WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Brasfield & Gorrie, L.L.C. v. Mark Crump NA, Brasfleldgorie / Brasfield Queens
Case No. D2018-1178
1. The Parties
The Complainant is Brasfield & Gorrie, L.L.C. of Birmingham, Alabama, United States of America ("United States"), represented by Balch & Bingham, LLP, United States.
The Respondents are Mark Crump NA, Brasfleldgorie of Sydney, New South Wales, Australia / Brasfield Queens of Glenorie, New South Wales, Australia.
2. The Domain Names and Registrars
The Domain Name <brasfleldgorie.com> is registered with Tucows Inc. The Domain Name <brasfleldgorrie.com> is registered with Ascio Technologies Inc. (together the "Domain Names" and the "Registrars").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 26, 2018. On May 28, 2018, the Center transmitted by email to the Registrars a request for registrar verification in connection with the Domain Names. On May 28, 2018, the Registrar, Tucows Inc., transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On June 11, 2018, the Registrar, Ascio Technologies Inc., transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name <brasfleldgorrie.com>, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 12, 2018 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 June 16, 2018. The Complainant submitted an amendment to the Complaint on June 19, 2018 to correct an administrative formality.
The Center verified that the Complaint together with the amended Complaint and amendment to 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 and 4, the Center formally notified the Respondents of the Complaint, and the proceedings commenced on June 20, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 10, 2018. The Respondents did not submit any response. Accordingly, the Center notified the Respondents' default on July 12, 2018.
The Center appointed Jane Seager as the sole panelist in this matter on July 18, 2018. 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.
On August 3, 2018, the Center notified the Parties of the Administrative Panel Procedural Order No. 1, by means of which the Panel requested the Complainant to provide an additional submission containing evidence supporting the Complainant's trademark registrations and also clarifying its Complaint, by either:
a) indicating why it believed Mark Crump NA, Brasfleldgorie and Brasfield Queens were the same or connected entities such as to permit the proceeding to continue in relation to both of the Domain Names, by submitting relevant arguments or evidence demonstrating that they were, in fact, the same entity and/or that both Domain Names were under common control; or
b) if the Complainant did not wish to provide consolidation arguments or, in the event that the Complainant was unable to argue a case for consolidation to the satisfaction of the Panel, indicating the Complainant's preference to:
- have the present proceeding continue only in respect of one of the Domain Names and, if so, which one, with an order of dismissal without prejudice as to the other Domain Name; or
- progress formally as two separate proceedings.
On August 10, 2018, the Complainant provided the relevant trademark evidence and, with regard to consolidation, noted that, as well as both Respondents being located in Australia, the Domain Names also had similarly deceptive spelling. The Complainant therefore requested that the present proceedings deal with both Domain Names, but stated that if this was not possible it would like to continue only in relation to the Domain Name <brasfleldgorie.com>.
The Order also provided the Respondents an opportunity to respond to the same, but nothing was received.
4. Factual Background
The Complainant is a large United States construction company based in Birmingham, Alabama. Its main website is available at "www.brasfieldgorrie.com". It registered the corresponding domain name, <brasfieldgorrie.com>, in 1997.
The Complainant has supplied evidence that it owns a number of word and design trademarks in the term BRASFIELD & GORRIE (for example, United States Registration No. 76165188, registered on November 26, 2002, first use in commerce in 1967, and United States Registration No. 76165187, registered on December 3, 2002, first use in commerce in 1987).
The Domain Name <brasfleldgorie.com> was registered on May 21, 2018 and the Domain Name <brasfleldgorrie.com> was registered on May 26, 2017. Neither is currently being used to point to an active website, but <brasfleldgorie.com> has been used to send fraudulent emails to one of the Complainant's clients attempting to obtain money by deception.
5. Parties' Contentions
A. Complainant
The Complainant has supplied evidence that it owns the following trademarks:
- United States Registration No. 76165188 in the term BRASFIELD & GORRIE, registered on November 26, 2002 (first use in commerce in 1967);
- United States Registration No. 76165187 in the term BRASFIELD & GORRIE, registered on December 3, 2002 (first use in commerce in 1987); and
- United States Registration No. 76165199 in the term BRASFIELD & GORRIE BENCHMARK, registered on July 15, 2003 (first use in commerce in 1997).
The Complainant also contends that it has common law rights in these terms and has used the name Brasfield & Gorrie continually since 1967. As a result it is associated by the public as representative of the Complainant's products and services.
