Bbhcap.com, Bbhcap.online

The timeline behind bbhcap.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

How each disputed name was decided in this proceeding.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

DECISION Brown Brothers Harriman & Co. v. Anna Maria Serafima Raevskaya-Repnina Claim Number: FA2210002016351 PARTIES Complainant is Brown Brothers Harriman & Co. (“Complainant”), represented by Allen J. Baden of Baden Law Firm PC, US. Respondent is Anna Maria Serafima Raevskaya-Repnina (“Respondent”), RU. REGISTRAR AND DISPUTED DOMAIN NAMES The domain names at issue are <bbhcap.com> and <bbhcap.online>, registered with Registrar of Domain Names REG.RU LLC. PANEL The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding. Richard Hill as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to Forum electronically on October 17, 2022; Forum received payment on October 17, 2022. On October 18, 2022, Registrar of Domain Names REG.RU LLC confirmed by e-mail to Forum that the <bbhcap.com> and <bbhcap.online> domain names are registered with Registrar of Domain Names REG.RU LLC and that Respondent is the current registrant of the names. Registrar of Domain Names REG.RU LLC has verified that Respondent is bound by the Registrar of Domain Names REG.RU LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”). On October 24, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint in English and Russian, setting a deadline of November 14, 2022 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@bbhcap.com, postmaster@bbhcap.online. Also on October 24, 2022, the Written Notice of the Complaint, in English and Russian, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts. Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default in English and Russian. On November 17, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Richard Hill as Panelist. Having reviewed the communications records, the Administrative Panel (the "Panel") finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent. Preliminary Issue: Language of Proceeding Prior to discussing the three elements of the Policy, the Panel must decide on the language of the proceedings. The Registration Agreement is written in Russian, thereby making the language of the proceedings Russian. Pursuant to UDRP Rule 11(a), the Panel has the authority to determine a different language for the proceedings, having regard to the circumstances of the case. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Pursuant to Rule 10(b), Respondent must be given a fair opportunity to present its case. Pursuant to Rule 10(c), the Panel may weigh the relative time and expense in enforcing the Chinese language agreement, which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”). Complainant provides evidence showing that Respondent’s LinkedIn profile is in English, thus showing that Respondent is conversant and proficient in English. In the present case, Respondent has received the Written Notice and Commencement Notification in Russian and has chosen not to respond to the Complaint. The resolving website <bbhcap.com> is in English and Respondent is conversant and proficient in English. Pursuant to Rule 11(a), having regard to the circumstances of the case, the Panel determines that fairness and justice to both parties, and due expedition, are best satisfied by conducting the remainder of the proceedings in English. See H-D U.S.A., LLC v. Yoshihiro Nakazawa, FA 1736477 (Forum July 21, 2017); see also UBS AG v. ratzel laura, FA 1735687 (Forum July 14, 2017). RELIEF SOUGHT Complainant requests that the domain names be transferred from Respondent to Complainant. PARTIES' CONTENTIONS A. Complainant Complainant states that, founded in 1818, it has been commonly referred to and operating under the BBH trade name and trademark since at least as early as 1958. It is a limited partnership under the laws of the State of New York, USA. Complainant provides financial services to clients globally in three primary business areas: investor services, investment management and private banking. Complainant employs over 4500 professionals in seventeen offices in North America, Europe and Asia. Complainant’s customers include financial institutions, mutual funds, pension funds, sovereign wealth funds, not-for-profit entities, trusts and high net worth individuals located worldwide. Complainant’s customers, competitors and the financial services market are familiar with Complainant’s BBH trade name and trademark. In 1998, Complainant was the 9th largest global custodian at (U.S.) $295 Billion in custodial assets; by 2001, Complainant had (U.S.) $900 Billion in custodial assets, making it the 7th largest custodian worldwide; two-thirds of these assets were outside the United States, as Complainant offers services under the BBH mark through 135 banks in 104 markets; in 2003, Complainant was ranked the 9th largest global custodian; in 2004, Complainant was ranked the 10th largest global custodian; by 2007, Complainant had (U.S.) $1.7 Trillion in assets in custody; of that $1.7 Trillion, global custodies make up 81%; in 2011, Complainant was the 31st largest wealth management firm in the United States with (U.S.) $11.1 Billion in United States private client assets; today, Complainant has approximately (U.S.) $4.1 Trillion in assets in custody. The reputation of Complainant’s BBH brand is such that many public sources refer to the brand, including Business Wire, Euromoney, and Global Investor. Complainant has been recognized for its sponsorship of numerous events worldwide. Complainant’s reputation is bolstered by multiple awards confirming Complainant is a leader in the provision of financial and wealth management services industry. Complainant owns the domain name <bbh.com>, which it registered in 1995. Complaint asserts trademark rights in the BBH mark through its registration in the United Kingdom in 1992. The mark is registered elsewhere around the world, including through WIPO in 2009. Complainant alleges that the disputed domain names are confusingly similar to its BBH mark because both domain names incorporate the mark in its entirety and merely add the generic term “cap” (which stands for “capital”, which refers to Complainant’s business) and a top-level domain. According to Complainant, Respondent has no rights or legitimate interests in the disputed domain names. Respondent is neither commonly known by the disputed domain name nor has Complainant authorized Respondent to use its mark. Respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial fair use. Instead, Respondent is using the <bbhcap.com> domain name to redirect Internet users to a website that purports to offer services that directly compete with Complainant’s business. Respondent is not using the <bbhcap.online> domain name. Further, says