WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Brookfield Office Properties, Inc. v. Host Master, 1337 Services LLC
Case No. D2021-1553
1. The Parties
The Complainant is Brookfield Office Properties, Inc., Canada, represented by Marks & Clerk Canada, Canada.
The Respondent is Host Master, 1337 Services LLC, Saint Kitts and Nevis.
2. The Domain Names and Registrar
The disputed domain names <bifplc.com> and <brookfieldinvestmentfundsplc.co> (the “Domain Names”) are registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 18, 2021. On May 19, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On May 19, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 21, 2021 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 May 25, 2021.
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 June 15, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 5, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 7, 2021.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on July 15, 2021. 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 corporation organized under the laws of the Province of Ontario, Canada. It is a subsidiary of Brookfield Asset Management, Inc. (“Brookfield”), a global alternative asset management company. Brookfield was founded in 1899 and now operates in 30 countries with some 150,000 employees. Focused on real estate, renewable power, infrastructure, business services, public securities and private equity services, Brookfield currently has approximately $550 billion in assets under management. The group has operated a principal website at “www.brookfield.com” since 1998 (the “Complainant’s website”), and it holds many other domain names containing the terms “brookfieldinvestmentfunds” and “brookfieldinvestment”, such as “www.brookfieldinvestmentfunds.co.uk”, which redirect to the Complainant’s website.
The Complainant owns over 110 active BROOKFIELD formative trademarks worldwide and licenses them to Brookfield and group entities for use in their business. Relevant trademark registrations include the following:
March 12, 1997
August 24, 2007
BROOKFIELD (standard characters)
United States of America
June 21, 2016
January 28, 2011
August 11, 2018
BROOKFIELD INVESTMENT MANAGEMENT (word)
May 11, 2011
BROOKFIELD INVESTMENT MANAGEMENT (standard characters)
United States of America
May 14, 2013
The Domain Name <brookfieldinvestmentfundsplc.co> was registered on November 24, 2020, and the Domain Name <bifplc.com> was registered on November 27, 2020. According to the Registrar, both were registered in the name of the Respondent “Host Master, 1337 Services LLC”, listing a post office box in Saint Kitts and Nevis and email addresses with the domain name <njal.la>. That domain name is used for the website of the Swedish domain privacy service Njalla. According to its website at “www.njal.la”, “Njalla is run by 1337 LLC based in Nevis”, which appears to be the Respondent. The Respondent has not disclosed the underlying registrant or replied to correspondence from the Complainant or the Center in this proceeding.
The Domain Names both resolve to a website (the “Respondent’s website”) at “www.bifplc.com” headed “Brookfield Investment Funds PLC”, advertising asset management, wealth management, and corporate advisory services, as well as a custom online trading platform. The Respondent’s website lists addresses in London, England and Dublin, Ireland. According to the “About” page, the Respondent is an “FCA Schedule 5 regulated entity (Reference number: 584543)”. The Financial Conduct Authority (FCA) is a statutory financial services regulatory body in the United Kingdom with a website at “www.fca.org.uk”. Since April 2020, the FCA has published a Notice on its website reporting that this reference number belongs to an authorized FCA entity with a similar name - a Brookfield affiliate called Brookfield Investment Funds (UCITS) plc - which has been “cloned” by Brookfield Investment Funds PLC. As explained on the FCA website, “Individuals are using the details of this firm to suggest they work for the genuine firm. We call this a cloned firm and it is typically part of a scam”.
5. Parties’ Contentions
The Complainant asserts that the Domain Names are confusingly similar to its BROOKFIELD formative trademarks. The Complainant contends that the Respondent has no permission to use its BROOKFIELD marks in the Domain Names or to present a website that imitates and competes with the Complainant’s business and features details that appear to be associated with an affiliate of the Complainant. The Complainant cites this conduct, as well as the obfuscation of the Respondent’s actual identity, as evidence of bad faith on the part of the Respondent.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) the 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 domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules, “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
A. Identical or Confusingly Similar
The first element of the UDRP “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the domain name”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. The Complainant holds trademark registrations for BROOKFIELD and marks including BROOKFIELD INVESTMENT. The Domain Name <brookfieldinvestmentfundsplc.com> adds terms that do not prevent a finding of confusing similarity. See id., section 1.8. The Domain Name <bifplc.com> has the appearance of representing an abbreviation for “brookfield investment funds plc”, the other Domain Name that was registered three days earlier and used for the same Respondent’s website. In this case, the Panel finds it appropriate to refer to the sister registration and content of the Respondent’s website, which offers financial services and impersonates the Complainant by falsely referring to the FCA registration number of one of the Complainant’s affiliates. “[W]here a panel would benefit from affirmation as to confusing similarity with the complainant’s mark, the broader case context such as website content trading off the complainant’s reputation, or a pattern of multiple respondent domain names targeting the complainant’s mark within the same proceeding, may support a finding of confusing similarity.” (Id. sections 1.7, 1.15)
As usual, the generic Top-Level Domain (“gTLD”) “.com” and the Colombia country code Top-Level Domain (“ccTLD”) “.co” are disregarded as a standard registration requirement. See id. section 1.11.2.
Accordingly, the Panel finds that both Domain Names are confusingly similar to the Complainant’s registered BROOKFIELD and BROOKFIELD formative trademarks and concludes that the Complaint satisfies the first element of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the respondent may establish rights or legitimate interests in the domain name, by demonstrating any of the following:
(i) before any notice to it 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) that the respondent has been commonly known by the domain name, even if it 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.
