WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Brasfield & Gorrie, L.L.C. v. WhoisGuard Protected, WhoisGuard, Inc. / Daniel Roberts

Case No. D2018-0836

1. The Parties

The Complainant is Brasfield & Gorrie, L.L.C. of Birmingham, Alabama, United States of America ("United States"), represented by Balch & Bingham, LLP, United States.

The Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama, Panama / Daniel Roberts of Birmingham, United Kingdom of Great Britain and Northern Ireland ("United Kingdom").

2. The Domain Name and Registrar

The disputed domain name <brasfieldgorriegroup.com> is registered with NameCheap, Inc. (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 13, 2018. On April 16, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 16, 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 the Complainant on April 17, 2018 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 April 27, 2018.

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 April 30, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 20, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 23, 2018.

The Center appointed Mladen Vukmir as the sole panelist in this matter on June 4, 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

The Panel has determined the following non-contested facts:

(i) the disputed domain name <brasfieldgorriegroup.com> was registered on January 24, 2018 (Annex A to the Complaint);

(ii) the Respondent is the registrant of the disputed domain name (Annex A to the Complaint and confirmed by the Registrar in verification response as of April 16, 2018);

iii) the Complainant is the owner of a number of BRASFIELD & GORRIE trademark registrations as listed in the Complaint:

5. Parties' Contentions

A. Complainant

The Complainant, essentially, asserts:

(i) The Complainant is a company in the construction industry and is the owner of multiple United States trademark registrations. The Complainant specifies the following United Stated trademark registrations: typed drawing BRASFIELD & GORRIE, Serial No. 76165188 (which has been in continuous use since 1997); word mark BRASFIELD & GORRIE Serial No. 76165187 (which has been in continuous use since 1967); and typed drawing BRASFIELD & GORRIE Serial No. 76165199 (which has been in continuous use since 1997) (the "BRASFIELD & GORRIE trademarks"). The Complainant asserts that successful trademark registration with the United States Patent and Trademark Office ("USPTO") creates a presumption of rights in a mark.

(ii) The Complainant states that it has used the name Brasfield & Gorrie continually since 1967, while the disputed domain name <brasfieldgorriegroup.com> was registered just over two months before filing the Complaint with the Center. The Complainant states that the Brasfield & Gorrie brand and BRASFIELD & GORRIE trademarks are associated by the public as representative of the Complainant's products and services.

(iii) The disputed domain name is confusingly similar to the Complainant's BRASFIELD & GORRIE trademarks. In this regard, the Complainant asserts:

- the disputed domain name is identical to the BRASFIELD & GORRIE trademarks, with the addition of the word "group". According to the Complainant, this minor change is not enough to overcome a finding of confusing similarity;

- if a web user searches for, or expects to find information about the Complainant, due to similarity of the disputed domain name and the Complainant's BRASFIELD & GORRIE trademarks, the web user may be deceived and lured to the Respondent's web site;

- entering <brasfieldgorriegroup.com> into the address bar, the unsuspecting user is redirected to Complainant's website "www.brasfieldgorrie.com". The Complainant states that such redirection further causes confusion among the Complainant's legitimate customers.

(iv) The Respondent has no rights or legitimate interests with respect to the disputed domain name and in support of such claim, the Complainant contends that:

- The Respondent is not using, nor is there any evidence that it is prepared to use the disputed domain name in connection with a bona fide offering of goods and services. The Respondent is not (and has never been) commonly known by the disputed domain name, and is not making a legitimate noncommercial or fair use of the disputed domain name. The Complainant considers that the Respondent uses the disputed domain name to mislead consumers about the Complainant's services.

- The Respondent cannot claim any legitimate, non-infringing, or fair use of the Complainant's BRASFIELD & GORRIE trademarks, since certain entries of the Respondent's disputed domain name redirect to the Complainant's website, while others go to a webpage designated as "under construction". The Respondent chose to use the Complainant's trademark as the Respondent's domain name in order to deceive Internet users into believing that they were accessing the Complainant's web site.

(v) The disputed domain name is being used in bad faith and in this respect the Complainant states the following:

- The Respondent's disputed domain name was created just over two months before filing the Complaint, and has no content available (the Complainant's last check was performed on April 2, 2018). Entering the disputed domain name into the address bar redirects to the Complainant's legitimate website, while a more detailed search of "www.brasfieldgorriegroup.com" loads a blank page that is allegedly under construction.

