Esaress International S.A.R.L. v. Kevin Connelly
Claim Number: FA1509001636066
Complainant is Esaress International S.A.R.L. (“Complainant”), represented by Heath Brewer, Netherlands. Respondent is Kevin Connelly (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <spencerstuartt.com>, registered with GoDaddy.com, LLC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 2, 2015; the Forum received payment on September 2, 2015.
On September 2, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <spencerstuartt.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 September 8, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 28, 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@spencerstuartt.com. Also on September 8, 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 Forum transmitted to the parties a Notification of Respondent Default.
On October 2, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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
Esaress International S.A.R.L. is a member of the Spencer Stuart group of companies and the registered owner of the “Spencer Stuart” trademark in the United States of America, USPTO (Reg. No. 2240274 issued April 20, 1999). Spencer Stuart is the owner of at least 60 trademark registrations worldwide for the “Spencer Stuart” mark.
Privately held since 1956, Spencer Stuart is an entrepreneurial venture in which senior professionals provide consulting services to clients to build and/or strengthen their senior management teams. It is one of the world’s leading executive search consulting firms and the advisor of choice among top companies seeking applies its extensive knowledge of industries, functions and talent to advise select clients and address their leadership requirements. Its clients range across industries, from the world’s largest companies to medium-sized businesses and entrepreneurial start-ups.
Globally active, the trademark Spencer Stuart has become distinctive due to its highly successful and widely known executive search, recruitment, management consulting and placement services. Since 1956, it has been the adviser of choice among organizations seeking guidance and counsel on senior leadership needs. Please refer to www.spencerstuart.com for further information.
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds: UDRP Rule 3(b)(ix).
a. The domain name is identical or confusingly similar to a trademark in which the Complainant has rights UDRP Rule 3(b)(ix)(1); UDRP Policy ¶4(a)(i).
Spencer Stuart is the owner of at least 60 trademark registrations worldwide for the Spencer Stuart mark, including, inter alia, the United States, the United Kingdom, Argentina, Australia, Brazil, Chile, Denmark, France, Germany, India, Japan, Norway and South Africa.
In the United States, Esaress International S.A.R.L. is the exclusive owner of the trademark registration with the USPTO for the Spencer Stuart mark (Reg. No. 2240274 issued April 20, 1999). The name Spencer Stuart is known throughout the United States and indeed worldwide in business and thus has significant value through association with the goodwill of the Spencer Stuart group.
The <spencerstuartt.com> domain name features all and exactly Spencer Stuart’s mark as a whole. Specifically, the one and only differentiating factor between <spencerstuart.com>, Spencer Stuart’s professional website, and <spencerstuartt.com> is a double “t” at the end of the name – fundamentally, an unperceivable typo. Such recurrent practice is also known as “typosquatting” and is defined as form of cybersquatting (sitting on sites under someone else's brand or copyright) that targets Internet users who incorrectly type a website address into their web browser. With this in mind, it is clear that the mentioned domain name was chosen and registered with the intention to mislead and to create confusion upon the public.
b. Respondent has no rights or legitimate interest in respect to the domain name UDRP Rule 3(b)(ix)(2); UDRP Policy ¶4(a)(ii).
Complainant respectfully submits that Respondent has no rights or legitimate interests in the domain name because Spencer Stuart has no professional relationship or any agreements with the domain name registrant that would allow or consent to the use of its trademark.
The current registrant is not commonly known by the domain name in question, nor has used the domain name in connection with a legitimate noncommercial or fair use without intent for commercial gain. No legitimate reason for registering such a confusingly similar domain name exists since it has been used solely with deceitful purposes such as to impersonate Spencer Stuart’s CEO in an internal email to the CFO.
In addition to the above, Respondent is registered at DomainsByProxy.com under the alias Kevin Connelly (Spencer Stuart’s CEO) and with the address 2988 Campus Drive, Third Floor, San Mateo, California, 94403, USA, Spencer Stuart’s Silicon Valley office, which clearly establish the intention to mislead. A registration under fake personal information in addition to the use of a private registration method such as DomainsByProxy are the details with which the blatant bad faith of the domain name registrant can be confirmed.
The timing of the registration, more than a decade after Complainant’s mark was registered with the USPTO, and more than 50 years after Complainant began doing business under this name in the United States, together with the distinctive reputation of Spencer Stuart in the business community precludes a finding that Respondent was unaware of Complainant’s rights in the Spencer Stuart mark when providing the registrant’s details for the domain name.
c. Respondent has registered and used the domain name in bad faith UDRP Rule 3(b)(ix)(3); UDRP Policy ¶4(a)(iii).
The actions of the Respondent in connection with the registration of the domain name <spencerstuartt.com> were clearly made and used in bad faith. No bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name in question has or can be established. The fraudulent use of the domain name demonstrates an uncontested bad faith in the Respondent’s intentions as to the registration and exploitation of the domain name under DomainsByProxy.
