relationship between the Complainant and the Respondent is unimpeachable proof that the disputed domain name is confusingly similar to the Complainant's trade mark, and that it falsely suggests an affiliation or sponsorship that does not exist.

The term "retail" describes a common facet of banking services, namely, retail banking where banking institutions execute transactions directly with consumers, rather than corporations or other banks. While the Complainant does not presently offer banking and investment services to retail consumers, it does offer banking and investment services to individuals as part of its wealth management service. The Complainant also has a mutual fund that authorised third parties to make distributions to their customers – potentially including retail consumers. The potential for confusion is therefore high and could cause consumers to believe (and has caused at least a few consumers to believe) that the Complainant may now be offering financial services to retail clients.

Rights or Legitimate Interests

The Respondent selected and is using the disputed domain name in an unlawful effort to mislead and defraud consumers.

No evidence exists demonstrating the Respondent's use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.

No evidence exists that the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if the Respondent has acquired no trade mark or service mark rights.

No evidence exists that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to divert misleadingly consumers or to tarnish the trade mark or service mark at issue. The exact opposite is true. The Respondent is using the disputed domain name for commercial gain and misleadingly to divert consumers or to tarnish the Complainant's trade mark.

Registered and Used in Bad Faith

The Complainant states that the Respondent's activities, including the manner in which it uses the disputed domain name, violate the banking and consumer protection laws of numerous countries, including those of the United States.

There exists no reasonable basis on which the Respondent might hold rights or legitimate interests in a domain name incorporating a trade mark that has been in continuous, worldwide use by the Complainant in the financial services sector for over 50 years. The circumstances and Respondent's conduct are fraudulent and not capable of conferring a right or legitimate interest in the disputed domain name on the Respondent.

These facts lead to an incontrovertible presumption that the Respondent registered the disputed domain name for the specific intention of attracting, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website.

The Respondent uses the disputed domain name to mislead the public. There is a very high likelihood of confusion with the Complainant's mark as to the source of the disputed website, as partially evidenced by inquiries received by Complainant seeking confirmation of an affiliation between Complainant and Respondent that does not exist.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has rights in the mark BBH by virtue of its registered trade marks as well as unregistered trade mark rights deriving from the extensive and worldwide use of that name.

Paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) makes clear that the threshold test for confusing similarity under the UDRP involves a comparison between the trade mark and the disputed domain name to determine likelihood of Internet user confusion and that, in order to satisfy this test, the relevant trade mark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent threshold Internet user confusion.

Paragraph 1.9 of WIPO Overview 2.0 adds that, in itself, the addition of merely generic, descriptive, or geographical wording to a trade mark in a domain name is normally insufficient to avoid a finding of confusing similarity and that panels have usually found the incorporated trade mark to constitute the dominant or principal component of the domain name. The principal exception that some panels have found in certain cases is where a trade mark (especially one of a descriptive nature) is incorporated or subsumed within other words or textual elements so that the trademark is not clearly the dominant component of the domain name.

Here, the Complainant’s trade mark is undoubtedly the dominant component of the disputed domain name and, as indicated in paragraphs 1.2 and 1.9 of WIPO Overview 2.0, the addition of the descriptive term such as “retail” is insufficient to avert a finding of confusing similarity.

For the above reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trade mark.

B. Rights or Legitimate Interests

Paragraph 2.1 of WIPO Overview 2.0 explains the consensus view concerning the burden of proof regarding lack of rights or legitimate interests in UDRP cases:

“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […] If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”

Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.

As to paragraph 4(c)(i) of the Policy, the Panel has concluded below that the Respondent has used the disputed domain name to impersonate the Complainant for a fraudulent purpose. Such use of the disputed domain name could not of course be said to be bona fide.

Nor is there any evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case.

The Panel finds that the Complainant has established a prima facie case of lack of rights or legitimate interests and there is no rebuttal by the Respondent.

The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

The website at the disputed domain name has been used to impersonate the Complainant. Although the exact nature of the scheme is not clear, it is obvious that some sort of fraudulent activity is afoot. It is clear from the fact of impersonation that the Respondent must have known of the Complainant’s trade mark at the time it registered the disputed domain name.

Given the evidence of use of the disputed domain name for a fraudulent purpose, the Panel readily concludes that it was registered and is being used in bad faith by the Respondent.

7. Decision

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, <bbhretail.com>, be transferred to the Complainant.

Adam Taylor
Sole Panelist
Date: May 2, 2013