WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Brown Rudnick v. Biaosheng Huang
Case No. D2018-1699
1. The Parties
Complainant is Brown Rudnick of Boston, Massachusetts, United States of America (“United States”), represented by Brown Rudnick LLP, United States.
Respondent is Biaosheng Huang of Arkansas, United States.
2. The Domain Name and Registrar
The Disputed Domain Name <brownrudnick.info> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 26, 2018. On July 27, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 27, 2018, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 August 9, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 29, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 30, 2018.
The Center appointed Richard W. Page as the sole panelist in this matter on September 11, 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 an international law firm with offices in the United States and in the European Union, and represents clients from around the world in numerous matters.
Complainant is the owner of multiple registrations for the trademark BROWNRUDNICK (the “BROWNRUDNICK Mark”), including European Union Trademark Reg. No. 5147228, registered on June 2, 2006; Canadian Trademark Reg. No. 1303089, registered on May 26, 2006; United States Trademark Reg. No. 3201322, registered on February 6, 2006; and United States Trademark Reg. No. 3201323, registered on February 6, 2006.
The Disputed Domain Name was registered on March 20, 2018.
5. Parties’ Contentions
A. Complainant
Complainant contends that it has actively marketed and heavily invested to promote the BROWNRUDNICK Mark and the goodwill associated with it worldwide. Through extensive use of over 60 years, the BROWNRUDNICK Mark has generated significant goodwill.
Complainant further contends that it has a formidable Internet presence and is the owner of multiple domain names containing the BROWNRUDNICK Mark, including <brownrudnick.com>, <citrix.brownrudnick.com>, <cyber.brownrudnick.com>, <owa.brownrudnick.com>, <legacy.brownrudnick.com>, among others.
Complainant further contends that as a result of these activities and investments, the BROWNRUDNICK Mark has become internationally known, particularly in the legal market.
Complainant alleges that the Disputed Domain Name integrates the BROWNRUDNICK Mark in its entirety, as a dominant element, with a top-level domain “.info” which does not serve to sufficiently distinguish the Disputed Domain Name from the BROWNRUDNICK Mark. Incorporation of the BROWNRUDNICK Mark is sufficient to establish that the Disputed Domain Name is identical or confusingly similar to the BROWNRUDNICK Mark.
Complainant further alleges that the Disputed Domain Name is identical and confusingly similar to the BROWNRUDNICK Mark and that Complainant has satisfied paragraph 4(a)(i) of the Policy.
Complainant asserts that Respondent has no legitimate or colorable claim to the Disputed Domain Name. No license or authorization has been given to Respondent by Complainant to use the BROWNRUDNICK Mark or to register a domain name incorporating the BROWNRUDNICK Mark or any confusingly similar denomination.
Complainant further asserts that Respondent is not generally known by the Disputed Domain Name and does not have any right in any mark that corresponds to it. Complainant further asserts that Respondent has not made any use of the Disputed Domain Name prior to the filing of this Complaint, and certainly not any legitimate noncommercial or fair use.
Complainant further asserts that Respondent has no valid right or legitimate interest in the Disputed Domain Name and that Complainant has thus satisfied paragraph 4(a)(ii) of the Policy.
Complainant avers that Respondent’s acquisition and use of the Disputed Domain Name are also in bad faith within the meaning of paragraph 4(a)(iii) of the Policy. Complainant further avers that a Google or Yahoo search of the Disputed Domain Name generated a search description, which indicated that the Disputed Domain Name is being used. Upon double-clicking the Disputed Domain Name from the Google or Yahoo search page, the Disputed Doman Name re-directs to a website “www.tnairmax2019.com” advertising Nike shoes for purchase. Complainant argues that Respondent has acquired and registered the Disputed Domain Name in an intentional attempt to divert users to its website for commercial gain by creating a likelihood of confusion with the BROWNRUDNICK Mark.
Complainant contends that it is plainly evident that “BROWNRUDNICK” is not a generic term; it is not found in a dictionary and a cursory web search would immediately reveal that it is Complainant’s name.
Complainant further contends that there exists no conceivable reason for Respondent to have chosen the Disputed Domain Name but for Respondent’s motivation to trade on the reputation of the BROWNRUDNICK Mark, which had existed for many years at the time of Respondent’s registration.
Complainant asserts that incorporating a widely known trademark as a domain name may in and of itself be considered as an indication of bad faith.
Complainant further asserts that Respondent took active steps to conceal its identity by providing false contact information to the Registrar. Specifically, Respondent provided an address and phone number that simply do not exist. Other panels have found that supplying fictitious contact information can indicate bad faith as well as obstruct the UDRP system. Complainant concludes that in light of Respondent’s registration and use of the Disputed Domain Name as a means to generate revenue through diverting customers to its website and creating a likelihood of confusion with the BROWNRUDNICK Mark, Respondent has registered and used the Disputed Domain Name in bad faith and Complaint has thus satisfied paragraphs (b) and 4(a)(iii) of the Policy.
