WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Brookfield Office Properties Inc. v. Domain Administrator, PrivacyGuardian.org / Sazuke Yoshimura, Global Connector

Case No. D2020-2412

1. The Parties

The Complainant is Brookfield Office Properties Inc., Canada, represented by Marks & Clerk Intellectual Property, Canada.

The Respondent is Domain Administrator, PrivacyGuardian.org, United States of America (“United States”) / Sazuke Yoshimura, Global Connector, Netherlands.

2. The Domain Name and Registrar

The disputed domain name <brookfieldinvestmentfundsplc.net> is registered with NameSilo, LLC (the “Registrar”) on July 2, 2019.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 17, 2020. On September 17, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 17, 2020, 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 September 18, 2020, 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 September 22, 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 the Respondent of the Complaint, and the proceedings commenced on September 23, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 13, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 14, 2020.

The Center appointed Andrew Brown Q.C. as the sole panelist in this matter on October 21, 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

The Complainant states that it is a subsidiary owned by Brookfield Asset Management, Inc., (“BAM”), a well-known global alternative asset management company focusing on real estate, renewable power, infrastructure, business services, public securities, and private equity.

The Complainant further states that it holds over 110 active registrations for BROOKFIELD-formative trademarks worldwide and licenses the same to BAM and its related entities and subsidiaries (the Brookfield group). The Complainant states that these trademarks have been used since at least as early as 1990 in association with a broad range of services and businesses, including, inter alia, financial and investment services, real estate services, infrastructure services and renewable energy services. The Complainant relies on the following trademarks in support of its Complaint:

These are collectively referred to as the “BROOKFIELD Marks” and individually as the BROOKFIELD INVESTMENT MANAGEMENT Mark and BROOKFIELD Mark, respectively.

The Complainant further states that it has been using the BROOKFIELD Marks, directly or indirectly through its licensees within the Brookfield group through its website held at the domain name <brookfield.com>. This domain name was registered in 1998 and has been operating since at least as early as 2005. The Complainant, directly or through its related entities, owns numerous other “brookfieldinvestmentfunds” and “brookfieldinvestment” formative domain names.

In particular, the Complainant relies on the following domain names in support of its Complaint: <brookfieldinvestmentfunds.net>, <brookfieldinvestmentfunds.com>, <brookfieldinvestmentfunds.co.uk>, <brookfieldinvestmentfunds.eu>, <brookfieldinvestmentfunds.org>, <brookfieldinvestmentfunds.ca>, <brookfieldinvestmentfunds.us>, <brookfieldinvestmentfunds.biz>, and <brookfieldinvestmentfunds.info>. The Complainant states that each of these domain names forward to its website held at the domain name <brookfield.com> and all were registered prior to the registration of the disputed domain name.

The Complainant’s various domain names are collectively referred to as the “BROOKFIELD Domain Names”.

The Respondent registered the disputed domain name <brookfieldinvestmentfundsplc.net> on July 2, 2019. It resolves to a website which offers investment services and financial services that directly overlap with those of the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant asserts its rights in the BROOKFIELD Marks. The Complainant contends that the disputed domain name is confusingly similar to its BROOKFIELD Marks. First, the Complainant states that the disputed domain name incorporates the entirety of its well-known BROOKFIELD Mark, with only descriptive additional terms such as “funds” and “plc”. In this respect, the Complainant states that the term “funds” is a common reference in the investment sector and that the term “plc” is a common reference to a type of corporate entity. Secondly, the Complainant states that the disputed domain name incorporates the dominant portion of the BROOKFIELD INVESTMENT MANAGEMENT Mark with only the generic terms “management” and “fund” being different. Thirdly, the Complainant states that the disputed domain name is almost identical to its BROOKFIELD Domain Names, including but not limited to the nine domain names that contain the term “brookfieldinvestmentfunds”, with the only difference being the absence of the generic term “plc” in the Complainant’s domain names.

The Complainant also contends that the Respondent has no rights or no legitimate interests in the disputed domain name. In this respect, the Complainant states that it has not authorized, licensed, or permitted the Respondent to register or use the disputed domain name or to use the BROOKFIELD Marks. The Complainant further contends that the disputed domain name was registered with the aim to fraudulently misrepresent to the public as being an official website of the Complainant. In this respect, the Complainant states that on April 24, 2020 the United Kingdom’s Financial Conduct Authority published a notice that the Respondent was operating a scam to defraud investors and “cloning” the Complaint’s legitimate business. Similarly, the Complainant states that on July 13, 2020 the Central Bank of Ireland issued a warning that the disputed domain name was operating an infringing website to pose as an investment firm/investment business in the absence of appropriate authorizations and cloned the details of the Complainant’s legitimate business.

