Boston Trust Walden Company v. MOTTI ORLANDO
Claim Number: FA2103001936062
Complainant is Boston Trust Walden Company (“Complainant”), represented by Robert M. O’Connell of Orrick, Herrington & Sutcliffe LLP, Massachusetts, USA. Respondent is MOTTI ORLANDO (“Respondent”), Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bostontrustwaldeninc.com>, registered with NameCheap, Inc..
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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 10, 2021; the Forum received payment on March 10, 2021.
On March 10, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <bostontrustwaldeninc.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 March 15, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 5, 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@bostontrustwaldeninc.com. Also on March 15, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On April 9, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the disputed domain name <bostontrustwaldeninc.com> be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the BOSTON TRUST WALDEN mark, established through its ownership of the portfolio of service mark registrations described below, and through extensive and continuous use of the mark by Complainant and its subsidiary corporation Boston Trust Walden Inc., in the provision of financial services since 2019. The subsidiary corporation, Boston Trust Walden Inc. is an investment adviser registered with the U.S. Securities and Exchange Commission pursuant to the Investment Advisers Act of 1940 and the combined assets under management by Complainant and Boston Trust Walden Inc. totaled nearly $12 billion as of December 31, 2020.
Complainant submits that the disputed domain name is identical to Complainant’s BOSTON TRUST WALDEN mark inasmuch as it incorporates Complainant’s mark in its entirety, adding only the generic abbreviation “inc”.
Complainant contends that a domain name is “nearly identical or confusingly similar” to a complainant’s mark when it “fully incorporate[s] said mark.” PepsiCo. Inc. v. PEPSI SRL, WIPO D2003-0696 (holding pepsiadventure.net, pepsitennis.com, and others confusingly similar to complainant’s PEPSI mark since they “incorporate[ed the] trademark in its entirety”).
Complainant adds that the addition of the term “inc” does nothing to distinguish the disputed domain name from Complainant’s BOSTON TRUST WALDEN mark, arguing that many panels established under the Policy have held the term “inc” to be merely descriptive, signifying a corporate form of establishment and not serving to distinguish a domain name from a trademark contained therein. Citing Ventas, Inc. v. Steven Jones, ventas-inc, WIPO D2014-0145 (concluding that was confusingly similar to the Complainant’s VENTAS mark and more generally that domain names adding the corporation designation “Inc.” does not serve to distinguish from the trademark in the domain name) (internal quotation omitted).
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name arguing that Respondent has never been known as “BOSTON TRUST WALDEN” or any variation thereof and is not identified as such on the WhoIs.
Complainant confirms that Respondent is not authorized or licensed to use the BOSTON TRUST WALDEN mark or to acquire the disputed domain name and confirms that Respondent is not affiliated with Complainant in any way. Complainant adds that it has no officer or employee by this name.
As of March 9, 2021 the disputed domain name directed to a web page with a list of related links as shown in a screenshot annexed to the Complaint. The website is otherwise inactive and Complainant argues that it is well established that use of a domain name as the address of an inactive website (or a website with no substantive content) is not a bona fide offering of goods or services. See Connections Academy LLC v. bongjoosong, FA 1005001325725 (Forum July 29, 2010) (finding that “Respondent’s failure to make active use of the disputed domain name constitutes bad faith registration and use under Policy ¶ 4(a)(iii)”). Complainant submits that such use is not a legitimate noncommercial or fair use of the disputed domain name.
Complainant submits that the disputed domain name was registered and is being used in bad faith because the registrant was on notice of Complainant’s rights in the BOSTON TRUST WALDEN mark when the disputed domain name was registered.
Complainant asserts that it first adopted and used the BOSTON TRUST WALDEN mark publicly in September 2019, long before the disputed domain name was registered on 24 February 2021. Citing Parfums Christian Dior v. Quintas, D2000-0226 (WIPO May 17, 2000), Complainant submits that where a domain name is “so obviously connected with such a well-known name and products…its very use by someone with no connection with the products suggests opportunistic bad faith.”
Moreover, the disputed domain name was registered after the registration of Complainant’s United States service marks on September 1, 2020 and its domain name <bostontrustwalden.com> which was created on October 2, 2018.
Also Complainant argues it is significant that according to the record, Respondent is purportedly located in the Commonwealth of Massachusetts, at an address only thirty miles from Complainant’s main place of business and well within the Greater Boston region where Complainant is best known; and that Respondent would therefore undoubtedly have been exposed to Complainant’s name in local news coverage and the like.
Complainant submits that the screen-capture of the web page to which the disputed domain name resolves shows that Respondent’s website contains a section for “related links” in a format typical of such placeholder pages and has no other content. Complainant asserts that clicking on one of the links brings the user to another page featuring links to competitive services as shown in the screen image accessed on 9 March 2021.
Complainant contends that the links to its competitors on Respondent’s website presumably generate commercial benefit for Respondent though click-through advertising fees, is evidence of bad faith under Policy ¶¶ 4(b)(iii) and 4(b)(iv).
As Respondent’s website contains no substantive content, Complainant argues that such inactive use is further evidence of bad faith under Policy ¶¶ 4(b)(iii) and 4(b)(iv). See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).”).
Complainant further alleges that the disputed domain name was registered using false contact information. The phone number provided is Complainant’s own publicly-listed main office number, and the address provided is the home address of one of Complainant’s senior Portfolio Managers who is also the President of Complainant’s subsidiary, Boston Trust Walden, Inc. Also the contact e-mail address provided, appears on its face to have no connection to a person or entity with Respondent’s name.
