WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Brookfield Office Properties Inc. v. Super Privacy Service LTD c/o Dynadot / Cyan Yo

Case No. D2020-2861

1. The Parties

The Complainant is Brookfield Office Properties Inc., Canada, represented by SafeNames Ltd., United Kingdom.

The Respondent is Super Privacy Service LTD c/o Dynadot, United States of America (“United States” or “US”) / Cyan Yo, China.

2. The Domain Name and Registrar

The disputed domain name <brookfieldpsg.com> is registered with Dynadot, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 29, 2020. On October 29, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 29, 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 November 3, 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 November 4, 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 November 16, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 6, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 16, 2020.

The Center appointed Edoardo Fano as the sole panelist in this matter on December 28, 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.

Having reviewed the communication records in the case file provided by the Center, the Panel finds that the Center has discharged its responsibility under the Rules, paragraph 2(a), “to employ reasonably available means calculated to achieve actual notice to Respondent”. Therefore, the Panel shall issue its Decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of a response from the Respondent.

The language of the proceeding is English, being the language of the Registration Agreement, as per paragraph 11(a) of the Rules.

4. Factual Background

The Complainant is Brookfield Office Properties Inc., a Canadian subsidiary of Brookfield Asset Management operating in the real estate field and owning, among others, the following trademark registrations for BROOKFIELD:

- Canadian Trademark Registration No. TMA472422 for BROOKFIELD, registered on March 12, 1997;
- European Union Trade Mark Registration No. 017554809 for BROOKFIELD, registered on August 11, 2018.

The Complainant also operates on the Internet, its official website being “www.brookfieldproperties.com”.

The Complainant provided evidence in support of the above.

The disputed domain name was registered on February 17, 2020, according to the WhoIs records, and is redirected to a website “www.dan.com”, where the disputed domain name is offered for sale at the price of USD 990..

On September 23, 2020 the Complainant’s legal representatives sent a cease-and-desist letter to the Respondent, and the Respondent did not reply.

5. Parties’ Contentions

A. Complainant

The Complainant states that the disputed domain name is confusingly similar to its trademark BROOKFIELD, as the disputed domain name wholly contains the Complainant’s trademark with the addition of the acronym “psg”, corresponding to a division of the Complainant’s business (“Brookfield Public Securities Group”).

Moreover, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name since it has not been authorized by the Complainant to register the disputed domain name or to use its trademark within the disputed domain name, it is not commonly known by the disputed domain name, and it is not making either a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name, since it is trying to generate substantial monetary revenue through the sale of the disputed domain name based on its value as a trademark.

The Complainant submits that the Respondent has registered the disputed domain name in bad faith, since the Complainant’s trademark BROOKFIELD is distinctive and internationally known. Therefore, the Respondent targeted the Complainant’s trademark at the time of registration of the disputed domain name. Additionally, the Complainant contends that the fact that the Respondent is trying to sell the disputed domain name for a price higher than the Respondent’s out-of-pocket costs relating to the disputed domain name qualifies as bad faith registration and use. Finally, the Complainant submits that the Respondent has engaged in a pattern of bad faith conduct, having been involved in several UDRP proceedings for abusive domain name registration.

B. Respondent

The Respondent did not reply to the Complainant’s contentions and is therefore in default. In reference to paragraphs 5(f) and 14 of the Rules, no exceptional circumstances explaining the default have been put forward or are apparent from the record.

A respondent is not obliged to participate in a proceeding under the Policy, but if it fails to do so, reasonable facts asserted by a complainant may be taken as true, and appropriate inferences, in accordance with paragraph 14(b) of the Rules, may be drawn (see, e.g., Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441; Microsoft Corporation v. Freak Films Oy, WIPO Case No. D2003-0109; SSL INTERNATIONAL PLC v. MARK FREEMAN, WIPO Case No. D2000-1080; ALTAVISTA COMPANY v. GRANDTOTAL FINANCES LIMITED et. al., WIPO Case No. D2000-0848; Confédération Nationale du Crédit Mutuel, Caisse Fédérale du Crédit Mutuel Nord Europe v. Marketing Total S.A., WIPO Case No. D2007-0288).

