WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Brown Brothers Harriman & Co. v. Privacy Gods, Privacy Gods Limited / Privacy Protection Service Inc d/b/a PrivacyProtect.org
Case No. D2015-2141
1. The Parties
The Complainant is Brown Brothers Harriman & Co. of New York, New York, United States of America (the “United States”), represented by Edge Law Group, United States.
The Respondent is Privacy Gods, Privacy Gods Limited of London, United Kingdom of Great Britain and Northern Ireland / Privacy Protection Service Inc. d/b/a PrivacyProtect.org of Nobby Beach, Queensland, Australia.
2. The Domain Name and Registrar
The disputed domain name <wwwbbh.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 25, 2015. On November 25, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 26, 2015, 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 November 30, 2015 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 November 30, 2015.
The Center verified that 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 December 1, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 21, 2015.
On December 13, 2015 the Center received an email from the Respondent requesting an extension of time for submission of a Response.
On December 15, 2015 the Center sent an email to the Complainant requesting its submissions on the Respondent’s application for an extension of time.
On December 16, the Respondent was notified by the Center by email that the Complainant had objected to its request for an extension of time and that pursuant to paragraph 5(b) of the Rules the Respondent was granted an automatic four day extension to December 25, 2015 in which to file a Response.
No Response was received by that date.
The Center appointed James Bridgeman as the sole panelist in this matter on January 12, 2016. 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 privately held financial services firm, and is the owner of a portfolio of trademark and service mark registrations for the BBH mark which it uses in connection with the provision of financial services to clients globally in three primary business areas: investor services, investment management and private banking including:
Australian trademark registration number 1017567 registered on February 19, 2009 in classes 9, 36 and 42;
United Kingdom registration number 1349389 registered on October 23, 1992 in class 36;
United States registration number 3594879 registered on March 24, 2009 in class 9;
United States registration number 3594867 registered on March 24, 2009 in class 36;
United States registration number 3660883 registered on July 28, 2009 in class 42;
The Complainant additionally owns a number of registrations for trademarks in the United States and elsewhere, that it incorporate BBH as the dominant element. Furthermore the Complainant has produced evidence that it is the owner of the domain name <bbh.com>, which the Complainant registered in 1995 has used continuously since then as the address of its website.
In the absence of a Response or other submission from the Respondent there is no information about the Respondent except that provided by the Registrar and the Complainant.
The disputed domain name was created on July 6, 2015. Prior to the filing of the Complaint the disputed domain name mimicked the site at the Complainant’s domain name <bbh.com>. Currently, the web page at the disputed domain name resolves to an inactive page.
The web page to which the disputed domain name resolved on October 28, 2015, consisted of a photograph of gold bullion and the following statement: “2015 Copyright. All Rights Reserved. The Sponsored Listings displayed above are served automatically by a third party. Neither the service provider nor the domain owner maintain any relationship with the advertisers. In case of trademark issues please contact the domain owner directly (contact information can be found in whois)” (annex 13 to the Complaint). The Respondent has availed of a privacy service while registering the disputed domain name.
5. Parties’ Contentions
The Complainant relies on its registered trade mark rights and rights established at common law through its substantial use of the BBH mark in commerce in connection with its financial services business and its trademark and service mark rights that it has acquired through the above-listed trademark and service mark registrations. In support of its claim to have a substantial reputation in the use of the BBS mark, the Complainant has adduced in evidence a number of third party references to its work in financial services, awards that it has received and media coverage of its engagement in educational projects.
The Complainant submits that that the disputed domain name <wwwbbh.com> is identical or confusingly similar to its BBH mark. The Complainant submits that “www” is the well-known acronym for “world wide web” and therefore has no distinguishing capacity in the context of a domain name. The Complainant adds that in numerous cases UDRP panelists have found domain names to be confusingly similar to a trademark where the complained-of domain name is composed of the letters “www” preceding the complainant’s trademark. In this regard the Complainant cites a number of WIPO UDRP cases including BJ’s Wholesale Club v. Lisa Katz, Domain Protection LLC / Domain Hostmaster, Customer ID: 64382986619850 Whois Privacy Services Pty, WIPO Case No. D2015-1601 (<wwwbjswholesaleclub.com> confusingly similar to BJ’s Wholesale Club); CSC Holdings, Inc. v. Elbridge Gagne, Balboa, WIPO Case No. D2003-0273 (<wwwamctv.com> confusingly similar to AMCTV); and CITGO Petroleum Corporation v. Horace A. “Woofer” Smith, WIPO Case No. D2003- 0054 (<wwwcitgo.com> confusingly similar to CITGO).
