Bwicompanies.org

The timeline behind bwicompanies.org

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

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

DECISION BWI Companies, Inc. v. Nazmul Hossain Claim Number: FA2402002084899 PARTIES Complainant is BWI Companies, Inc. ("Complainant"), represented by Richard J. Groos of King & Spalding LLP, Texas, USA. Respondent is Nazmul Hossain ("Respondent"), Bangladesh. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <bwicompanies.org>, registered with Cosmotown, Inc. PANEL The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding. Sandra J. Franklin as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to Forum electronically on February 21, 2024; Forum received payment on February 21, 2024. On February 21, 2024, Cosmotown, Inc. confirmed by e-mail to Forum that the <bwicompanies.org> domain name is registered with Cosmotown, Inc. and that Respondent is the current registrant of the name. Cosmotown, Inc. has verified that Respondent is bound by the Cosmotown, Inc. 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 February 22, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 13, 2024 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@bwicompanies.org. Also on February 22, 2024, the Written Notice of the Complaint, 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. On March 14, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Sandra J. Franklin 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. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES' CONTENTIONS A. Complainant 1. Respondent's <bwicompanies.org> domain name is confusingly similar to Complainant's BWI mark. 2. Respondent does not have any rights or legitimate interests in the <bwicompanies.org> domain name. 3. Respondent registered and uses the <bwicompanies.org> domain name in bad faith. B. Respondent did not file a Response. FINDINGS Complainant is in the agriculture industry and holds a registration for the BWI mark with the United States Patent and Trademark Office ("USPTO") (Reg. No. 3,526,387, registered November 4, 2008.) Complainant was founded in 1958 and shows a first use date in 1978 in its registration of the BWI mark. Complainant has conducted business at <bwicompanies.com> since 1999. Respondent registered the <bwicompanies.org> domain name on July 23, 2023, and uses it to pass off as Complainant. DISCUSSION Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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 Complainant claims rights in the BWI mark through continuous use since at least 1972. Complainant has used the <bwicompanies.com> domain name since 1999. The Panel accepts the USPTO's verification of a first use date of 1978 in the registration for the BWI mark. In the absence of any assertion to the contrary, and due to Complainant's long-standing continuous use, the Panel finds that Complainant has common law rights in the BWI mark. See Marquette Golf Club v. Al Perkins, FA1706001738263 (Forum July 27, 2017) (finding that Complainant had established its common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including "longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising."); see also Indianapolis Downs, LLC v. Philip Mazzone, FA0901001244694 (Forum March 11, 2009) ("Policy ¶ 4(a)(i) does not require proof of a registered trademark if Complainant can demonstrate its common law rights through secondary meaning."). Respondent's <bwicompanies.org> domain name uses Complainant's BWI mark and its exact domain name with a different gTLD. This is not enough to distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). See Charter Communications Holding Company, LLC v. mathew walker, FA2309002064003 (Forum Oct. 27, 2023) (finding respondent's <spectrumtv.info> domain name confusingly similar to complainant's SPECTRUM TV mark). Therefore, the Panel finds that Respondent's <bwicompanies.org> domain name is confusingly similar to Complainant's BWI mark. The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i). Rights or Legitimate Interests Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) ("Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests"). Complainant argues that Respondent lacks rights and legitimate interests in the <bwicompanies.org> domain name, as it is not commonly known by the domain name and Complainant has not authorized or licensed Respondent to use its BWI mark. The WHOIS information identifies Respondent as "Nazmul Hossain". Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name, and thus has no rights under Policy ¶ 4(c)(ii). See Radio Flyer Inc. v. er nong wu, FA 2011001919893 (Forum Dec. 16, 2020) ("Here, the WHOIS information lists "er nong wu" as the registrant and no information suggests Complainant has authorized Respondent to use the RADIO FLYER mark in any way. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).") Complainant also argues that Respondent does not use the <bwicompanies.org> domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use as Respondent uses the disputed domain name to pass off as Complainant and purport to offer the same services. Under Policy ¶¶ 4(c)(i) and (iii), using a disputed domain name to pass off as a Complainant does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant's mark and various photographs related to the complainant's business). Complainant provides screenshots of the disputed domain name's resolving website, where Respondent appears to offer competing services, using Complainant's mark and logo, and solicits information from users. The Panel finds that this is not a bona fide offering of goods or services or a legitimate noncommercial or fair use, and thus Respondent has no rights under Policy ¶¶ 4(c)(i) or (iii). The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii). Registration and Use in Bad Faith Complainant argues that Respondent registered and uses the <bwicompanies.org> domain name in bad faith by diverting users to its website for commercial gain. Under Policy ¶ 4(b)(iv), using a disputed domain name to trade on the value of a mark is evidence of bad faith registration and use. See Carey Int'l, Inc. v. Kogan, FA 486191 (Forum July 29, 2005) ("[T]he Panel finds that Respondent is capitalizing on the confusing similarity of its domain names to benefit from the valuable goodwill that Complainant has established in its marks. Consequently, it is found that Respondent registered and used the domain names in bad faith under Policy ¶ 4(b)(iv).") Thus, the Panel finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv). The Panel also finds that Respondent registered the <bwicompanies.org> domain name with actual knowledge of Complainant's rights in the BWI mark, noting Respondent's use of the long-standing mark to pass off as and compete with Complainant, and finds further bad faith under Policy ¶ 4(a)(iii). See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) ("This Panel makes that inference; Respondent has actual knowledge of Complainant's mark at the time of domain name registration based on the fame of Complainant's GOOGLE mark and Respondent's use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to and in competition with Complainant.") Complainant provides screenshots showing that the disputed domain name resolves to a website that prompts users to enter personal information. The Panel finds that this constitutes phishing and is further evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Morgan Stanley v. Bruce Pu, FA 1764120 (Forum Feb. 2, 2018) ("[T]he screenshot of the resolving webpage allows users to input their name and email address, which Complainant claims Respondent uses that to fraudulently phish for information.) The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii). 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 <bwicompanies.org> domain name be TRANSFERRED from Respondent to Complainant. Sandra J. Franklin, Panelist Dated: March 15, 2024 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.