Brickworks.com: A #domain registered in 1997 had to be defended at the National Arbitration Forum

Just another brick in the wall: A latecomer to the branding and domain game takes the registrant of an aged domain to the UDRP process.

Aussie company Brickworks Building Products Pty Ltd. filed a UDRP against the domain Brickworks.com that was registered in 1997. Their Australian trademarks trail the domain’s registration by at least 10 years and in the US the mark has been claimed by the Respondent.

How is it possible that the NAF panelist did not deliver a finding of Reverse Domain Name Hijacking, is beyond us. They merely denied transfer of the domain Brickworks.com to the Complainant.

The domain transfer was denied.

Brickworks Building Products Pty Ltd. v. Brickworks LLC

Claim Number: FA2106001951356

PARTIES

Complainant is Brickworks Building Products Pty Ltd. (“Complainant”), represented by Wendy K. Marsh of Nyemaster Goode, P.C., Iowa, USA. Respondent is Brickworks LLC (“Respondent”), represented by Reid and Riege, P.C., Connecticut, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <brickworks.com>, registered with Network Solutions, LLC.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

Petter Rindforth as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on June 16, 2021; the Forum received payment on June 16, 2021.

On June 17, 2021, Network Solutions, LLC confirmed by e-mail to the Forum that the <brickworks.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 June 18, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 2, 2021 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@brickworks.com. Also on June 18, 2021, 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.

A timely Response was received and determined to be complete on August 2, 2021.

On August 4, 2021, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth as Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the 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.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

Respondent request that the Panel denies the remedy requested by Complainant.

PARTIES’ CONTENTIONS

A. Complainant

The Complainant, and its BRICKWORKS brand, is associated with bricks, roof tiles, precast concrete panels, contract masonry blocks, and retaining walls, pavers, and associated products. Complainant maintains registration of its BRICKWORKS trademark in Australia. Complainant asserts that it has used its BRICKWORKS trademark since 1934.

The disputed domain name, <brickworks.com> is identical or confusingly similar to Complainant’s BRICKWORKS trademark because it wholly incorporates Complainant’s BRICKWORKS trademark, merely adding the “.com” generic top-level domain (“gTLD”) to form a domain name.

Respondent does not have any rights or legitimate interests in the <brickworks.com> domain name because Respondent is not commonly known by the <brickworks.com> domain name despite appearing to be. Respondent is not using the <brickworks.com> domain name in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use because Respondent has not made any demonstrable preparations to use the <brickworks.com> domain name nor does it appear that Respondent is actively in business. Respondent further uses the <brickworks.com> domain name to divert users to a website unrelated to Complainant’s business.

Respondent registered and uses the <brickworks.com> domain name in bad faith because Respondent lures users from Complainant’s website to Respondent’s. Further bad faith is indicated by Respondent’s inactive holding the <brickworks.com> domain name.

B. Respondent

While Complainant has registration in Australia for BRICKWORKS, it has only done so since 2018 and has not sufficiently established common law rights in the BRICKWORKS trademark dating back to 1934. Complainant does not maintain registration in the BRICKWORKS trademark in the United States because it has already been claimed by Respondent. Complainant’s BRICKWORKS trademark is generic relating to works of brick or mortar.

Respondent is a home improvement contractor providing various masonry, foundation, and other contracting services to consumers in the Connecticut area since 1985. Respondent also owns small web hosting company of the same name. Respondent registered the <brickworks.com> domain name to promote its contracting services. Respondent admittedly acknowledges that it has not updated the resolving website since 2001 but operates an active email address using the <brickworks.com> domain name when communicating with customers and vendors and suppliers.

Respondent did not register, nor does Respondent use the <brickworks.com> domain name, in bad faith because in the over 20 years that Respondent has been in business, Respondent has not heard of Complainant until the current proceedings. Respondent also claims the doctrine of laches because Complainant has delayed bringing the current dispute 20 years after registration of the <brickworks.com> domain name.

FINDINGS

The Complainant is the owner of the following Australian trademark registrations:

No. 1315243 BRICKWORKS LUXURY CLUB (word), registered August 13, 2009 for services in class 35, and

No. 1932160 BRICKWORKS (word), registered June 7, 2018 for goods and services in classes 6, 19, 35.

