WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Brookfield Office Properties Inc. v. Syed Hussain, Domain Management MIC
Case No. D2018-2659
1. The Parties
The Complainant is Brookfield Office Properties Inc. of Toronto, Canada, represented by SafeNames Ltd., United Kingdom.
The Respondent is Syed Hussain, Domain Management MIC of Closter, New Jersey, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <brookfield.ventures> is registered with Name.com, Inc. (Name.com LLC) (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 20, 2018. On November 21, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 27, 2018, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on December 3, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 24, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 24, 2018.
The Center appointed Alistair Payne as the sole panelist in this matter on January 2, 2019. 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 real estate operating company, specialising in real estate investment strategies. The Complainant is part of Brookfield Asset Management, an alternative assets management company initially founded in 1899 and now a public company whose revenue in 2017 exceeded USD 40 billion and with approximately USD 330 billion worth of assets under its management. It is staffed by over 750 investment professionals and 80,000 operating employees spread over 100 offices and in 30 countries. The Complainant is a subsidiary of Brookfield Asset Management and focuses on the real estate division of the company.
The Complainant owns various trade mark registrations worldwide for BROOKFIELD, including, in particular, United States trade mark registration 2472583, with serial number 74712476. The Complainant has operated its main website at the domain name <brookfield.com> since November 1, 1998. It also owns numerous other domain names that incorporate its BROOKFIELD mark, including domain names such as <brookfieldcapital.us>, <brookfieldfunds.us> and <brookfieldfinancial.us>.
The disputed domain name was registered on April 24, 2018 by the Respondent who is a domain name broker and owns a substantial domain name portfolio.
5. Parties’ Contentions
A. Complainant
The Complainant submits that it owns registered trade mark rights in its BROOKFIELD mark and that the disputed domain name is identical to the Complainant’s BROOKFIELD mark as it incorporates it in its entirety without any distinguisher. It says that while previous panels have tended to disregard the top-level suffix, in this case the term “ventures” as a generic Top-Level Domain (“gTLD”) reinforces the confusing similarity of the disputed domain name with the Complainant’s “BROOKFIELD” trade mark.
To the best of the Complainant’s knowledge, the Respondent has not registered any trade mark for the term “Brookfield” or “Brookfield Ventures” and, therefore, says the Complainant, the Respondent does not hold rights to the disputed domain name. The Complainant also submits that the Respondent has never been commonly known by the disputed domain name and has not acquired common law rights as a result of use.
The Complainant submits that the disputed domain name currently resolves to a platform on which it is advertised for sale and prior to this used to redirect to various web pages and advertisements from which the Respondent most likely derived income. The Complainant suggests that the fact that the disputed domain name is advertised on various sites as being for sale is indicative that the Respondent is not intending to use the disputed domain name in connection with a bona fide offering of goods and services, as its primary intention is to sell the disputed domain name with the Complainant’s trade mark value in mind.
There is no evidence, according to the Complainant, that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name. Indeed, the Respondent, before notice of the dispute, redirected the disputed domain name to diverse websites that advertised the disputed domain name for sale. The Complainant says that the Respondent is a well-known cybersquatter who is known for registering third-party owned trade marks as domain names with the main intention of reselling them for profit.
The fact that the disputed domain name is advertised on popular domain name aftermarket websites, and now on the webpage of the disputed domain name itself, says the Complainant, only serves to further reinforce the assumption that the Respondent is trying to gain commercially from the disputed domain name by selling it back to the highest bidder. As a consequence of all of these circumstances the Complainant says that it has presented a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name.
The Complainant asserts that the BROOKFIELD trade mark has been active for over 17 years and predates the registration of the disputed domain name by 17 years. It says that based on the degree of renown attached to its BROOKFIELD mark, in particular in the United States where the Respondent is based, that it is more likely than not that the Respondent knew, or at least was aware of the goodwill and reputation attaching to the Complainant’s BROOKFIELD mark at the time of its registration of the disputed domain name.
The Complainant further submits that upon identifying the Respondent’s use of the disputed domain name, a cease and desist letter was sent out to the Respondent on September 10, 2018. On the same day, the Respondent replied to the Complainant’s letter and offered the disputed domain name for sale at a price of USD 1,750. This, says the Complainant, further reinforces the idea that the disputed domain name was registered and is being used in bad faith.
The Complainant also submits that the requirements of paragraph 4(b)(i) of the Policy are made out in that the Respondent not only advertises the sale of the disputed domain name on the webpage itself using the Above.com marketplace but had also, prior to issue of the cease and desist letter, re-directed it to different websites and advertisements. At that time, the disputed domain name was already for sale on the domain aftermarket website “www.afternic.com” for a price of USD 3,250. Therefore, says the Complainant, it is clear that the primary intention of the Respondent by registering the disputed domain name was to sell it back for valuable consideration at a very high price well in excess of its out-of-pocket costs, as the disputed domain name was listed for sale shortly after its registration.