Because a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1.
The Complainant in this proceeding has demonstrated trademark rights, the lack of permission to use its well-known BROOKFIELD marks, and the Respondent’s use of each of the Domain Names for a website competing with the Complainant and impersonating one of its affiliates. This does not indicate a bona fide commercial activity or noncommercial fair use, so the burden shifts to the Respondent to produce evidence of rights or legitimate interests. The Respondent has not done so. The Panel concludes that the Complainant prevails on this second element of the Complaint.
C. Registered and Used in Bad Faith
The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following (in which “you” refers to the registrant of the domain name):
“(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 Respondent is a domain privacy service that has not disclosed the underlying registrant. The Respondent can nevertheless be held accountable for the registration and use of the Domain Name. The Policy defines “you” or “your” to refer to “the domain-name holder” (see Policy, Note 3). Paragraph 1 of the Rules defines the “respondent” in a UDRP proceeding as “the holder of a domain name registration against which a complaint is initiated”. As confirmed by the Registrar, 1337 Services LLC is the current holder of the Domain Name registration and is thus properly named as the Respondent, with registered contact details at Njalla. Here is how Njalla describes its role on the “About” page of its website:
“We're a different type of domain name registration service!
We care about your right to privacy. We believe it's an important piece of democracy that we have the right to be anonymous.
Njalla was started because we couldn't find a domain name service that we ourselves wanted to use. Our goals are to be caring about privacy, simple and flexible.
When you buy a domain in our system, we're actually purchasing it for ourselves. We will be the actual owners of the domain, it's not an ownership by proxy as found with all other providers. However, you will still have the full control over the domain name. You can either use our information, our nameservers or you can go with your custom data.
If you ever want to move the domain from our system, we'll of course give you the domain without any additional costs.
The idea is to make sure that we minimise your visibility to the public. We're not going to give your customer data out easily. However, we will help if there are legal merits to any formal government requests to our system. If you use our service in a way that affects anyones health or safety, we reserve the right to suspend your service.
Njalla is run by 1337 LLC based in Nevis.”
In cases involving a domain privacy service, it is customary for the Registrar providing the service, on receiving notice of a UDRP complaint, to identify the underlying or beneficial registrant, whose name is then substituted or added as a respondent. See Rules 4(b), and WIPO Overview 3.0, section 4.4. “In all cases involving a privacy or proxy service and irrespective of the disclosure of any underlying registrant, the appointed panel retains discretion to determine the respondent against which the case should proceed.” WIPO Overview 3.0, section 4.4.5.
UDRP panels have added as respondents the underlying registrants or the persons found to be controlling them. See id., section 4.4.2. As the panel reasoned in The Royal Bank of Scotland Group plc v. Reserved Bench of Strategic Geographers / Domain ID Shield Service, WIPO Case No. D2012-1733, “the ‘Respondent’ must be the person or entity whose potential rights or legitimate interests in the disputed domain name, registration, and alleged bad faith are at stake”. But where that stakeholder seeks to avoid accountability under the registration agreement, and the domain privacy service abets this evasion by refusing to identify the underlying registrant, UDRP panels also have held the domain privacy service responsible for the underlying registrant’s conduct, pointing to paragraph 22.214.171.124 of the ICANN Registrar Accreditation Agreement. “[This] states that a WhoIs-listed registrant (referred to as the ‘Registered Name Holder’) accepts liability for any use of the relevant domain name unless it timely discloses the contact information of any underlying beneficial registrant.” WIPO Overview 3.0, section 4.4.6.
The Panel in this proceeding adopts this rationale. The Njalla privacy service may decide for itself whether there are “legal merits to any formal government requests”, but in the end its parent company remains responsible for the domain names that it owns. The Panel may infer bad faith where this Respondent fails to respond to trademark and UDRP claims, evincing a disregard of the rights of others. Those rights are not limited, after all, to “health and safety” concerns. Trademark infringement, phishing personal information, fraud, and financial scams, for example, are clearly within the scope of the Policy’s conception of bad faith. See WIPO Overview 3.0, section 3.4 (citing cases involving various bad-faith uses in addition to trademark abuse).
The evidence on this record is that the Domain Names have been exploiting an internationally well-established financial services trademark for a website evidently designed to scam potential investors by impersonating one of the Complainant’s affiliates, down to the detail of its UK FCA registration number. This demonstrates prior knowledge of the Complainant and its mark and bad faith intent to trade illicitly on the mark. Another WIPO panel similarly found bad faith where a respondent’s imitative website also appeared to be “cloning” this same Complainant’s business in Brookfield Office Properties Inc. v. Domain Administrator, PrivacyGuardian.org / Sazuke Yoshimura, Global Connector, WIPO Case No. D2020-2412. There, as here, the record included “warnings issued to the public of the use of the website to which the disputed domain name resolves for fraudulent purposes”.
The Panel finds that this conduct reflects bad faith in the registration and use of the Domain Names. The Panel finds in addition that the Respondent privacy service may be held accountable for such conduct under the registration agreement and concludes, therefore, that the third element of the Policy has been established.
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, <bifplc.com> and <brookfieldinvestmentfundsplc.co>, be transferred to the Complainant.
W. Scott Blackmer
Date: July 26, 2021