The Hackett Group, Inc. v. Brian Herns / The Hackett Group
Claim Number: FA1412001597465
Complainant is The Hackett Group, Inc. (“Complainant”), represented by Francisco J. Ferreiro of Malloy & Malloy, P.L., Florida, USA. Respondent is Brian Herns / The Hackett Group (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thehackettgroups.com>, registered with Godaddy.Com, LLC.
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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 30, 2014; the National Arbitration Forum received payment on December 30, 2014.
On December 31, 2014, Godaddy.Com, LLC confirmed by e-mail to the National Arbitration Forum that the <thehackettgroups.com> domain name is registered with Godaddy.Com, LLC and that Respondent is the current registrant of the name. Godaddy.Com, LLC has verified that Respondent is bound by the Godaddy.Com, 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 January 5, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 26, 2015 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@thehackettgroups.com. Also on January 5, 2015, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 5, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 domain names be transferred from Respondent to Complainant.
Complainant
Complainant has registered the THE HACKETT GROUP mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,064,697, registered Mar. 7, 2006). Complainant uses the mark in connection with business consultation and analysis services. The <thehackettgroups.com> domain name contains the mark and adds the letter “s” along with the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <thehackettgroups.com> domain name. Respondent is not known by the domain name and has never been licensed to use the THE HACKETT GROUP mark in domain names. Further, the domain name resolves to Complainant’s website and is used to send fraudulent emails.
Respondent’s bad faith registration and use of the <thehackettgroups.com> domain name is demonstrated in numerous ways. Respondent’s use of the disputed domain name is primarily to disrupt the business of Complainant, as well as to profit from a likelihood of confusion with the THE HACKETT GROUP mark. Respondent registered the domain name with actual or constructive knowledge of Complainant’s rights in the mark. Respondent, by merely adding the letter “s,” is typosquatting. By attempting to procure personal information from Internet users through the use of fraudulent emails sent from an email address bearing the <thehackettgroups.com> domain name, Respondent is engaging in a phishing scam.
Respondent
Respondent did not submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant has registered the THE HACKETT GROUP mark with the USPTO (e.g., Reg. No. 3,064,697, registered Mar. 7, 2006). Complainant uses the mark in connection with business consultation and analysis services. Registration with the USPTO is sufficient to show rights in a trademark pursuant to Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i).
Complainant argues that the domain name is confusingly similar to its mark because the domain name contains the mark and adds the letter “s” along with the gTLD “.com.” The addition of the letter “s” amplifies the confusing similarity between the domain name and the mark. In Nat’l Geographic Soc’y v. Stoneybrook Invs., FA 96263 (Nat. Arb. Forum Jan. 11, 2001) the Panel found that the addition of the letter “s” in the <nationalgeographics.com> domain name was confusingly similar to the complainant’s NATIONAL GEOGRAPHIC mark. The addition of gTLD fails to distinguish a disputed domain name from a trademark. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Thus, the Panel finds that the <thehackettgroups.com> domain name is confusingly similar to the THE HACKETT GROUP mark under Policy ¶ 4(a)(i).
Complainant has proven this element.
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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first 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, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant claims that Respondent is not commonly known by the <thehackettgroups.com> domain name and has never been licensed to use THE HACKETT GROUP in domain names. “Brian Herns” of “The Hackett Group” is listed as the registrant of record for this domain name. Nothing in the record suggests that Respondent has ever been licensed to use Complainant’s mark in domain names. Respondent is neither commonly known as or licensed to use the mark in domain names, and therefore cannot establish rights or legitimate interests under Policy ¶ 4(c)(ii). See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that, although the respondent listed itself as “AIM Profiles” in the WHOIS contact information, there was no other evidence in the record to suggest that the respondent was actually commonly known by that domain name); St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name). As there is no available evidence demonstrating that Respondent is in fact commonly known by the <thehackettgroups.com> domain name, the Panel finds that Respondent has no rights or legitimate interests with respect to Policy ¶ 4(c)(ii).
Complainant argues that Respondent has failed to make 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). It is argued, and evidenced in Complainant’s exhibits that the domain name did not initially resolve to an active website, but eventually resolved to Complainant’s website. Failure to make use of a domain name, as well as creating a domain name that resolves to a complainant’s website, are both evidence of a failure to make a bona fide offering of goods or service or a legitimate noncommercial or fair use. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“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).”); see also Direct Line Ins. plc v. Low-cost-domain, FA 1337658 (Nat. Arb. Forum Sept. 8, 2010) (“The Panel finds that using Complainant’s mark in a domain name over which Complainant has no control, even if the domain name redirects to Complainant’s actual site, is not consistent with the requirements of Policy ¶ 4(c)(i) or ¶ 4(c)(iii) . . .”). The Panel finds that the domain name resolves to Complainant’s website and finds this is not a bona fide offering of goods or service under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant argues that Respondent is engaged in a phishing scam directed at obtaining personal information from misdirected Internet users. Complainant has provided evidence that Respondent has sent e-mails to various Internet persons that suggest the solicitation of personal information. These correspondences rely on the e-mail string associated with the <thehackettgroups.com> domain name, and utilize Complainant’s name as well as a link to Complainant’s authentic website in the signature line. The Panel finds that Respondent is indeed engaging in a phishing scam effectuated by impersonating Complainant, and finds this is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Nat. Arb. Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also Tyco Int’l Services GmbH v. TYCOINT SCOT, FA 1590501 (Nat. Arb. Forum Dec. 22, 2014) (finding no rights or legitimate interests where the disputed domain name was used to impersonate the complainant in e-mail messages in connection with a fraudulent scheme aimed at the complainant’s customers).