Complainant, Respondent has registered and is using the disputed domain names in bad faith. The notoriety of Complainant’s mark and associated business allows the inference that Respondent had either actual or constructive notice of Complainant’s rights in the BBH mark. Respondent’s attempt to create a likelihood of confusion as to the source, sponsorship and affiliation of its website, for the purpose of attracting Internet users for commercial gain, is also evidence that Respondent has registered the disputed domain name <bbhcap.com> in bad faith. Additionally, the <bbh.online> domain name does not resolve to an active website. B. Respondent Respondent failed to submit a Response in this proceeding. FINDINGS Complainant owns the mark BBH and uses it to market financial services around the world. The mark is well known. Complainant’s rights in its mark date back to 1992. The disputed domain names were registered in 2022. Complainant has not licensed or otherwise authorized Respondent to use its mark. One of the disputed domain names resolves to a website that purports to offer services that compete with those of Complainant. The other disputed domain name is not being used. DISCUSSION Paragraph 15(a) of the Rules instructs this Panel to "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." Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (2) Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name has been registered and is being used in bad faith. In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”). Identical and/or Confusingly Similar The disputed domain names incorporate Complainant’s BBH mark in its entirety and merely add the generic term “cap” (which stands for “capital”, which refers to Complainant’s business) and a top-level domain. The addition of generic terms, especially when those terms reference Complainant’s business, cannot distinguish the disputed domain names from Complainant’s mark under Policy ¶ 4(a)(i). See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”); see also Am. Express Co. v. Buy Now, FA 318783 (Forum Oct. 14, 2004) (“In the view of the Panel, the disputed domain names are confusingly similar to Complainant’s AMERICAN EXPRESS and AMEX marks. Each disputed domain name contains the AMERICAN EXPRESS or AMEX marks in its entirety and merely adds nondistinctive, descriptive and generic terms, some of which describe Complainant’s business). Therefore, the Panel finds that the disputed domain names are confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i). Rights or Legitimate Interests Complainant has not licensed or otherwise authorized Respondent to use its mark. Respondent is not commonly known by the disputed domain names: under Policy ¶ 4(c)(ii), the Panel may look to the WHOIS information to determine whether a respondent is commonly known by a disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Here, the WHOIS information on record lists “Anna Maria Serafima Raevskaya-Repnina” as the registrant of the disputed domain names. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names per Policy ¶ 4(c)(ii) . Respondent is using the <bbhcap.com> domain name to redirect Internet users to a website that purports to offer services that compete with those of Complainant. Using a confusingly similar domain name to direct users to a website offering competing services is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (“use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Therefore, the Panel finds that Respondent is not using the disputed domain <bbhcap.com> to make a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). The other disputed domain name, <bbhcap.online>, is not being used. Failure to make an active use of a domain name demonstrates that Respondent is not using the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial fair use. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). Therefore, the Panel finds that Respondent is not using the <bbhcap.online> domain name for a bona fide offering of goods or services either. Registration and Use in Bad Faith Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain names. Indeed, as already noted, the <bbhcap.com> domain name resolves to a website that purports to offer competing services. Offering competing services at a confusingly similar domain name is evidence that Respondent is using the domain name to attract Internet users for commercial gain and therefore that Respondent has registered and is using the disputed domain name in bad faith. See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website); see also Univ. of Texas Sys. v. Smith, FA 1195696 (Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). Consequently, the Panel finds that Respondent registered uses the <bbhcap.com> domain name in bad faith. The disputed domain name <bbhcap.online> is not being used. According to paragraph 3.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Jurisprudential Overview 3.0): “From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.” In the present case, Complainant’s trademark is well known. It is difficult to envisage any use of the disputed domain name that would not violate the Policy, see Morgan Stanley v. TONY / shentony, FA 1637186 (Forum Oct. 10, 2015) (“Respondent registered the disputed domain name [MORGANSTANLEY.ONLINE] in bad faith because . . . it is difficult to envisage any use of the disputed domain name that would not violate the Policy”); see also Singapore Airlines Ltd. v. European Travel Network, D2000-0641 (WIPO Aug. 29, 2000) (where selection of disputed domain name is so obviously connected to complainant’s well-known trademark, use by someone with no connection with complainant suggests opportunistic bad faith); see also Starwood Hotels & Resorts Worldwide, Inc., Sheraton Int’l IP, LLC, Westin Hotel Mgmt., L.P. v. Jingjing Tang, D2014-1040 (WIPO Aug. 19, 2014) (“The Panel finds that the [WESTIN] Marks are not such that could legitimately be adopted by traders other than for the purpose of creating an impression of an association with Complainant. Thus, the Panel concludes that the disputed domain names were registered in bad faith”). There has been no response to the Complaint and Respondent registered and is using the other disputed domain name in bad faith. Given these circumstances, the Panel finds that, in this particular case, a finding of bad faith use can be inferred even though the <bbhcap.online> domain name is not being actively used. See Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000). DECISION Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED. Accordingly, it is Ordered that the <bbhcap.com> and <bbhcap.online> domain name be TRANSFERRED from Respondent to Complainant. Richard Hill, Panelist Dated: November 18, 2022 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.