Finally, the Complainant contends that the disputed domain name was registered and has been used in bad faith and in full knowledge of the Complainant’s rights. The Complainant asserts that the Respondent acquired the disputed domain name primarily for the purpose of attempting to attract, for commercial gain, the Complainant’s customers to the website to which the disputed domain name resolves by creating an association with the BROOKFIELD Marks and the BROOKFIELD Domain Names. In this respect, the Complainant contends that the Respondent has used the disputed domain name to “clone” the Complainant’s legitimate business in order to scam and defraud investors. In support, the Complainant again refers to the fact that the Respondent has incorporated the entirety of its BROOKFIELD Marks and a significant portion of the BROOKFIELD INVESTMENT MANAGEMENT Mark into the disputed domain name along with descriptive words that mirror the name of the Complainant’s legitimate business.

The Complainant further states that it has made the Respondent aware of its rights by way of cease and desist letter sent to the Respondent first on June 16, 2020 and again on August 6, 2020. The Complainant states that the Respondent did not reply to either letter.

B. Respondent

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

6. Discussion and Findings

Pursuant to paragraph 4(a) of the Policy, a Complainant must prove each of the following elements with respect to the disputed domain name in order to succeed in this proceeding:

(i) That the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights; and

(ii) That the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iiii) That the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has provided evidence of its registrations in relation to the BROOKFIELD Marks in Canada, the United States, the United Kingdom, the European Union, Malaysia, Singapore, Australia, Mexico, and Switzerland. The Complainant has also provided evidence of its registrations in relation to the BROOKFIELD INVESTMENT MANAGEMENT Mark in Canada and the United States. The Complainant has stated that it has used the BROOKFIELD Mark and other BROOKFIELD-formative Marks since at least as early as 1990.

The Complainant has also provided evidence of its use of the BROOKFIELD Marks in its domain names including its main website <brookfield.com> and <brookfieldinvestmentfunds> and <brookfieldinvestment>-formative domain names. The Complainant states that its website at the <brookfield.com> domain name has been operative since at least as early as 2005.

Accordingly, it is the Panel’s view that the Complainant has clearly and sufficiently demonstrated its rights in the BROOKFIELD Mark and the BROOKFIELD INVESTMENT MANAGEMENT Mark. The Panel is also satisfied that the Complainant is well-known by its BROOKFIELD Marks as a global alternative asset management company.

The Panel accepts that the disputed domain name is confusingly similar to the Complainant’s BROOKFIELD Marks, in particular the Complainant’s BROOKFIELD INVESTMENT MANAGEMENT Mark because it incorporates the first two words of this Mark.

Section 1.8 of the WIPO Overview 3.0 states that where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless or otherwise) would not prevent a finding of confusing similarity under the first element. The Panel notes that when comparing the disputed domain name against the BROOKFIELD Mark and the BROOKFIELD INVESTMENT MANAGEMENT Mark, only the terms “management”, “funds” and “plc” differ. The Panel also accepts that the term “investment” is a common reference in the investment sector and the term “plc” is a common reference to a type of corporate entity.

With respect to the “.net” generic Top-Level Domain (“gTLD”) suffix, section 1.11.1 of the WIPO Overview 3.0 states that a Top-Level Domain (“TLD”) in a domain name is generally viewed as a standard registration requirement and as such is disregarded under the first element. Section 1.11.2 further states that the practice of disregarding the TLD in determining identity or confusing similarity is applied irrespective of the particular TLD (including with regard to “new gTLDs”) as the ordinary meaning applied to a particular TLD would not necessarily impact assessment of the first element. See also the decision of Société Air France v. Registration Private, Domains By Proxy, LLC / albuquerque Albuquerque, hwuaye, WIPO Case No. D2019-0191. The Panel therefore accepts that the gTLD “.net” may be disregarded for the purpose of comparison under the first element.

In summary, the Panel therefore finds that the disputed domain name is similar to the Complainant’s BROOKFIELD Mark and BROOKFIELD INVESTMENT MANAGEMENT Mark.

Therefore, the Panel finds that paragraph 4(a)(i) of the Policy is satisfied in favor of the Complainant.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish that it has rights or legitimate interests in the disputed domain name, among other circumstances, by showing any one of the following elements:

(i) That before notice of the dispute, the Respondent used or made 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; or

(ii) That the Respondent has been commonly known by the disputed domain name, even if it had acquired no trademark or service mark rights; or

(iii) That the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The overall burden of proof for establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name lies with the Complainant.

