WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Brookfield Office Properties Inc. v. C&C Participaties B.V. / Henry Dunant, Chillup NV
Case No. D2020-0413
1. The Parties
Complainant is Brookfield Office Properties Inc., Canada, represented by Safenames Ltd., United Kingdom.
Respondent is C&C Participaties B.V., Netherlands / Henry Dunant, Chillup NV, Suriname.
2. The Domain Name and Registrar
The disputed domain name <brookfield.properties> (the “Domain Name”) is registered with Hosting Concepts B.V. d/b/a Openprovider (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 20, 2020. On February 20, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 21, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on February 24, 2020, 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 February 25, 2020.
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 Respondent of the Complaint, and the proceedings commenced on February 28, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 19, 2020. On March 6, 2020, Respondent requested a first extension to file Response. Pursuant to paragraph 5(b) of the Rules, the Response due date was extended by the Center until March 23, 2020. On March 23, 2020, Respondent requested a second extension to file Response. Pursuant to Complainant’s agreement to an additional short extension under paragraph 5(e) of the Rules, the Response due date was further extended by the Center until April 7, 2020. On April 7, 2020, Respondent requested a third extension to file Response. On April 16, 2020, the Center informed the Parties that it will proceed to appointment of the Panel. No formal Response was ever filed.
The Center appointed Robert A. Badgley as the sole panelist in this matter on April 24, 2020. 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 real estate firm and a part of Brookfield Asset Management, a global asset management firm focusing on real estate, renewable power, infrastructure, and private equity. Complainant has USD 193 million in assets under management, with a global portfolio including office, retail, multifamily, hospitality, self-storage, student housing, and other assets across five continents. According to information annexed to the Complaint, major search engines yield as the first search result Complainant when “BROOKFIELD” is entered as the search term.
Complainant holds more than 100 trademark registrations globally for the mark BROOKFIELD, including Canadian Reg. No. TMA472422 registered March 12, 1997, United States of America Reg. No. 2472583 registered July 31, 2001, and European Union Reg. No. 017554809 registered August 11, 2008. Complainant’s main website is located at <brookfieldproperties.com>, a domain name it has held since 1998.
The Domain Name was registered on June 8, 2019. The Domain Name currently does not resolve to an active website, but for a time it was redirected to a website featuring pornographic content.
On January 20, 2020, Complainant’s counsel sent a cease-and-desist letter to Respondent C&C Participaties B.V. On January 24, 2020, a response was received from a Michel Bishoen, with a Netherlands-based email address. Michel Bishoen stated that he no longer owned the Domain Name, which had been sold to a Suriname-based real estate company with the same name (i.e., Brookfield). Complainant asserts that the Domain Name was actually not transferred to its purported new owner until January 26, 2020, two days after Michel Bishoen said the Domain Name had previously been transferred to the owner in Suriname.
At some point after the cease-and-desist letter, the Domain Name ceased to be redirected to a pornographic site, and resolved instead to a blank webpage.
After the Complaint in this proceeding was filed, a person identified as “J. Brookfield” sent the Center an email on March 23, 2020, stating as follows (with a few typos corrected):
“I would like to respond personally as I do not understand the issue. Furthermore I would like to apologize for my bad English of mine as my main language is Dutch and Sranan Tongo. I am writing this personally as my son contacted a lawyer but due to the CORONAVIRUS, their response will not be ready before the due date 23 March 2020. Due to this exceptional global situation, I am asking for an extension until further notice of the law firm of ours. (Extension, until they are allowed to work again in Surinam[e], as the country faces a “lock down”).
I run together with my son a small family business within Surinam[e], in which I rental some houses and commercial locations to locals. This activity is within our family for two generations now. This year my son got more involvement within our family business and he convinced me that our company needs to be more visible on the Internet so we will get a better vacancy management. He said that all companies need to have an Internet domain from which you can then sent professional invoices, acquisition, respond to maintenance and so on. As our family name is Brookfield and so is our company name, my son have found a domain that fits our purpose and company name and activities. This is the reason why we purchased our domain: Brookfield.properties.
When I read the story about C&C, I do not know what to say. I do not have a relationship with this company but I have bought and paid for a domain which I until now still cannot use!
I do not know who is Michel Bishoen.
I have contacted C&C many times, but they say there is nothing they can do as the domain has already been transferred to our provider. And our registrar has put a lock on our domain so we cannot develop our website.
I do not know anything about trademarks or patents, nor does my son. Surinam[e] is a small country and as Brookfield is a very rare name, I did not think about competitors. We as a company are not going to compete with fellow name companies around the globe. Nor do we have the money, nor do I or my son have the ambition. If a client wants to rent a house or small business real estate in Surinam[e], we are probably one of the few companies who do rent these objects.