The Complainant argues that the Domain Names are confusingly similar to its trademarks as only minor changes have been made, and these are not enough to overcome a finding of confusing similarity under the Policy. Therefore initial interest confusion caused by such similarity may deceive and lure Internet users to the Respondents' website.
In the Complainant's opinion, the Respondents have no rights or legitimate interests in the Domain Names because the Respondents are not using them in connection with a bona fide offering of goods or services, and nor is there any evidence that the Respondents have prepared to use them in this manner. In addition, the Respondents have not, and have never been, commonly known by the Domain Names and are not making a legitimate noncommercial or fair use of the Domain Names. In this regard the Complainant argues that the Respondents' unlawful use of its trademarks will not enjoy any protection under the First Amendment to the United States Constitution. The Complainant contends that the Respondents' use of the Domain Names appears solely intended to mislead consumers about the Complainant's services, and the Domain Names direct Internet users to a dead or "under construction" webpage.
In the Complainant's view, the Domain Names were registered and are being used in bad faith. The only apparent reason that they were registered was to transmit deceptive emails to the Complainant's clients. The Complainant attaches evidence of emails sent from an email address using the Domain Name <brasfleldgorie.com> requesting the recipient, one of the Complainant's clients, to wire their next payment to an offshore company account because the regular account for wire transfers is being audited. The Complainant points out that the sender is impersonating an actual employee of Complainant, using the employee's name, office address and phone number to give a false impression of authenticity. The wire transfer instructions attached to the email also use the Complainant's logo and details. The Complainant stresses that both the email and attachments are examples of the harm that has been facilitated by the registration of the Domain Name <brasfleldgorie.com>.
The Complainant argues that the name of the registrant for the Domain Name <brasfleldgorrie.com> has very recently been concealed in an effort to further frustrate the Complainant's efforts to protect itself. On May 23, 2018, the ICANN WhoIs registration showed a registrant, admin, and tech contact, but as of May 24, 2018, all of this information had been removed and replaced with "Not Disclosed". According to the Complainant, this veil of secrecy, aimed at avoiding detection and escaping any repercussions, is further evidence of the bad faith of the registrant of the Domain Name <brasfleldgorrie.com>.
Finally, the Complainant underlines that paragraph 3(c) of the Rules states that "[t]he complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder." Based on all the above facts, including the deceptive emails and deceptive hiding of the true identity of the Respondents, the Complainant argues that it can in good faith argue that the Domain Names are in fact registered by the same entity or under common control with the sole purpose of bad faith towards the Complainant. However, the Complainant adds that, in the event that the Domain Names are not under common control, and are both just using the same deceptive practices by coincidence, the Complainant will further amend the Complaint.
B. Respondent
The Respondents did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that to obtain the transfer of the Domain Names, the Complainant must prove each of the following three elements:
(i) the Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondents have no rights or legitimate interests in respect of the Domain Names; and
(iii) the Domain Names have been registered and are being used in bad faith.
The standard of proof is on the balance of probabilities (see Nintendo of America Inc. v. Fernando Sascha Gutierrez, WIPO Case No. D2009-0434).
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Furthermore, paragraphs 10(b) and 10(d) of the Rules provide that the Panel shall ensure that the parties are treated with equality and shall determine the admissibility, relevance, materiality and weight of the evidence.
In addition, paragraph 14(b) of the Rules further provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, the Rules, the Panel shall draw such inferences therefrom as it considers appropriate.
The Panel notes that the Respondents have failed to respond to the Complaint. The Respondents' failure to respond, however, does not automatically result in a decision in favor of the Complainant, although the Panel is entitled to draw appropriate inferences therefrom, in accordance with paragraph 14(b) of the Rules, see section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the "WIPO Overview 3.0").
Taking the aforementioned provisions into consideration, the Panel finds as follows:
A. Preliminary issue: Consolidation of Respondents
Consolidation of multiple respondents may be appropriate, under paragraphs 3(c) and 10(e) of the Rules, even where differently named domain name registrants are involved, where the particular circumstances of a given case indicate that common control is being exercised over the domain names at issue.
