WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AllianceBernstein, L.P. Composed of AllianceBernstein Corporation v. Privacy Protect, LLC / Mike Berns, Bernstein Securities LLC
Case No. D2018-2405
1. The Parties
Complainant is AllianceBernstein, L.P. Composed of AllianceBernstein Corporation, New York, New York, United States of America (“United States”), represented by Pepper Hamilton, LLP, United States.
Respondent is Privacy Protect, LLC of Burlington, Massachusetts, United States of America / Mike Berns, Bernstein Securities LLC of New York, New York, United States of America.
2. The Domain Name and Registrar
The disputed domain name <bernsteinsecurities.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 October 22, 2018. On October 23, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 24, 2018, 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 Complainant on October 25, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on October 26, 2018.
The Center verified that 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 Respondent of the Complaint, and the proceedings commenced on October 26, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 15, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 19, 2018.
The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on November 28, 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.
4. Factual Background
Complainant is a global asset management firm. Complainant conducts business in connection with investment management research in financial services under the service marks BERNSTEIN and ALLIANCEBERNSTEIN. Complainant owns valid and subsisting registrations for the BERNSTEIN mark, used in commerce since as early as 1967, including U.S. Registration Number 2,895,368 (registered on October 19, 2004). Complainant owns valid and subsisting registrations for the ALLIANCEBERNSTEIN mark, including U.S. Registration Number 2,756,848 (registered on August 26, 2003) (collectively, the BERNSTEIN and ALLIANCEBERNSTEIN marks are referred to herein as the “BERNSTEIN Marks”). Complainant owns and operates websites in connection with its business, including websites that resolve through the <alliancebernstein.com> and <bernstein.com> domain names.
The disputed domain name was registered on July 29, 2018, and at the time the Complaint was filed, it resolved to a website that included information about a purported financial services company named “Bernstein Securities Ltd.”.
5. Parties’ Contentions
Complainant asserts that the disputed domain name is identical or confusingly similar to the BERNSTEIN Marks. Complainant asserts that the disputed domain name contains Complainant’s entire BERNSTEIN trademark and is therefore, confusingly similar. Complainant further asserts that the addition of the generic word “securities” increases the likelihood of confusion because Complainant’s BERNSTEIN trademark is used within the financial service industries in connection with securities.
Complainant also asserts that Respondent has no rights or legitimate interests in the disputed domain name because Respondent is not commonly known by the disputed domain name, is not affiliated with Complainant, and has not received permission or authorization to use Complainant’s marks in any way. Complainant further asserts that Respondent is not using the disputed domain name for any bona fide offering of goods or services, or for any legitimate noncommercial fair use. Complainant asserts the disputed domain name is being used to perpetuate fraud, namely a “boiler room scheme” designed to dupe securities investors into investing in fraudulent securities. According to Complainant, the disputed domain name is intended to add an air of legitimacy to a façade web presence in furtherance of the scheme. Complainant asserts that use of a domain name for such illegitimate activity cannot confer any rights or legitimate interests in the disputed domain name.
Complainant further asserts Respondent’s registration and use of the disputed domain name is in bad faith, given that it has been registered and used in connection with a fraudulent “boiler room scheme”. Complainant asserts that the company “Bernstein Securities Ltd.” is fictitious, having no real presence at its purported physical address, no active phone connection at the telephone number provided on the website located at the disputed domain name, no business filings with the New York Secretary of State, or any filings with the United States Securities and Exchange Commission, which would be mandated by law if the company were in fact providing any investment-related services. When Complainant attempted to send a cease-and-desist letter to Respondent regarding the disputed domain, the letter was returned as undeliverable at Respondent’s purported address. According to Complainant, security personnel at Respondent’s purported physical address confirmed they had never heard of such an entity. Complainant further asserts that someone purporting to be associated with “Bernstein Securities Ltd.” contacted Complainant’s shareholders in an attempt to purchase their stock. Finally, Complainant asserts that Respondent’s use of a proxy service to mask Respondent’s identity is also indicative of bad faith in this context.
Accordingly, Complainant requested the disputed domain name be transferred.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
“Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding?
Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true.”
Thus, although in this case Respondent has failed to respond to the Complaint, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340.