The Respondent registered the disputed domain name <brickworks.com> on April 28, 1997.

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.

Identical and/or Confusingly Similar

The Complainant claims rights in its BRICKWORKS trademark through its registration with Australian trademark office. Registration of a trademark with a governmental trademark agency is sufficient to establish rights in a trademark under Policy ¶ 4(a)(i). See Teleflex Incorporated v. Leisa Idalski, FA 1794131 (Forum July 31, 2018) (“Registration of a mark with governmental trademark agencies is sufficient to establish rights in that mark for the purposes of Policy ¶ 4(a)(i).”). Complainant provides a copy of its registration certificate with authorities in Australia (e.g. Reg. No. 1,932,160 – Registered June 7, 2018). Therefore, the Panel find that Complainant has rights in the BRICKWORKS trademark under Policy ¶ 4(a)(i).

Complainant further claims common law rights in the BRICKWORKS trademark since 1934. Common law rights in a trademark may be found, under Policy ¶ 4(a)(i), where a complainant can show that it established secondary meaning through factors such as longstanding use, holding of an identical domain name, media recognition, and promotional material. See Marquette Golf Club v. Al Perkins, 1738263 (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.”). Complainant argues that it was founded in 1934 in New South Wales later listing on the Australian Stock Exchange as “Brickworks” in 1961. Complainant further states that it is the owner of an identical domain name, <brickworks.com.au>. The Panel notes that the evidence/documents provided by the Complainant to support the claim of common law rights are rather limited. Basically, it is printouts from the Complainant’s own web site, and even the Wikipedia info on the Complainant (having in mind that Wikipedia is open for users / trademark owners to pass on their personal information), provided by the Complainant, basically have references / notes pointing to the Complainant’s web site. Based on that, the Panel can accept the statement of common law rights under Policy ¶ 4(a)(i), however unclear from which year. The Panel therefore considers and accepts common law rights from the priority date of the BRICKWORKS trademark, which is August 13, 2009 (the date of filing).

Complainant argues that the <brickworks.com> domain name is identical or confusingly similar to Complainant’s BRICKWORKS trademark because it wholly incorporates Complainant’s BRICKWORKS trademark merely adding the “.com” gTLD to form a domain name. The addition of a gTLD to a domain name is irrelevant in distinguishing a domain name from a trademark. See Bittrex, Inc. v. HOUSNTA BENSLEM, FA 1760232 (Forum Jan. 3, 2018) (“[S]ince the disputed domain name differs from the trademark only by the addition of the gTLD “.cam” the Panel finds the domain name to be legally identical to the trademark.”). With the only difference being the addition of the “.com” gTLD, the Panel finds that the <brickworks.com> domain name is identical under Policy ¶ 4(a)(i).

While Respondent argues that its registration of the <brickworks.com> domain name predates Complainant’s alleged rights in the BRICKWORKS trademark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the trademark(s) and whether the disputed domain name is identical or confusingly similar to Complainant’s trademark. See AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the UDRP does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under Policy ¶ 4(a)(i) but may prevent a finding of bad faith under Policy ¶ 4(a)(iii)); see also Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Forum Mar. 5, 2007) (“Although the domain name in dispute was first registered in 1996, four years before Complainant’s alleged first use of the mark, the Panel finds that Complainant can still establish rights in the CLEAR BLUE marks under Policy ¶ 4(a)(i).”). Therefore, the Panel will further discuss this statement under Policy ¶ 4(a)(iii).

Respondent contends that the disputed domain name is comprised of a common and generic or descriptive terms and thus cannot be deemed identical or confusingly similar to Complainant’s mark. However, because this argument is not applicable under Policy ¶ 4(a)(i), the argument will be presented under Policy ¶¶ 4(a)(ii) and (iii).