In order to prove that me and my son are honest businessmen, I hereby enclose the invoice to show that we have paid quite considerable for our domain name and it is very frustrating that we cannot use our property as the registrar has put a lock on our domain.
If we get additional time for our lawyer to respond, you will receive a proper reaction (and in the right format) to this matter.”
Attached to this email from “J. Brookfield” was a purported “Purchase and Sale Agreement,” apparently in the Dutch language, but bearing the logo “C&C” as well as the banner “A GENUINE SURINAM[E] COMPANY.” The purported document reflects the sale of the Domain Name for SRD 80,000. Nothing else was attached to the J. Brookfield missive.
According to Complainant, there is no real estate company in Suriname with the name “Brookfield.”
The current Registrant of the Domain Name is a “Henry Dunant.” According to Complainant, Henry Dunant is an alias of M. Bishoen. There is no denial of this allegation by anyone purporting to be or act on behalf of Respondent in this case.
At the time this Complaint was filed (February 20, 2020), the WhoIs database showed the Registrant Name as “REDACTED FOR PRIVACY,” but showed the Registrant Organization as “C&C Participaties B.V.”, and the Registrant Country as “NL.” The WhoIs information made no reference to any person or entity in Suriname, nor to a person named J. Brookfield. The WhoIs record did show that the last update to the database for this Domain Name was on January 26, 2020.
Complainant has also put into the record a list of several other domain names held by M. Bishoen or his firm, C&C Participaties B.V., including <amstel.gold>, <xcel.energy>, <sedgqick.claims>, and so forth. These domain names clearly resemble various well-known trademarks in various sectors of commerce.
5. Parties’ Contentions
Complainant contends that it has satisfied all three elements required under the Policy for a transfer of the Domain Name.
Respondent did not file a formal Response. The only substantive communication is from the purported current holder of the Domain Name, “J. Brookfield.” That communication is reproduced in full above.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel concludes that Complainant has rights in the mark BROOKFIELD through registration and use demonstrated in the record. The Panel also finds that the Domain Name is identical to that mark.
Complainant has established Policy paragraph 4(a)(i).
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are 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.
The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name. Apart from the missive, quoted in full above, from a “J. Brookfield” and a dubious document (which includes the logo C&C and also bears a legend “A GENUINE SURINAM[E] COMPANY”), there is no evidence that there is an actual company in Suriname owned by someone named Brookfield. There is also no explanation from anyone on Respondent’s side of this case of who “Henry Dunant” is. If there was an actual person in Suriname named J. Brookfield, and he genuinely owned a real estate business, and he truly made an innocent, bona fide purchase of the Domain Name from C&C Participaties B.V. and/or Michel Bishoen (a confirmed cybersquatter, see Naspers Limited v. M. Bishoen, C&C Participaties B.V., WIPO Case No. D2019-2363), then the Panel would have expected some fairly easy corroboration of the existence of a legitimate Suriname business. The dubious document attached to the “J. Brookfield” missive is self-contradictory and appears, without more, to be a fabrication rather than the record of a legitimate, genuine, arm’s-length transaction.
In short, there is insufficient evidence in this record to conclude that “J. Brookfield” is anything more than an alias of Michel Bishoen. There is also a previous case under the UDRP in which Michel Bishoen and C&C Participaties B.V. were found to have engaged in cyberflight, i.e., transferring a domain name to a purported third party after receiving a cease-and-desist letter in order to frustrate a legitimate cybersquatting claim, in circumstances very similar to those apparent from this record. See Naspers Limited v. M. Bishoen, C&C Participaties, B.V., WIPO Case No. D2019-2363, regarding the domain name <naspers.media>.
Complainant has established Policy paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent registered and used the Domain Name in bad faith within the meaning of the above-quoted Policy paragraph 4(b)(ii). The Panel concludes that Respondent (who, as discussed above, is Michel Bishoen, C&C Participaties B.V., J. Brookfield, and/or Henry Dunant, Chillup NV collectively or separately) very likely had Complainant’s BROOKFIELD trademark in mind when registering the Domain Name. This finding is supported by evidence of the widespread use of that mark around the world, the fact that the Top-Level Domain (“.properties”) is highly suggestive of a real estate business, and the fact that Michel Bishoen and C&C Participaties B.V. have a history of registering domain names which target trademarks.
As respects bad faith use of the Domain Name, the Panel concludes that Respondent has registered the Domain Name to prevent Complainant from reflecting its BROOKFIELD trademark in a corresponding domain name, and that Respondent has engaged in a pattern of such conduct. Again, this constitutes bad faith under Policy paragraph 4(b)(ii).
Complainant has established Policy paragraph 4(a)(iii).
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <brookfield.properties>, be transferred to Complainant.
Robert A. Badgley
Date: May 8, 2020