Thornburg Investment Management, Inc. v. VistaPrint Technologies Ltd
Claim Number: FA1504001615194
Complainant is Thornburg Investment Management, Inc. (“Complainant”), represented by Jeffrey D. Myers of Peacock Myers, P.C., New Mexico, USA. Respondent is VistaPrint Technologies Ltd (“Respondent”), Bermuda.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thomburg.com>, registered with TUCOWS, 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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 17, 2015; the Forum received payment on April 17, 2015.
On April 20, 2015, TUCOWS, INC. confirmed by email to the Forum that the <thomburg.com> domain name is registered with TUCOWS, INC. and that Respondent is the current registrant of the name. TUCOWS, INC. has verified that Respondent is bound by the TUCOWS, 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 April 24, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 14, 2015 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@thomburg.com. Also on April 24, 2015, the Written Notice of the Complaint, notifying Respondent of the email 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 May 22, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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 domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant has offered financial management and related services under the THORNBURG mark since 1982. Complainant’s mark is the subject of trademark registrations in the United States and other jurisdictions, held by Complainant’s founder and licensed exclusively to Complainant.
Complainant contends that the disputed domain name <thomburg.com>, registered in 2015, is confusingly similar to its THORNBURG mark. Complainant contends further that Respondent has no rights or legitimate interests in the disputed domain name, and that the domain name was registered and is being used in bad faith. In support thereof, Complainant states that neither Complainant nor its licensor have authorized Respondent to use the THORNBURG mark, Complainant alleges that Respondent has used the disputed domain name in connection with a “phishing” scheme, sending a series of email messages to Complainant’s controller purporting to be from Complainant’s CEO and Chief Investment Officer, directing the controller to initiate a large wire transfer.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and has been used 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:
(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 first must show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. Complainant’s status as exclusive licensee of a registered mark is sufficient to show the requisite rights in the mark. See, e.g., Thornburg Investment Management, Inc. v. Private Registration, FA 1403913 (Nat. Arb. Forum Oct. 18, 2011). The disputed domain name differs from the mark only in the substitution of the letters “rn” for “m” and the addition of the “.com” top-level domain. These changes are insufficient to distinguish the domain name from Complainant’s mark. See, e.g., Acme Lift Co. v. VistaPrint Technologies Ltd, FA 1607039 (Forum Apr. 11, 2015) (finding <acrnelift.com> confusingly similar to ACME LIFT, noting that adjacent letters "r” and “n" may appear indistinguishable from letter "m").
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
The disputed domain name incorporates a typographical variation of Complainant’s mark without authorization, and apparently its sole use has been in connection with a scheme to defraud Complainant by impersonating one of its employees. Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and has been used in bad faith. Under paragraph 4(b)(iv) of the Policy, bad faith may be shown by evidence that “by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] web site or location or of a product or service on [Respondent’s] web site or location.”
Respondent’s registration of a domain name obviously intended to create confusion with Complainant, together with its use of that domain name in connection with a fraudulent scheme involving email messages attempting to defraud Complainant by exploiting that confusion, is indicative of bad faith under paragraph 4(b)(iv). See, e.g., Tyco International Services GmbH v. TYCOINT SCOT, FA 1590501 (Nat. Arb. Forum Dec. 22, 2014). The Panel finds that the disputed domain name was registered and has been used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <thomburg.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: May 26, 2015
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