Rights or Legitimate Interests

The Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then 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 Respondent does not have any rights or legitimate interests in the <brickworks.com> domain name because Respondent is not commonly known by the <brickworks.com> domain name. A respondent may be found to not be commonly known by a domain name, under Policy ¶ 4(c)(ii), where there is no affirmative evidence that it is commonly known by a domain name even if the WHOIS information relates to the domain name. See Moneytree, Inc. v. Matt Sims / MoneyTreeNow, FA1501001602721 (Forum Mar. 3, 2015) (finding that even though the respondent had listed “Matt Sims” of “MoneyTreeNow” as registrant of the <moneytreenow.com> domain name, the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii), because he had failed to list any additional affirmative evidence beyond the WHOIS information). The WHOIS information lists the registrant as “Brickworks LLC” as the registrant. However, Complainant argues that Respondent is not commonly known by the <brickworks.com> domain name because a search of the registrant in a search engine resolves to an internet services business by the name of “Ultimate Virtual Web” (“UVW”) and a Google Earth search of the address shows a building that appears to be abandoned.

The Respondent argues that it is commonly known by the <brickworks.com> domain name because it is the name of its business. A respondent may be found to be commonly known by a domain name, under Policy ¶ 4(c)(ii), where it provides evidence that it does business under the name. See Navigant Consulting, Inc. v. Bradley Shive / Navigant Technologies, FA 1587953 (Forum Dec. 17, 2014) (finding that respondent had rights and legitimate interests in the <naviganttechnologies.com> and <naviganttech.com> domain names because respondent had provided evidence of doing business as “Navigant Technologies” “before Complainant’s registration of its NAVIGANT marks and before receiving a notice of [the domain] dispute”). Here, Respondent registered its <brickworks.com> domain name in 1997 prior to Complainant’s registration of the BRICKWORKS trademark with Australian authorities. Respondent argues that it has been in the masonry business since 1985 under the name Brickworks in Connecticut in the United States of America. Respondent further uses the <brickworks.com> domain name to conduct business via email. Respondent finally claims it is known by the <brickworks.com> domain name because Respondent has been listed as Brickworks in business documents from third-parties, including in bank statements and invoices.

Based upon both Complainant’s and Respondent’s contentions, the Panel finds that Respondent is commonly known by the <brickworks.com> domain name under Policy ¶ 4(c)(ii).

The Complainant argues that Respondent is not using the <brickworks.com> domain name in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use because Respondent has not made any demonstrable preparations to use the <brickworks.com> domain name, but rather the domain name resolves to an inactive website. A respondent’s domain name that resolves to an inactive webpage may be an indication of a domain name not being used in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Kohler Co. v. xi long chen, FA 1737910 (Forum Aug. 4, 2017) (”Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain.”). The <brickworks.com> domain name resolves to a message saying “this site is always under construction” and has done so since 2001. Complainant claims that no other substantive content is displayed except an email address for UVW.

The Respondent argues that Respondent use the <brickworks.com> domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use because the domain name’s use corresponds to e-mail use, connecting to Respondent’s services, which are the same kind of services as is provided by Complainant. A domain name may be found to be used in connection with a bona fide offering of good or services or for a legitimate noncommercial or fair use, under Policy ¶¶ 4(c)(i) and (iii), where a respondent uses a domain name to offer services despite those services being related to a complainant’s offer of services. See Heart of Success, Inc. v. PRIVATE REGISTRANT / A HAPPY DREAMHOST CUSTOMER, FA 1689461 (Forum Oct. 10, 2016) (“The records of the case show that the domain name acquired by Respondent is descriptive of the services it has offered online since the domain name registration date… Therefore, the Panel agrees that the circumstances of the instant case indicate that Respondent has not attempted to take advantage of the trademark value of Complainant’s mark and has made a bona fide offering of services per Policy ¶ 4(c)(i).”); see also Vanguard Group Inc. v. Investors FastTrack, FA 863257 (Forum Jan. 18, 2007) (“Respondent makes a bona fide offering of goods and services in providing investment products and services to people wishing to consider investment in Complainant’s financial products and services.”). Here, Respondent provides masonry services and utilizes the domain name to communicate with customers and vendors. Therefore, the Panel finds that Respondent is using the <brickworks.com> domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).