The Complainant alleges that the Respondent has no rights or legitimate interests in the BBH mark and there is no question but that the Respondent selected, registered and is using the disputed domain name <wwwbbh.com> in an unlawful effort to mislead and defraud consumers and the financial markets; that no evidence can exist of 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; that no evidence can exist that the Respondent (as an individual, business, or other organization) has been commonly known by the domain name; and that no evidence can exist that the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to divert misleadingly consumers or to tarnish the trademark or service mark at issue.
The Complainant alleges that the disputed domain name has been registered and is being used in bad faith and that the Respondent is using the disputed domain name for commercial gain and misleadingly to divert consumers or to tarnish the Complainant's trade name and trademark.
More specifically, the Complainant adds that the Respondent’s failure to include the required period between the letters “www” and the elements “BBH.com” in the disputed domain name amounts to typosquatting, which has been described as “the intentional misspelling of words with intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors” by the UDRP panel in National Association of Professional Baseball Leagues, Inc., d/b/a Minor League Baseball v. John Zuccarini, WIPO Case No. D2002-1011. Additionally, the Complainant alleges that the Respondent is using the disputed domain name to profit from advertising clicks as consumers mistakenly reach its website.
Moreover, the presence of a, since removed, photograph of gold bullion on the Respondent’s website and the continued use of keywords that unmistakably refer to the services the Complainant provides, including: “kw: “Private Banking”, terms: [“Investment Advice”, “Instant Loans”, “Wealth Planning”, “Trust Services”, “Private Banking”, “Double your money”, “Corporate Lending”, “Private Equity”] make it clear that Respondent was aware of the Complainant and the services it provides and planned to target the Complainant’s customers when the Respondent registered the disputed domain name.
The Respondent is using 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 website to which the disputed domain name resolves and the Complainant is concerned that the Respondent’s actions may extend beyond simply trying to profit from misdirected Internet traffic to acts which may violate the banking and consumer protection laws of numerous countries, including those of the United States.
There was no Response filed.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to establish that:
(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 in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has produced evidence of its rights in the BBH mark which it has acquired both at common law through its use of the mark in connection with its financial services business and by its above-listed portfolio of trademark and service mark registrations.
This Panel accepts the Complainant’s submissions that the disputed domain name <wwwbbh.com> is confusingly similar to the Complainant’s BBH mark. The disputed domain name consists of the Complainant’s mark in its entirety preceded by the letters “www”. This Panel accepts the Complainant’s submissions that in the present case the letters “www”, which are commonly understood to be an acronym for the “world wide web” especially in the context of a domain name registration, have no distinguishing character.
In the circumstances the Complainant has succeeded in the first element of the test in paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has made out prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name by establishing its rights to the BBH mark, the fact that there is no evidence that the Respondent is engaged in any business using the domain name except that the website to which the disputed domain name resolves refers to “…Sponsored Listings displayed above are served automatically by a third party…”. Using the confusingly similar domain name cannot by itself result in the Respondent acquiring rights or legitimate interest in the disputed domain name.
In these circumstances the onus shifts to the Respondent to provide evidence of its rights or legitimate interests in the disputed domain name.
As the Respondent has failed to file any Response it has failed to discharge the burden of production.
In those circumstances the Complainant has also succeeded in the second element of the test in paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The disputed domain name registration is the combination of two elements viz. the letters “www” which refer to the world wide web and the letters “bbh”. The Complainant has alleged that the letters “bbh” refer to its trademark.
The Respondent is based in London, England. The Complainant is the owner of an English trademark and the evidence adduced in the Annexes to the Complaint states that it opened a branch in London, England as long ago as 1974. The Respondent had constructive knowledge of the Complainant’s rights and on the balance of probabilities had actual knowledge of the Complainant, its business and the Complainant’s website to which its name <bbh.com> resolves. The fact that the Complainant has a substantial reputation in the financial services industry and that the underlying html code for the Respondent’s website contain the keywords: “Investment Advice”, “Instant Loans”, "Wealth Planning”, “Trust Services”, “Private Banking”, “Double your money”, “Corporate Lending” and “Private Equity” support this finding.
Therefore in the absence of any Response or other explanation from the Respondent this Panel must find that the most probable explanation for the choice and registration of the disputed domain name was to refer to the Complainant’s mark for the purposes of creating an impression that there exists some relationship between the disputed domain name and the Complainant.
On the evidence therefore this Panel is satisfied on the balance of probabilities that the Respondent is engaged in typosquatting as defined above, and that the Respondent registered and is using the disputed domain name in bad faith by attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s BBH mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
In the circumstances this Panel finds that the Complainant has also satisfied the third and final element of the test in paragraph 4(a)(iii) of the Policy and is entitled to succeed in the Complaint.
For the foregoing reasons, in accordance with paragraphs 4 of the Policy and 15 of the Rules, this Panel orders that the disputed domain name <wwwbbh.com> be transferred to the Complainant.
Date: January 14, 2016