6. Discussion and Findings

Paragraph 4(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed:

(i) the disputed 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 disputed domain name; and

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

A. Identical or Confusingly Similar

The Panel finds that the Complainant is the owner of the trademark BROOKFIELD both by registration and acquired reputation and that the disputed domain name is confusingly similar to the trademark BROOKFIELD.

Regarding the addition of the acronym “psg”, the Panel notes that it is now well established that the addition of descriptive terms or letters to a domain name does not prevent a finding of confusing similarity between the domain name and a trademark. SeeWIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8. The addition of the acronym “psg” does not therefore prevent the disputed domain name from being confusingly similar to the Complainant’s trademark.

It is also well accepted that a generic Top-Level Domain (“gTLD”), in this case “.com”, may be ignored when assessing the similarity between a trademark and a domain name (see, e.g., VAT Holding AG v. vat.com, WIPO Case No. D2000-0607).

The Panel finds that the Complainant has therefore met its burden of proving that the disputed domain name is confusingly similar to the Complainant’s trademark, pursuant to the Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Respondent did not file a Response in accordance with the Rules, paragraph 5.

The Complainant asserts that the Respondent is not using the disputed domain name for a legitimate noncommercial or fair use or in connection with a bona fide offering of goods or services. The Complainant states that the Respondent is trying to sell the disputed domain name for a price higher than the Respondent’s out-of-pocket costs relating to the disputed domain name.

The Panel is of the opinion that the Respondent’s activity cannot be considered as a use of the disputed domain name in connection with a bona fide offering of goods or services.

The prima facie case presented by the Complainant is enough to shift the burden of production to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name. However, the Respondent has not presented any evidence of any rights or legitimate interests it may have in the disputed domain name, and the Panel is unable to establish any such rights or legitimate interests on the basis of the evidence in front of it.

Moreover, the Panel finds that the composition of the disputed domain name carries a risk of implied affiliation. See WIPO Overview 3.0, section 2.5.1.

Based on the facts of this case, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

The Panel therefore finds that paragraph 4(a)(ii) of the Policy has been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that “for the purposes 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 a domain name in bad faith:

(i) circumstances indicating that [the respondent 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 the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or

(ii) that [the respondent 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 respondent has] engaged in a pattern of such conduct; or

(iii) that [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’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 respondent’s] website or location or of a product or service on [the respondent’s] website or location”.

Regarding the registration in bad faith of the disputed domain name, the reputation of the Complainant’s trademark BROOKFIELD in the real estate field is clearly established and the Panel finds that the Respondent likely knew of the Complainant and deliberately registered the disputed domain name, also because the acronym “psg” added to the Complainant’s trademark in the disputed domain name corresponds to a division of the Complainant’s business, namely “Brookfield Public Securities Group”.

The Panel further notes that the disputed domain name is also used in bad faith since the Respondent is trying to obtain an undue payment by selling it for a price likely higher than the normal out-of-pocket costs relating to the registration of the disputed domain name.

Moreover, as illustrated in the cases referred to in the Complaint (among which Actelion Pharmaceuticals ltd v. Cyan Yo, WIPO Case No. D2015-0335 and Calvin Klein Trademark Trust & Calvin Klein, Inc. v. Super Privacy Service LTD c/o Dynadot / Cyan Yo, WIPO Case No. D2020-0982), the Respondent has engaged in a pattern of bad faith conduct consisting in several abusive domain name registrations.

The Panel finds that the Complainant has presented evidence to satisfy its burden of proof with respect to the issue of whether the Respondent has registered and is using the disputed domain name in bad faith.

The Panel therefore finds that paragraph 4(a)(iii) of the Policy has been satisfied.

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 <brookfieldpsg.com> be transferred to the Complainant.

Edoardo Fano
Sole Panelist
Date: January 5, 2021