- The disputed domain name was registered only for one apparent reason, which was to transmit deceptive emails to the Complainant's clients, and in this regard the Complainant refers to two such email threads attached to the Complaint (Annex C and Annex D to the Complaint). Annex C is a request that the recipient send its company's direct deposit form and in the process, the Respondent further infringes the Complainant's trademark on the signature of the email. The Complainant states that Annex D is a more deceptive communication. It is an email thread whereby the last "remittance" is requested from another potential victim. The Complainant describes that the impersonator requests the payments be sent via wire transfer. At the same time, instead of just copying and infringing on the Complainant's logo as the signature of the email, the Respondent also included the Complainant's phone number in the signature to give a false impression of authenticity. The Complainant states that both attachments are examples of the harm that has been facilitated by the Respondent's registration of the disputed domain name.

- The Complainant asserts that in an effort to protect itself, the Respondent has concealed its identity by registering the disputed domain name through WhoisGuard Protected, a proxy domain name registration service that advertises and offers anonymity to its users. The Complainant further considers that veil of secrecy, aimed at avoiding detection and escaping any repercussions, is further evidence of the Respondent's bad faith registration and use of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

The Panel now proceeds to consider this matter on the merits in light of the Complaint, the lack of Response, the Policy, the Rules, the Supplemental Rules and other applicable legal authority pursuant to paragraph 15(a) of the Rules.

Paragraph 4(a) of the Policy provides that the complainant must prove, with respect to the disputed domain name, each of the following:

(i) the domain name is identical or confusingly similar to a trademark 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.

A. Identical or Confusingly Similar

Primarily, the Panel emphasizes that under general consensus view, the mere fact of ownership of a registered trademark by the complainant is generally sufficient to satisfy the threshold requirement of having trademark rights (see section 1.1 of the WIPO Overview of WIPO Panel Views on Selected UDPR Questions, Third Edition ("WIPO Overview 3.0")).

The Complainant has submitted sufficient evidence to show that it is the owner of a number of BRASFIELD & GORRIE trademarks, specifically trademarks registered in the United States where the Respondent is located.

Moreover, it is well established that the threshold test for confusing similarity under the UDRP involves a comparison between the complainant's trademark and the disputed domain name to determine if it is identical or confusingly similar. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the disputed domain name, with the addition of descriptive or geographical terms typically being disregarded as insufficient to prevent a finding of confusing similarity. Application of the confusing similarity test under the UDRP typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name, and in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing (see sections 1.7 and 1.8 of WIPO Overview 3.0).

After performing the side-by-side comparison of the domain name and the textual components of the relevant trademark, it is evident to this Panel that the disputed domain name incorporates the Complainant's BRASFIELD & GORRIE trademark in its entirety, and that the same trademark is clearly recognizable as such within the disputed domain name.

The Panel must further answer the question of whether adding the term "group" to the Complainant's BRASFIELD & GORRIE trademark in the disputed domain name is sufficient to prevent the confusing similarity of the disputed domain name with the Complainant's BRASFIELD & GORRIE trademark.

With respect to the above, this Panel upholds the Complainant's contention that the addition of the term "group" is insufficient to prevent a finding of confusing similarity.

Namely, the term "group" is clearly descriptive and as such is not sufficient to overcome the confusing similarity with respect to the Complainant's BRASFIELD & GORRIE trademark which remains the dominant element in the disputed domain name.

Prior UDRP panels have found confusing similarity in a number of earlier cases based on the circumstances involving domain names comprised of a trademark and a descriptive term, including the term "group". Confusing similarity was found in those instances because the term that was added did nothing to overcome the recognizability of the trademark itself. See particularly, ABB Asea Brown Boveri Ltd. v. Toni Woods, WIPO Case No. D2014-1543 (<abb‑group‑tr.com>); Arkema France v. Arkema Global, Arkema Group, Arkema Corp and Arkema Cloud, WIPO Case No. D2014-2010 (<arkemaglobal.com>); Allianz SE v. Antonio Porchia, WIPO Case No. D2010‑0694 (<allianz-global.com>); Playboy Enterprises International, Inc. v. Zeynel Demirtas, WIPO Case No. D2007-0768 (<playboyturkey.com>); Hoffmann-La Roche Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923 (<yourtamiflushop.com>); Nintendo of America Inc. v. Fernando Sascha Gutierrez, WIPO Case No. D2009-0434 (<unlimitedwiidownloads.com>).

