Thompson Hine LLP v. Kevin Conway
Claim Number: FA2208002007519
Complainant is Thompson Hine LLP (“Complainant”), represented by Carrie A. Shufflebarger of Thompson Hine LLP, Ohio, US. Respondent is Kevin Conway (“Respondent”), US.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thomsonhine.com>, registered with Wild West Domains, LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 8, 2022; the Forum received payment on August 8, 2022.
On August 09, 2022, Wild West Domains, Llc; confirmed by e-mail to the Forum that the <thomsonhine.com> domain name is registered with Wild West Domains, Llc; and that Respondent is the current registrant of the names. Wild West Domains, Llc; has verified that Respondent is bound by the Wild West Domains, 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 August 11, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 31, 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@thomsonhine.com. Also on August 11, 2022, 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 September 6, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a full-service law firm with offices in eight American cities.
Complainant holds a registration for the THOMPSON HINE service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 3,484,330, registered August 12, 2008.
Respondent registered the domain name <thomsonhine.com> on May 15, 2022.
The domain name is confusingly similar to Complainant’s THOMPSON HINE mark.
Respondent has not been commonly known by the domain name.
Respondent fails to use the domain name in connection with either a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Instead, Respondent uses the domain name to pass itself off as Complainant in e-mail messages in furtherance of a phishing scheme by which it seeks to extract funds fraudulently from unsuspecting clients of Complainant.
Respondent lacks both rights to and legitimate interests in the domain name.
Respondent’s use of the domain name creates a likelihood of confusion among Internet users.
Respondent both registered and now uses the domain in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is now being used by Respondent in bad faith.
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:
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
By reason of its registration of the THOMPSON HINE service mark with a national trademark authority, the USPTO, Complainant has established that it has rights in that mark sufficient to satisfy the requirement of Policy ¶ 4(a)(i) that it demonstrate standing to pursue its claim against Respondent in this proceeding. See, for example, DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum December 30, 2018):
Complainant’s ownership of a USPTO registration for … [its mark] … demonstrate[s] its rights in such mark for the purposes of Policy ¶ 4(a)(i).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <thomsonhine.com> domain name is confusingly similar to Complainant’s THOMPSON HINE mark. The domain name incorporates the mark in its entirety, with only the deletion of letter “p” and the addition of the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy.
See, for example, Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum September 27, 2002):
[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.
This is because every domain name requires a gTLD or other TLD.
See also Mapfre S.A. y Fundación Mapfre v. Josep Sitjar, D2011-0692 (WIPO July 10, 2011):
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark since the Respondent has merely eliminated the letter “p” from the trademark, which is certainly not sufficient to exclude the confusingly similarity ([citing] Fry’s Electronics, Inc v. Whois ID Theft Protection, WIPO Case No. D2006-1435).
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent has neither rights to nor legitimate interests in the disputed <thomsonhine.com> domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See, for example, Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum, August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP¶4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See, for example, Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c)(i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <thomsonhine.com> domain name. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Kevin Conway,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy¶4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel.”
We next observe that Complainant asserts, without objection from Respondent, that Respondent uses the domain name to pass itself off as Complainant in e-mail messages in furtherance of a phishing scheme by which it seeks to extract funds fraudulently from unsuspecting clients of Complainant. This employment is neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. See, for example, DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017):
Passing off in furtherance of a phishing scheme is not considered [either] a bona fide offering of goods or services or [a] legitimate noncommercial or fair use.
See also Enterprise Holdings, Inc. v. I S / Internet Consulting Services Inc., FA 1785242 (Forum June 5, 2018):
On its face, the use of a domain name that is confusingly similar to the mark of another in order to facilitate a phishing scheme cannot be described as either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s employment of the challenged <thomsonhine.com> domain name in the manner detailed in the Complaint is an attempt by Respondent to profit from the confusion caused by it among Internet users as to the possibility of Complainant’s association with the domain name and its derived e-mail address. We are also convinced by the evidence that Respondent’s use of the same domain name to perpetrate a financial fraud upon Complainant’s clients is disruptive of Complainant’s business. Under Policy ¶¶ 4(b)(iii) and (iv), this stands as proof twice-over that Respondent has both registered and now uses the domain name in bad faith. See, for example, Abbvie, Inc. v. James Bulow, FA 1701075 (Forum November 30, 2016):
Respondent uses the … domain name to impersonate Complainant’s CEO. Such use is undeniably disruptive to Complainant’s business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii), and/or Policy ¶ 4(b)(iv).
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <thomsonhine.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: September 18, 2022
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