There is no evidence of the existence of any of the rights or legitimate interests on the part of the Respondent pursuant to Paragraph 4(c) of the Policy. The Complainant has stated, and the Panel accepts, that it has not authorized the Respondent to uses its BROOKFIELD Marks including the BROOKFIELD INVESTMENT MANAGEMENT Mark, and that the Respondent is not a licensee of the Complainant. The Complainant has rights in the BROOKFIELD Marks which precede the Respondent’s registration of the disputed domain name.

The Complainant has provided as evidence, a screenshot of the website to which the disputed domain name resolves (Annex 2 of the Complaint). This screenshot shows that the disputed domain name resolves to a page with links in relation to the Complainant’s activities and displaying the Complainant’s BROOKFIELD Mark. The Complainant has also provided as evidence warnings issued to the public by two separate regulatory authorities which notify the public that the website to which the disputed domain name resolves “clones” the Complainant’s legitimate business for fraudulent purposes. These warnings are attached to the Complaint as Annexes 10 and 11. The Panel therefore concludes that the Respondent likely intended to capitalize on the reputation and goodwill of the Complainant’s BROOKFIELD Marks.

Section 2.13.1 of the WIPO Overview 3.0 states that the use of a domain name for illegal activity can never confer rights or legitimate interests on a respondent.

The Respondent has failed to show that it has acquired any rights with respect to the disputed domain name or that the disputed domain name is used in connection with a bona fide offering of goods and services. The Respondent had the opportunity to demonstrate its rights or legitimate interests, but it did not reply to the Complainant’s Complaint.

The Panel therefore finds that the Complainant has satisfied the burden of establishing a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, which has not been rebutted by the Respondent, and accordingly finds paragraph 4(a)(ii) of the Policy is satisfied in favor of the Complainant.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the disputed domain name in bad faith.

The Panel is satisfied that the disputed domain name has been registered in bad faith for the following reasons:

(i) The disputed domain name was registered in 2019, several years after the Complainant first registered its BROOKFIELD Marks and own Domain Names.

(ii) The Panel is satisfied that the Complainant’s BROOKFIELD Marks are globally well-known in its industry. The Panel is also satisfied that the Respondent was, and is, aware of the Complainant and its BROOKFIELD Marks. This is evidenced by the fact that the disputed domain uses the BROOKFIELD Mark in its entirety and is confusingly similar to the BROOKFIELD INVESTMENT MANAGEMENT Mark.

(iii) Paragraph 2 of the Policy puts a burden on registrants where it states “by applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that […[ to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of a third party […]. It is your responsibility to determine whether your domain name infringes or violates someone else’s rights”. Even a most cursory trademark or other online search or any online search of existing domain names prior to the Respondent registering the disputed domain name would have instantly revealed the Complainant and its BROOKFIELD Marks. See in this regard section 3.2.3 of the WIPO Overview 3.0. The Respondent’s use of the BROOKFIELD mark and links to services relating to the Complainant’s legitimate business activities supports a finding that the Respondent knew of the Complainant, the Complainant’s BROOKFIELD Marks and the Complainant’s services as at the date of registration of the disputed domain name.

(iv) The circumstances of the case and, in particular, the adoption of the Complainant’s BROOKFIELD INVESTMENT MANAGEMENT Mark, indicates to the Panel that the Respondent registered the disputed domain name to create a likelihood of confusion with the Complainant’s BROOKFIELD Marks and website in order to attract customers for its own financial gain.

The Panel is also satisfied that the disputed domain name has been used in bad faith for the following reasons:

(i) As already noted, the Complainant has provided evidence (Annexes 10 and 11 of the Complaint) of warnings issued to the public of the use of the website to which the disputed domain name resolves for fraudulent purposes, in particular, “cloning” the legitimate business of the Complainant to defraud investors. The asserted use of the website to which the disputed domain resolves for fraudulent activity clearly constitutes bad faith (see Clarium Capital Management, LLC v. Contact Privacy Inc. Customer 0152053957 / Roelof Botha, WIPO Case No. D2019-2696).

(ii) Further, the Respondent has made no submissions in these proceedings and so the Panel infers that the Respondent has allowed the disputed domain name to be used with an intent to attract internet users on its website by creating a likelihood of confusion with the Complainant’s BROOKFIELD Mark and BROOKFIELD INVESTMENT MANAGEMENT Mark as to source, affiliation or endorsement.

(iii) The Complainant has also stated that it notified the Respondent of its infringing use of the Complainant’s BROOKFIELD Marks but received no response from the Respondent. The Panel considers this constitutes evidence of continuing use of the disputed domain name in bad faith.

Accordingly, the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied in favor of the Complainant.

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 <brookfieldinvestmentfundsplc.net> be transferred to the Complainant.

Andrew Brown Q.C.
Sole Panelist
Date: October 27, 2020