With respect to the applicable generic Top-Level Domain ("gTLD") ".com" suffix in the disputed domain name, it is generally accepted that it may be disregarded under the confusing similarity test (see section 1.11 of the WIPO Overview 3.0).

For all the foregoing reasons, the Panel finds that the Complainant has satisfied the requirement set forth in paragraph 4(a)(i) of the Policy, and has proven that the disputed domain name is confusingly similar to its BRASFIELD & GORRIE trademark.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:

"(i) Before any notice to [the respondent] of the dispute, use by [the respondent] 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; or

(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trademark or service mark rights; or

(iii) Where [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."

As noted by previous UDRP panels on the onus of proof under paragraph 4(a)(ii) of the Policy, and as summarized in section 2.1 of the WIPO Overview 3.0: "[…]While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of "proving a negative", requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element […]".

In the present case, the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

Namely, the Complainant has established that it is the owner of multiple BRASFIELD & GORRIE trademarks, specifically in the United States. The Complainant also established common law rights in the Brasfield & Gorrie marks by way of using the name Brasfield & Gorrie continually since 1967, whereas the <brasfieldgorriegroup.com> disputed domain name was registered just over two months ago. In other words, the Complainant established that the "Brasfield & Gorrie" brand and the BRASFIELD & GORRIE trademarks are associated by the public as representative of the Complainant's products and services.

The Panel observes that there is neither any relation, disclosed to the Panel nor otherwise apparent from the records, between the Respondent and the Complainant, nor does it arise that the Complainant has ever licensed or otherwise permitted the Respondent to use its BRASFIELD & GORRIE trademarks, or to apply for or use any domain name incorporating the same trademarks.

Furthermore, there is no evidence that the Respondent has registered a BRASFIELD & GORRIE trademark in its name, or that the Respondent has been commonly known by the disputed domain name.

In addition, there is no evidence in the case file or otherwise apparent to the Panel that the Respondent has been using the disputed domain name in connection with a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers.

Moreover, from the evidence presented by the Complainant, it arises that the Respondent used the disputed domain name to create an email address from which it sent emails to the Complainant's clients. Two such emails were submitted by the Complainant attached to the complaint as Annex C and Annex D. Annex C is a request that the recipient send his company's direct deposit form. Annex D is a more deceptive communication. This email thread requests the last "remittance" from another potential victim. The impersonator requests the payments be sent via wire transfer. This time, instead of just copying and infringing on Complainant's logo as the signature of the email, the Respondent also included the Complainant's phone number in the signature to give a false impression of authenticity. Both attachments are examples of the harm that has been facilitated by the Respondent's registration of <brasfieldgorriegroup.com>.

In this Panel's opinion it can be safely concluded that the Respondent was well aware of the Complainant, its business and trademarks, and deliberately chose to include the Complainant's BRASFIELD & GORRIE trademarks in the disputed domain name, all in order to trade on the renown of the Complainant's trademarks and to achieve commercial gain by sending emails to the Complainant's clients and thus misleading them.

Such use of the disputed domain name by the Respondent cannot be considered as a legitimate noncommercial or fair use nor does it constitute a bona fide offering of goods and services. This is in line with views taken by panels in earlier UDRP cases.

Furthermore, panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent (see sections 2.13 and 3.4. of the WIPO Overview 3.0.; and relevant panel decisions in UDRP cases, particularly Spoke Media Holdings, Inc. v. Andrey Volkov, WIPO Case No. D2010-1303; DivX, LLC v. PrivacyProtect.org / Gerente de Dominia, CSRUS Enterprises, WIPO Case No. D2011-0600; Publix Asset Management Company v. WhoisGuard, Inc. / Entrep, David Levey / Mr. Dunaway, WIPO Case No. D2013-1349; Accor v. SANGHO HEO / Contact Privacy Inc., WIPO Case No. D2014-1471; Haas Food Equipment GmbH v. Usman ABD, Usmandel, WIPO Case No. D2015-0285; Sydbank A/S v. Syd Bank, WIPO Case No. D2015-0324; KPMG LLP v. Whoisguard, Inc., WIPO Case No. D2016-0051; and Triple-S Management Corporation v. Whois Privacy Protection Services Inc. / Nathan Stringer, WIPO Case No. D2016-0008.