A. Identical or Confusingly Similar
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant provided evidence of ownership of the BERNSTEIN Marks, which have been used since at least as early as 1967, and registered since at least as early as 2004, well before Respondent registered the disputed domain name on July 29, 2018. With Complainant’s rights in the BERNSTEIN trademarks established, the remaining question under the first element of the Policy is whether the disputed domain name, typically disregarding the gTLD in which it is registered (in this case, “.com”), is identical or confusingly similar to Complainant’s mark. See, e.g., B & H Foto & Electronics Corp. v. Domains by Proxy, Inc / Joseph Gross, WIPO Case No. D2010-0842.
Here, the disputed domain name is confusingly similar to Complainant’s BERNSTEIN trademark, because it is fully incorporated into the disputed domain name at the second level and the addition of the descriptive term “security” appended to the mark does nothing to prevent a finding of confusing similarity. See, e.g., Horton Advokatpartnershipselskab v. Domain ID Shield Service CO., Limited / Kruitkov Valeriy Nikolaevich, WIPO Case No. D2016-0205.
The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in the BERNSTEIN trademark and in showing that the disputed domain name is identical or confusingly similar to its mark.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, Complainant must make at least a prima facie showing that Respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once a complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained their burden under the second element of the UDRP.
From the record in this case, it is evident that Respondent was, and is, aware of Complainant and the BERNSTEIN trademark, and does not have any rights or legitimate interests in the disputed domain name. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the evidence demonstrates that Respondent used the disputed domain name to impersonate Complainant, or an affiliate thereof, and to contact Complainant’s clients and other individuals in the hopes of fraudulently inducing them to pay Respondent money to make questionable or non-existent security investments. See WIPO Overview 3.0, Sections 2.13.1; 2.13.2 (“Panels have categorically held that the use of a domain name for illegal activity (e.g., … phishing, … impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent…. [P]anels have found that circumstantial evidence can support a complainant’s otherwise credible claim of illegal respondent activity….”). In fact, the record only points to an offering of services which seems unauthorized under the U.S. Securities Act of 1933, promoted by creating confusion with Complainant’s mark and services. See e.g., Hammerson Plc. v. Paolo Sossa / Domains by Proxy Inc., WIPO Case No. D2010-0533.
Complainant has provided evidence supporting its prima facie claim that Respondent lacks any rights or legitimate interests in the disputed domain name. Respondent has failed to produce countervailing evidence of any rights or legitimate interests in the disputed domain name. Thus, the Panel concludes that Respondent does not have any rights or legitimate interests in the disputed domain name and Complainant has met its burden under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel finds that Respondent’s actions indicate that Respondent registered and is using the disputed domain name in bad faith.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely:
“(i) circumstances indicating that you have registered or you have 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) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location”.
The Panel finds that Complainant provided ample evidence to show the trademark BERNSTEIN is well known in the United States, where Respondent is located. Use and registration of the BERNSTEIN trademark established in the record long predates the registration of the disputed domain name by Respondent. Therefore, Respondent was likely aware of the BERNSTEIN trademark when it registered the disputed domain name, or knew or should have known that the disputed domain name was identical or confusingly similar to Complainant’s mark. See WIPO Overview 3.0, section 3.2.1; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited, WIPO Case No. D2016-1973.
Respondent’s use of the BERNSTEIN Marks in connection with its “boiler room scheme” appears to have been done in an effort to trade on the goodwill associated with these marks in furtherance of the fraudulent scheme, for commercial gain, in violation of paragraph 4(b)(iv) of the Policy. See, e.g., Barclays Bank PLC v. PrivacyProtect.org / Sylvia Paras, WIPO Case No. D2011-2011; see also Hammerson Plc. v. Paolo Sossa / Domains by Proxy Inc., WIPO Case No. D2010-0533.
Moreover, Complainant has demonstrated that Respondent falsified its domain name registration data and contact information, as posted on the disputed domain name’s site, in a bad faith attempt to obfuscate investigation and hinder enforcement proceedings. See Fifth Third Bancorp v. Secure Whois Information Service, WIPO Case No. D2006-0696 (stating a registrant that provides a fictitious name and a fictitious registrant data without any explanation is a strong inference of bad faith). Similarly, Respondent’s use of proxy services to mask their identity and further hinder enforcement proceedings is also indicative of bad faith in this context. See WIPO Overview 3.0, section 3.6.
Accordingly, the Panel finds that Respondent registered and used the disputed domain name in bad faith and Complainant succeeds under the third element of paragraph 4(b) of the Policy.
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 <bernsteinsecurities.com> be transferred to Complainant.
Brian J. Winterfeldt
Date: December 12, 2018