Complainant submits that such the use of false identifying information in the WHOIS record is itself evidence of bad faith under the Policy. Citing TPI Holdings, Inc. v. Carmen Armengol, D2009-0361 (WIPO May 19, 2009) (“evidence of the actual registrant's fraudulent registration of the Domain Name under a false name and with false contact information is sufficient to establish bad faith registration within the meaning of paragraph 4(a) of the Policy”).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant provides investment management services to institutional investors and private wealth clients and is the owner of a portfolio of United States federal trademark registrations for marks featuring the mark BOSTON TRUST WALDEN. Including
· United States Service Mark BOSTON TRUST WALDEN, registration number 6,142,943, registered on the Principal Register on September 1, 2020, for services in international class 36;
· United States Service Mark BOSTON TRUST WALDEN [& design] registration number 6,142,944, registered on the Principal Register on September 1, 2020, for services in international class 36; and
· United States Service Mark BOSTON TRUST WALDEN [& design] registration number 6,142,945, registered on the Principal Register on September 1, 2020, for services in international class 36.
Complainant has an established Internet presence and is the owner of the domain name <bostontrustwalden.com>, created on October 2, 2018.
The disputed domain name <bostontrustwaldeninc.com> was registered on February 24, 2021 and resolves to a website with commercial links, which have been shown to link to investment services on the browser used by Complainant.
There is no information available about Respondent except for that provided in the Complaint, the Registrar’s WhoIs and the information provided by the Registrar in response to the request by the Forum for verification of the registration details of the disputed domain name. The Registrar confirmed that Respondent, who had availed of a privacy service to conceal his name on the published WhoIs, is the registrant of the disputed domain name. His name and contact details have been put in issue by the Complainant.
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”).
Complainant has provided clear, convincing and uncontested evidence of its rights in the BOSTON TRUST WALDEN mark, established through its ownership of the portfolio of service mark registrations described above and extensive and continuous use of the mark by Complainant and its subsidiary corporation Boston Trust Walden Inc., in the provision of financial services since 2019.
The disputed domain name consists of Complainant’s mark in its entirety, adding only the generic term “inc” and the generic Top Level Domain extension <.com>
Complainant’s Boston Trust Walden service mark is the dominant and in combination the distinctive element of the disputed domain name.
The generic term “inc” adds no distinctive character to the disputed domain name, nor does the generic Top Level Domain extension <.com>, which in the circumstances of this case would be perceived by Internet users as a necessary technical requirement for a domain name.
This Panel finds therefore that the disputed domain name is confusingly similar to the Boston Trust Walden mark in which Complainant has rights. Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name arguing that
· Respondent has never been known as “BOSTON TRUST WALDEN” or any variation thereof and is not identified as such on the WhoIs;
· Respondent is not authorized or licensed by Complainant to use its BOSTON TRUST WALDEN mark or to acquire the disputed domain name;
· Respondent is not affiliated with Complainant in any way. Complainant has no officer or employee by this name;
· as of March 9, 2021 the disputed domain name directed to a web page with a list of pay-per-click links some of which resolved to websites of Complainant’s competitors;
· the website is otherwise inactive;
· such use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
It is well established that Complainant is required to make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Thereupon the burden of production shifts to Respondent to prove his rights or interests. Complainant has made out a prima facie case. Respondent has failed to discharge the burden of production. Therefore this Panel must find that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore succeeded in second element of the test in Policy ¶ 4(a)(ii).
Complainant submits that Respondent’s registration and use of the disputed domain name is in bad faith because the registrant was on notice of Complainant’s rights in the BOSTON TRUST WALDEN mark when the disputed domain name was registered.
Complainant’ rights in the BOSTON TRUST WALDEN mark predate the registration of the disputed domain name as Complainant first used the mark publicly in September 2019 and Complainant’s United States service marks were registered on September 1, 2020 whereas the disputed domain name was registered on 24 February 2021.
Complainant’s service mark is a very distinctive combination of elements and the disputed domain name contains each of those elements together with the term “inc”. The disputed domain name is almost identical to Complainant’s service mark and is exactly identical to the name of Complainant’s subsidiary corporation. The disputed domain name is also almost identical to the domain name which Complainant uses for its financial services website. Additionally the uncontested evidence is that the registrant of the disputed domain name misleadingly used Complainant’s telephone number and a postal address associated with one Complainant’s employees to provide false registration information for the disputed domain name. Taken together these factors amount to conclusive evidence that the disputed domain name was registered in bad faith in circumstances where the registrant had actual knowledge of Complainant and its business. This Panel finds that on the balance of probabilities the disputed domain name was registered in bad faith to target and take predatory advantage of Complainant’s goodwill and reputation.
The uncontested evidence is that Respondent is causing or allowing the disputed domain to resolve to a webpage with pay-per-click links from which Respondent is probably generating revenue. The disputed domain name is therefore being use in bad faith in order to divert Internet traffic intended for Complainant to Respondent’s website. That is sufficient to prove bad faith use of the disputed domain name. The evidence adduced by Complainant show that links generated on the website related to financial services competing with Complainant. It does not follow that these links would always be generated on a website or even always generated on Respondent’s website. They may be a consequence of the settings on Complainant’s computer, but nonetheless they are sufficient to show that the disputed domain name is being used in bad faith to divert Internet traffic intended for Complainant.
As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has therefore succeeded in the third element of the test in Policy ¶ 4(a)(iii) and is entitled to the relief requested in the Complaint.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bostontrustwaldeninc.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: April 12, 2021
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