Complainant argues that Respondent is typosquatting. Complainant argues the domain name includes only the mark while adding the letter “s” to make a typographical error. The Panel agrees that typosquatting is occurring, and finds this is additional evidence that Respondent has no rights or legitimate interests under Policy ¶ 4(a)(ii). See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, the respondent had “engaged in typosquatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”).
Complainant has proven this element.
Complainant argues that Respondent has registered and is using the <thehackettgroups.com> domain name in bad faith. Complainant claims that Respondent’s registration and use of the domain name, which is confusingly similar to the THE HACKETT GROUP mark, is disrupting Complainant’s business under Policy ¶ 4(b)(iii). Respondent is using the e-mail string associated with the disputed domain name to send fraudulent e-mails. The Panel finds that Respondent’s conduct contains the requisite competitive nature under Policy ¶ 4(b)(iii), and finds this is evidence of bad faith disruption. See Toyota Jidosha Kabushiki Kaisha v. S&S Enters. Ltd., D2000-0802 (WIPO Sept. 9, 2000) (“Registration of a domain name [by the respondent that incorporates another’s trademark] goes further than merely correctly using in an advertisement the trade mark of another in connection with that other’s goods or services.”).
Complainant argues that Respondent is intending to profit from a likelihood of confusion under Policy 4(b)(iv). Complainant argues that by using the disputed domain name, Respondent is attempting to profit off the likelihood that Internet users will be confused as to the source or sponsorship of the disputed domain name. The Panel finds that Respondent is intending to profit from a likelihood of confusion, and finds this is evidence of bad faith under Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
Complainant alleges that Respondent must have had constructive and/or actual notice of Complainant's rights in the THE HACKETT GROUP mark prior to registration of the domain names because of Complainant's widespread use of the mark and its trademark registrations with the USPTO. Although previous panels have declined to find evidence of bad faith based solely on constructive knowledge, panels have found Policy ¶ 4(a)(iii) bad faith where the circumstances support an inference of actual knowledge. Notable here, past panels have inferred actual knowledge where the respondent has attempted to impersonate the complainant. For example, the panel in SHUAA Capital psc v. Oba Junkie / shuaa capital psc, FA 1581255 (Nat. Arb. Forum Oct. 29, 2014), found evidence of bad faith under Policy ¶ 4(a)(iii), writing, “Respondent’s knowledge of Complainant’s mark is apparent by Respondent’s attempt to project itself as Complainant.” Respondent relied on the e-mail string associated with the <thehackettgroups.com> domain name to send e-mails under Complainant’s apparent authority, including both Complainant’s name and a link to Complainant’s authentic website in the signature line. The Panel agrees that Respondent was indeed aware of Complainant’s rights at the time of domain name registration, and therefore finds Respondent registered the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
Complainant argues that Respondent is engaging in a phishing scam in bad faith. Complainant has provided evidence that Respondent has sent emails to various Internet persons that suggests the solicitation of personal information. The Panel finds that Respondent is indeed engaging in a phishing scam, and finds that Respondent is engaging in bad faith under Policy ¶ 4(a)(iii). See Wells Fargo & Co. v. Maniac State, FA 608239 (Nat. Arb. Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers); see also National Oilwell Varco, L.P. v. Craig Wood / NOV, FA 1575951 (Nat. Arb. Forum September 22, 2014) (“We are persuaded by the evidence that Respondent’s use of the <nov-inc.com> domain name to commit a commercial fraud while purporting to act in the name of Complainant, all as alleged in the Complaint, demonstrates bad faith in the registration and use of the domain name.”).
Complainant argues that Respondent is typosquatting in bad faith. Complainant argues the domain includes only the mark while adding the single letter “s” to make a typographical error. The Panel finds that typosquatting is occurring, and finds that Respondent is engaging in bad faith. See Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (“Respondent's registration of the domain names in dispute constitutes bad faith because the domain names are merely typosquatted versions of the [complainant’s] IMDB mark).
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <thehackettgroups.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: February 6, 2015
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