Respondent also argues that the term of the <brickworks.com> domain name is common and descriptive, and therefore, Complainant does not have an exclusive monopoly on the term on the Internet. Here, the Panel notes that, according to Collins English Dictionary, the word “brickworks” means “a factory or plant where bricks are made”. Further, as Wikipedia is mentioned by the Complainant, the meaning of “brickworks” according to Wikipedia is: “a brickworks, also known as a brick factory, is a factory for the manufacturing of bricks, from clay or shale.”

Therefore, the Panel agrees with Respondent, and finds that Respondent can establish rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Kaleidoscope Imaging, Inc. v. V Entm’t, FA 203207 (Forum Jan. 5, 2004) (finding that the respondent was using the <kaleidoscope.com> domain name for a bona fide offering of goods or services because the term was “generic” and respondent was using the disputed domain name as a search tool for Internet users interested in kaleidoscopes).

Registration and Use in Bad Faith

The Panel find that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Tristar Products, Inc. v. Domain Administrator / Telebrands, Corp., FA 1597388 (Forum Feb. 16, 2015) (“Complainant makes conclusory allegations of bad faith but has adduced no specific evidence that warrants a holding that Respondent proceeded in bad faith at the time it registered the disputed domain name. Mere assertions of bad faith, even when made on multiple grounds, do not prove bad faith.”); see also Chris Pearson v. Domain Admin / Automattic, Inc., FA 1613723 (Forum July 3, 2015) (finding that the complainant could not establish the respondent registered and used the disputed domain name in bad faith because it failed to present evidence that would support such a holding).

The Panel notes that if Respondent’s registration of the <brickworks.com> domain name predates Complainant’s first claimed rights in the BRICKWORKS trademark, Complainant generally cannot prove registration in bad faith per Policy ¶ 4(a)(iii), as the Policy requires a showing of bad faith registration and use. See Platterz v. Andrew Melcher, FA 1729887 (Forum June 19, 2017) (“Whatever the merits of Complainant’s arguments that Respondent is using the Domain Name in bad faith, those arguments are irrelevant, as a complainant must prove both bad faith registration and bad faith use in order to prevail.”); see also Faster Faster, Inc. DBA Alta Motors v. Jeongho Yoon c/o AltaMart, FA 1708272 (Forum Feb. 6, 2017) (“Respondent registered the domain name more than a decade before Complainant introduced the ALTA MOTORS mark in commerce. Respondent therefore could not have entertained bad faith intentions respecting the mark because it could not have contemplated Complainant’s then non-existent rights in [the mark] at the moment the domain name was registered.”). The Complainant has only provided evidence of use, as well as registration, of BRICKWORKS as a trademark in Australia, and although the word today is locally accepted as distinctive enough to be identified as a trademark in the name of the Complainant, there are no evidence provided or indicating that this was a fact also back in time when the Respondent, based in another country, registered and started to use the disputed domain name. The <brickworks.com> domain name was registered in 1997, prior to Complainant’s 2018 registration of the BRICKWORKS trademark in Australia. Therefore, Panel finds that Respondent did not register and use the <brickworks.com> domain name in bad faith under Policy ¶ 4(a)(iii).

Respondent argues that the doctrine of laches apples because over 20 years have passed between the time the <brickworks.com> domain name was registered and the commencement of these proceedings. There are panel decisions both accepting as well as denying the doctrine of laches. The Panel, in this case, find that the doctrine of laches does not apply as a defense, and therefore correspondingly chooses to disregard Respondent’s assertions in this respect. See Hebrew Univ. of Jerusalem v. Alberta Hot Rods, D2002-0616 (WIPO Oct. 7, 2002) (“The remedy available in an Administrative Proceeding under the Policy is not equitable. Accordingly, the defense of laches has no application.”). This also seems to be the general vision of the US Supreme Court, at least in cases related to intellectual property rights, such as copyright and patent, holding that laches is not an available defense to damages for infringement. Having said that, the Panel notes again that the Complainant has not provided evidence of registration and use in bad faith.

DECISION

Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

Accordingly, it is Ordered that the <brickworks.com> domain name REMAIN WITH Respondent.

Petter Rindforth, Panelist

Dated: August 16, 2021

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