B. Respondent
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable.”
Respondent is not obliged to participate in a domain name dispute proceeding, but if it fails to do so, asserted facts that are not unreasonable would be taken as true and Respondent will be subject to the inferences that flow naturally from the information provided by Complainant: See, Reuters Limited v. Global Net 2000, Inc.,
WIPO Case No. D2000-0441.
Even though Respondent has failed to file a Response or to contest Complainant’s assertions, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:
i) that the Disputed Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and,
ii) that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and,
iii) that the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainant contends that it has numerous registrations of the BROWNRUDNICK Mark. Prior UDRP decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption. Respondent has the burden of refuting this assumption. See, EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,
WIPO Case No. D2000-0047.
Respondent has not contested the registrations of the BROWNRUDNICK Mark and there is no evidence in this file questioning these registrations. Therefore, the Panel finds that Complainant has enforceable trademark rights in the BROWNRUDNICK Mark for purposes of this proceeding.
Complainant further contends that the Disputed Domain Name is identical with and confusingly similar to the BROWNRUDNICK Mark pursuant to the Policy, paragraph 4(a)(i).
Numerous UDRP decisions have recognized that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark. Complainant argues that the entirety of the BROWNRUDNICK Mark is incorporated into the Disputed Domain Name. Complainant further argues that when a Disputed Domain Name incorporates an entire trademark with only the addition of the gTLD “.info”, it is still confusingly similar to the trademark as the addition of a gTLD extension like “.info” does not prevent a finding of confusing similarity. See F. Hoffmann-LaRoche AG v. P Martin,
WIPO Case No. D2009-0323; Dixons Group Plc. v. Mr. Abu Abdullaah,
WIPO Case No. D2001-0843; V&S Vin & Sprit AB v. Ooar Supplies,
WIPO Case No. D2004-0962; Research in Motion Limited v. One Star Global LLC,
WIPO Case No. D2009-0227; Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign,
WIPO Case No. D2004-0206; SoftCom Technology Consulting Inc. v. Olariu Romeo/Orv Fin Group S.L.,
WIPO Case No. D2008-0792.
The Panel finds that the entirety of the BROWNRUDNICK Mark is incorporated into the Disputed Domain Name and that the suffix “.info” does not prevent a finding of confusing similarity. Therefore, the Disputed Domain Name is confusingly similar to the BROWNRUDNICK Mark and Complainant has made an adequate showing under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Complainant contends that Respondent has no rights or legitimate interest in the Disputed Domain Name pursuant to the Policy, paragraph 4(a)(ii).
Section 2.1 of the WIPO Overview 3.0 states that once Complainant makes a prima facie case in respect of the lack of rights or legitimate interests of Respondent, Respondent carries the burden of demonstrating it has rights or legitimate interests in the Disputed Domain Name. Where Respondent fails to do so, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
Respondent has no relationship with or permission from Complainant for the use of the BROWNRUDNICK Mark.
Paragraph 4(c) of the Policy allows three nonexclusive methods for the Panel to conclude that Respondent has rights or a legitimate interest in the Disputed Domain Name:
(i) before any notice to you [Respondent] of the dispute, your use 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Disputed 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 Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the BROWNRUDNICK Mark.
Complainant has alleged that Respondent is not generally known by the Disputed Domain Name and does not have any right in any mark that corresponds to it. Complainant further asserts that Respondent has not made any bona fide use of the Disputed Domain Name prior to the filing of this Complaint, and certainly not any legitimate noncommercial or fair use.
The Panel finds that Complainant has made a prima facie showing that Respondent lacks interests or legitimate rights in the Disputed Domain Name and that Respondent has failed to rebut these allegations. Therefore, the Panel finds that Complainant has made the requisite showing under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith in violation of paragraph 4(a)(iii) of the Policy.
Paragraph 4 (b) of the Policy sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of domain names:
(i) circumstances indicating that you [Respondent] have registered or you have acquired the Dispute Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to Complainant who is the owner of the BROWNRUDNICK Mark to a competitor of Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Disputed Domain Name; or
(ii) you [Respondent] have registered the Disputed Domain Name in order to prevent Complainant from reflecting the BROWNRUDNICK Mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you [Respondent] have registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Disputed Domain Name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with BROWNRUDNICK Mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product
The Panel notes that the Disputed Domain Name re-directs to a website, “www.tnairmax2019.com”, advertising Nike shoes for purchase. Complainant argues that Respondent has acquired and registered the Disputed Domain Name in an intentional attempt to divert Internet users to its website for commercial gain by creating a likelihood of confusion with the BROWNRUDNICK Mark.
The Panel finds that there is sufficient evidence that Respondent has violated paragraph 4(b)(iv) of the Policy. Respondent has not contested this evidence. Therefore, the Panel finds that Complainant has made the requisite showing for paragraph 4(a)(iii) 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 <brownrudnick.info> be transferred to Complainant.
Richard W. Page
Sole Panelist
Date: September 19, 2018