Further, says the Complainant, the Respondent has under paragraph 4(b)(ii) of the Policy, by registering the disputed domain name sought to prevent the Complainant from reflecting its mark in a corresponding domain name and has engaged in a pattern of such conduct. In this regard the Complainant notes that the Respondent is associated with a portfolio of over 1,600 domain names and in this portfolio, the Respondent registered a high number of domain names incorporating well-known trademarks, such as <adsalibaba.com>, <amazonprimelive.com>, <barclaysam.com>, <bauerventurecapital.com>, <beinsportsusa.com>, and <deutschebankdbdirect.com>. The Complainant says that the Respondent clearly targets famous trade marks to take unfair advantage of those companies. In this regard the Panel notes the Complainant’s submission that the Respondent has been involved in at least 42 domain name disputes which resulted in the transfer of the disputed domain name(s) in each case to the Complainant. On this basis, the Complainant submits that it is clear that the Respondent is a serial cybersquatter who registers domain names containing third-party trade marks with the view of selling them back for profit to their trade mark owner and or to their competitors.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has demonstrated that it owns registered trade mark rights for its BROOKFIELD mark and in particular United States trade mark registration 2472583, with serial number 74712476, filed on August 8, 1995 and registered on July 31, 2001. The disputed domain name wholly incorporates the Complainant’s BROOKFIELD mark and is identical to it if the Top-Level Domain element is disregarded. On this basis the Panel finds that the Complainant has made out its case under the first element of the Policy.
B. Rights or Legitimate Interests
The Complainant has submitted that the Respondent owns no registered trade mark rights for the disputed domain name, that the Respondent has never been commonly known by the disputed domain name and neither has it acquired any common law rights as a result of use.
Neither is the fact that the disputed domain name resolves to a platform on which it is advertised for sale and prior to this was used to redirect to various web pages and advertisements, from which the Respondent most likely derived income, consistent with the Respondent not having rights or legitimate interests in the disputed domain name. As noted by the Complainant this use of the disputed domain name only serves to further reinforce the assumption that the Respondent is trying to gain commercially from the disputed domain name by selling it back to the highest bidder. The Panel notes that there is also no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name
As a result of all of these circumstances and of those noted under Part C below, the Panel finds that the Complainant has made out a prima facie case that the Respondent does not have any rights or legitimate interests in the disputed domain name. As the Respondent has failed to rebut this case, the Complaint also succeeds under this element of the Policy.
C. Registered and Used in Bad Faith
The disputed domain name was registered in April 2018, many years after the registration of the Complainant’s United States trade mark registration 2472583 for BROOKFIELD and after the Complainant first started using its main website at the domain name <brookfield.com> in November 1998. Considering the size and breadth of the Complainant’s business and the apparent degree of renown attaching to it in the United States where the Respondent is based, the Panel finds that it is more likely than not that the Respondent was well aware of the Complainant’s business under the BROOKFIELD mark when it registered the disputed domain name.
Under paragraph 4(b)(i) of the Policy, the bad faith use of a domain name may be indicated where there are circumstances indicating that a respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring it 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 documented out-of-pocket costs directly related to the disputed domain name. In this case the Respondent not only advertises the sale of the disputed domain name on the webpage itself but also responded to the Complainant’s cease and desist letter with an offer to sell it for very much more than the out-of-pocket costs directly related to the disputed domain name. Prior to sending the cease and desist letter the Complainant notes that the disputed domain name was already for sale on the domain aftermarket website “www.afternic.com” for a price of with a price offer of USD 3,250, a price that again was very substantially in excess of the Respondent’s out of pocket costs. On this basis the Panel finds that the Complainant has successfully made out its case of the Respondent’s bad faith in terms of paragraph 4(b)(i) of the Policy.
The Panel also finds that under paragraph 4(b)(ii) of the Policy, the Respondent has by registering the disputed domain name, sought to prevent the Complainant from reflecting its mark in a corresponding domain name and that it has engaged in a pattern of such conduct. As noted earlier, the disputed domain name wholly incorporates the Complainant’s very well reputed mark and features no distinguisher. The Top-Level Domain (“.venture”) in this case only exacerbates the possibility of confusion by its similarity to the pattern of various other of the Complainant’s BROOKFIELD family of domain names. The Complainant appears to have registered the disputed domain name incorporating the Complainant’s well reputed BROOKFIELD mark in a similar manner to that in which it has targeted other well reputed or famous marks. The Panel notes also the Complainant’s submission that the Respondent has been involved in at least 42 prior domain name disputes which resulted in the transfer of the disputed domain name(s) in each case to the Complainant. Clearly, the Respondent has a history of this conduct that amounts to a pattern in terms of paragraph 4(b)(ii) of the Policy.
The Panel finds that it is more likely than not on the balance of probabilities that the Complainant registered the disputed domain name in order to secure the registration of the very well reputed BROOKFIELD mark in the “.ventures” Top-Level Domain space with a view to targeting the Complainant’s mark and taking unfair advantage of it. This action has prevented the Complainant from securing the registration of its BROOKFIELD mark in the “.ventures” Top-Level Domain name space and it is apparent that the Respondent has a long running history of having engaged in similar conduct on previous occasions. On this basis the Panel finds that the requirements of paragraph 4(b)(ii) of the Policy have been made out by the Complainant.
Accordingly, the Complaint also succeeds under this element 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, <brookfield.ventures>, be transferred to the Complainant.
Alistair Payne
Sole Panelist
Date: January 9, 2019