Section 4.11.2 of the WIPO Overview 3.0 sets out some examples of factors that previous panels have considered as an indication that consolidation may be appropriate, namely:
(i) the registrants' identities including pseudonyms;
(ii) the registrants' contact information including email addresses, postal addresses, or phone numbers, including any pattern of irregularities;
(iii) relevant IP addresses, name servers, or webhosts;
(iv) the content or layout of websites corresponding to the disputed domain names;
(v) the nature of the marks at issue (e.g., where a registrant targets a specific sector);
(vi) any naming patterns in the disputed domain names (e.g., <mark-country> or <mark-goods>);
(vii) the relevant language/scripts of the disputed domain names particularly where they are the same as the mark(s) at issue;
(viii) any changes by the respondent relating to any of the above items following communications regarding the disputed domain names;
(ix) any evidence of respondent affiliation with respect to the ability to control the disputed domain names,
(x) any pattern of similar respondent behavior; or
(xi) other arguments made by the complainant and/or disclosures by the respondents.
Having examined prior UDRP panel findings on this issue, the Panel notes that one of the above factors in isolation is rarely enough, and that a combination is generally required so that the weight of the evidence as a whole indicates that common control is more likely than not.
In the present case, the Panel has carefully considered the evidence supplied, both in the Complaint and in the Complainant's response to the Administrative Panel Procedural Order No. 1, and finds that the only common factor linking the two Respondents is that they both have an address in Australia. The Domain Names have been registered almost a year apart using different registrars on different servers and are pointing to different websites hosted by different providers. In addition the evidence of fraudulent email use only relates to one Domain Name, <brasfleldgorie.com>.
That being said, the Complainant's representative has also highlighted the fact that the Domain Names have "similarly deceptive spelling". In the Panel's opinion, taken in isolation, similar typographical errors may not on their own be enough to link two or more respondents in the same way that a common naming pattern might. The Complainant's representative's arguments in support of consolidation are not well developed, and at best are described as vague. In this regard, the Panel also notes that the Complainant appears to argue that the registrant of the Domain Name <brasfleldgorrie.com> has deceptively hidden its true identity and that this conduct increases the likelihood that the Domain Names are under common control. However, the Panel finds that the evidence rather demonstrates that the replacement of the registrant, administrative, and technical contacts with "Not Disclosed" was most likely linked to the introduction of new data protection legislation and thus unrelated to anything that the registrant may have done.
Despite what is outlined in the preceding paragraphs, taking a global view of the case at hand, the Panel notes the following:
1. The Complainant's mark BRASFIELD & GORRIE is a very unique mark to be targeting with a typographical error.
2. The Domain Names both include the same specific form of typographical error, namely replacing the "i" in "Brasfield" with an "l", contributing to visual confusion between Domain Names and the Complainant's mark.
3. Both Domain Names omit any representation of the "&" from the Complainant's mark, and otherwise only differ in the omission of one "r" from the Complainant's mark.
4. Both Domain Names are registered under the same gTLD ".com".
5. The construction of both Domain Names appears to target the way that the Complainant's email addresses are formed, i.e., with the domain "[…]@brasfieldgorrie.com". This is reinforced by the use to which the Domain Name <brasfleldgorie.com> has been put, namely to send fraudulent emails impersonating the Complainant.
6. The Complainant's business operations appear to be based predominantly in the United States. In the circumstances of the present case, it is difficult for the Panel to conceive why two distinct Respondents both based in New South Wales, Australia would be targeting the Complainant's mark in a similar fashion, unless the two were somehow connected. In this regard, the Panel notes that the Complainant's business is not one with an online presence whose trademark might easily become the target of abusive domain name registration.
7. Neither Respondent is active, i.e., the Respondents have not come forward to assert that they are in fact separate from one another.
Paragraph 3(c) of the Rules states that: "The complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder." Despite the Complainant's representative's shortcomings in providing any clear evidence in support of its request for consolidation, all things considered, the Panel finds on balance that the Domain Names were more likely than not registered by the same individual, or are otherwise subject to common control. Accordingly, the Panel has determined to grant the Complainant's request for consolidation.
B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Panel to first consider whether the Complainant has established relevant trademark rights. The Complainant has provided evidence of two registered trademarks in the term BRASFIELD & GORRIE, namely United States Registration No. 76165188, registered on November 26, 2002, and United States Registration No. 76165187, registered on December 3, 2002.