Creating an email address from which to send emails to the Complainant's clients and making false representations in order to solicit payments from the Complainant's clients, is in the Panel's opinion, illegal activity and as such cannot be considered as a legitimate noncommercial or fair use nor does it constitute a bona fide offering of goods and services.

Accordingly, the Panel finds that the requirements set forth in paragraph 4(a)(ii) of the Policy have been fulfilled by the Complainant having made the prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name and by the Respondent's failing to produce sufficient arguments or evidence to the contrary.

C. Registered and Used in Bad Faith

For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular, but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith:

(i) circumstances indicating that the holder has registered or has 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 the holder's documented out-of-pocket costs directly related to the domain name; or

(ii) the holder 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 the holder has engaged in a pattern of such conduct; or

(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder's 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 the holder's website or location or of a product or service on the holder's website or location.

Owing to any other evidence to the contrary, the Panel accepts the Complainant's arguments substantiated by evidence that the Respondent has registered and used the disputed domain name in bad faith.

First, this Panel holds that the Respondent was well aware of the Complainant, its business and/or the Complainant's BRASFIELD & GORRIE and other trademarks, because:

- the Complainant's BRASFIELD & GORRIE trademark is distinctive, registered and does not constitute a dictionary term in any of the languages known to the Panel, including English;

- entering <brasfieldgorriegroup.com> into the address bar, the unsuspecting user is redirected to the Complainant's website "www.brasfieldgorrie.com". The Complainant states that such redirection further causes confusion among Complainant's legitimate customers;

- the Respondent used the disputed domain name to transmit deceptive emails to the Complainant's clients, more specifically emails such as a request that the recipient send its company's direct deposit form and an email thread whereby another potential victim is requested to transmit a "remittance" form.

It is difficult to imagine that the Respondent would create a website containing the BRASFIELD & GORRIE trademark, or that a visitor to the subject website would be redirected to the Complainant's legitimate website, or that the Respondent would falsely represent itself as the Complainant and write fraudulent emails to the Complainant's clients, without being aware of the Complainant, its business and/or the Complainant's trademarks. Earlier UDRP panels have found bad faith registration based in part on proof that the respondent "knew or should have known" about the existence of the complainant's trademark (see section 3.2.2 of the WIPO Overview 3.0).

Summing up, the Respondent's disputed domain name has no content available (although it was registered just over two months before filing the Complaint) and entering the disputed domain name into the address bar redirected the user to the Complainant's legitimate website. In addition to that, the disputed domain name was registered only for a deceptive reason, which was to transmit deceptive emails to the Complainant's clients, requesting their payments. In at least some such communications, the Respondent included other elements of the Complainant's identity, trying to give an impression of authenticity.

In this Panel's view, such fraudulent comportment of the Respondent is clear evidence of the Respondent's bad faith in registration and use of the disputed domain name. Panels in earlier UDRP cases have held that the use of a domain name to send deceptive emails, e.g., to obtain sensitive or confidential personal information from prospective job applicants, or to solicit payment of fraudulent invoices from the complainant's actual or prospective customers and clients constitutes bad faith on the side of the respondent (see Paragraph 3.4 of the WIPO Overview 3.0 and relevant panel decisions in earlier UDRP cases, especially KPMG LLP v. Whoisguard, Inc., WIPO Case No. D2016-0051; CitiusTech Healthcare Technology Private Limited v. VistaPrint Technologies Ltd, WIPO Case No. D2015-2186; and bioMérieux v. John Koontz, WIPO Case No. D2017-0299).

For that reason, the Panel finds the provisions of paragraph 4(b)(iv) of the Policy to be especially applicable in this case, since Internet users might be misled about the source, sponsorship, affiliation, or endorsement of the website to which the disputed domain name resolves.

Given the above, the Panel determines that the disputed domain name has been registered and is being used in bad faith and that the Complainant has fulfilled the third element under paragraph 4(a) of the Policy.

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 <brasfieldgorriegroup.com> be transferred to the Complainant.

Mladen Vukmir
Sole Panelist
Date: June 19, 2018