The Panel is also required under paragraph 4(a)(i) of the Policy to examine whether the Domain Names are identical or confusingly similar to the Complainant's trademark. In this regard, the Panel notes that the Domain Names incorporate the Complainant's BRASFIELD & GORRIE trademark without the "&" (a character not technically possible in a domain name) and with a couple of obvious typographical errors (replacement of the first "i" with an "l" and in the case of the Domain Name <brasfleldgorie.com>, deletion of the last "r"). The Panel agrees with the Complainant that such variations do not avoid a finding of confusing similarity with the Complainant's trademark.
Furthermore, it is widely accepted that the ".com" generic Top-Level Domain ("gTLD") is generally irrelevant for the purpose of assessing identity or confusing similarity between a trademark and a domain name.
The Panel therefore finds that the Domain Names are confusingly similar to the Complainant's trademark. Accordingly, the Complainant has satisfied paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a list of non-exhaustive circumstances that may suggest that a respondent has rights or legitimate interests in a domain name, including:
(i) before any notice to the respondent of the dispute, the respondent's 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) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no 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.
Based on the statements and evidence put forward by the Complainant, the Panel finds that the Complainant has made a prima facie showing that the Respondents lack rights or legitimate interests in the Domain Names and that, as a result of its default, the Respondents have failed to rebut such a showing.
The Respondents cannot be considered to be making a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy referred to above, given that the Domain Names are currently not being used to point to an active website. In fact, the evidence suggests that the only use of the Domain Name <brasfleldgorie.com> is in connection with the sending of fraudulent emails. Nor can the Respondents be said to be making a legitimate noncommercial or fair use of the Domain Names within the meaning of paragraph 4(c)(iii). Furthermore, it is highly unlikely that the Respondents would be "commonly known" by the Domain Names, as referred to at paragraph 4(c)(ii), given the notoriety surrounding the Complainant's trademark.
The Panel is also of the view that the Respondents' failure to submit a Response is, in the circumstances of this case, also evidence of the Respondents' lack of rights or legitimate interests in the Domain Names. See Pomellato S.p.A v. Richard Tonetti, WIPO Case No. D2000-0493 ("non-response is indicative of a lack of interests inconsistent with an attitude of ownership and a belief in the lawfulness of one's own rights").
The Panel therefore finds that the Respondents have no rights or legitimate interests in the Domain Names. As such, the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, including:
(i) circumstances indicating that the respondent has registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of the respondent's documented out‑of-pocket costs directly related to the disputed domain name; or
(ii) the respondent has registered the disputed domain name in order to prevent the complainant from reflecting the complainant's trademark or service 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's website 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 website or location or of a product or service on the respondent's website or location.
However, such circumstances are clearly non-exhaustive, and other factors not listed above may also indicate registration and use in bad faith.
The Panel considers from the construction of the Domain Names that the Respondents were clearly targeting the Complainant's trademark at the time of their registration.
The Panel has reviewed the email correspondence supplied by the Complainant evidencing the fraudulent use of the Domain Name <brasfleldgorie.com> and finds that it clearly demonstrates that the Domain Name <brasfleldgorie.com> was both registered and then subsequently used in bad faith, with the sole aim of defrauding the Complainant's clients. Given that the Complainant registered the domain name <brasfieldgorrie.com> in 1997 and uses it not only to point to its main website but also for its email addresses in the format "[…]@brasfieldgorrie.com", it is clear that using the Domain Name <brasfleldgorie.com> to create an email address or addresses in the format "[…]@brasfleldgorie.com" will cause confusion and deception, especially when the chosen term is identical to the name of an existing employee of the Complainant. Indeed, such actions can only have been undertaken deliberately with a fraudulent aim in mind, as underlined by the actual correspondence whereby the email address created using the Domain Name was used to instruct one of the Complainant's clients to send money to a different bank account.
While there is no concrete evidence that the Domain Name <brasfleldgorrie.com> has been used in connection with such a fraudulent scheme, in the circumstances, the retention by a third party of the Domain Name <brasfleldgorrie.com> poses an ongoing threat to the Complainant. Moreover, while there is no developed website at the Domain Name <brasfleldgorrie.com>, the passive holding of the same does not prevent a finding of bad faith; see section 3.3 of the WIPO Overview 3.0.
The Panel therefore finds that the Domain Names have been registered and are being used in bad faith and that paragraph 4(a)(iii) of the Policy is satisfied.
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 Domain Names <brasfleldgorie.com> and <brasfleldgorrie.com> be transferred to the Complainant.
Jane Seager
Sole Panelist
Date: August 27, 2018