The factual grounds are as follows: the Respondent first registered the disputed domain name and sought to remain anonymous and to conceal its identity by using a private registration method, that of DomainsByProxy. Furthermore, not only did the registrant seek for a private registration but also used Spencer Stuart’s CEO information as his/her own. The fact that the Respondent filled in precisely Spencer Stuart’s CEO name, whose e-mail was later forged, shows that the Respondent was acting with bad faith and had already in mind the idea of using such domain name personal information for deceitful purposes. The e-mail sent by KConnelly@spencerstuartt.com (please note the disputed domain name) to Spencer Stuart’s CFO contained a simple and inoffensive message. However, it is the elements and formatting of such e-mail that incontestably prove the intention of deceit and impersonation. The e-mail included the same exact font, size, color, e-mail footer information, etc. as that one used by Spencer Stuart’s CEO. However, the proven bad faith of the Respondent in the registration process explained above, leads to the possibility of such domain name being used for further deceitful and misleading acts in name of Spencer Stuart.
The usage of the domain name to disrupt the internal correspondence of Spencer Stuart top-level personnel together with the failure to respond to the Registrar’s e-mails is a clear indication of the Respondent’s bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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 established rights in the SPENCER STUART mark through registration of the mark with the United States Patent and trademark Office (“USPTO”) (Reg. No. 2,240,274 registered April 20, 1999). A complainant’s rights in a mark are established through registration with the USPTO (or a similar governmental authority). See Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007) (“Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the [EXPEDIA] mark pursuant to Policy ¶4(a)(i).”). Complainant’s registration with the USPTO is sufficient to demonstrate rights in the SPENCER STUART mark.
Respondent’s disputed <spencerstuartt.com> domain name is confusingly similar to the SPENCER STUART mark. The disputed domain name has an extra “t” and the gTLD “.com” to the SPENCER STUART mark. The addition of a single letter to a mark does not prevent a finding of confusing similarity under a Policy ¶4(a)(i) analysis. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶4(a)(i).”). Adding the gTLD “.com” is not relevant to a Policy ¶4(a)(i) analysis. See Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶4(a)(i) analysis.”). Domain name syntax requires a TLD (whether it is a gTLD or a ccTLD). The <spencerstuartt.com> domain name is confusingly similar to the SPENCER STUART mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case 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 has 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 Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name. Respondent’s registered the domain name under the name “Kevin Connelly,” which does not resemble the disputed domain name. A determination a respondent is not commonly known by a disputed domain name can be made based on WHOIS information. There is no other evidence in the record to indicate to the contrary. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name). Respondent is not commonly known by the disputed domain name under Policy ¶4(c)(ii).
Respondent’s used the disputed domain to impersonate Spencer Stuart’s CEO in emails to the CFO. On November 17, 2014 someone using an email associated with Respondent’s domain name emailed Rich Kurowski, who is the CFO of Spencer Stuart. Such a fraudulent action indicates a lack of rights and legitimate interests in the domain. A respondent does not acquire rights by impersonating a complainant using a disputed domain name. See 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). Respondent lacks rights or legitimate interests in the disputed domain name based on its use of the domain to impersonate one of Complainant’s officers.
Finally Respondent registered the domain name using a privacy service. Within the privacy service, Respondent provided a false name and contract information. This raises the rebuttable presumption in the commercial context Respondent has no rights in the disputed domain name. Respondent has done nothing to rebut that presumption.
The Panel finds Policy ¶4(a)(ii) satisfied.
The enunciated provisions of Policy ¶4(b) are meant to be merely illustrative of bad faith. A respondent’s bad faith may be demonstrated by ancillary allegations considered under a totality of the circumstances test. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith).
Complainant claims Respondent’s fraudulent use of the disputed domain name to impersonate the Spencer Stuart CEO demonstrates Respondent registered and is using the disputed domain name with knowledge of the SPENCER STUART mark and Complainant’s rights therein. This Panel would agree. Respondent surely wanted to commit a fraud and this was the initial test message. Such actions lead to a finding of bad faith under Policy ¶4(a)(iii). See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant's mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration"). This Panel sees Respondent’s attempted impersonation of Complainant’s CFO controlling. See SHUAA Capital psc v. Oba Junkie / shuaa capital psc, FA 1581255 (Nat. Arb. Forum Oct. 29, 2014) (“Respondent’s use of the domain name’s e-mail suffix for fraudulent purposes illustrates Policy ¶4(a)(iii) bad faith.”). Respondent registered and is using the disputed domain name in bad faith under Policy ¶4(a)(iii).
Finally, using a privacy service and providing false contact information in a commercial context raises the rebuttable presumption of bad faith registration and use of the disputed domain names. Respondent has done nothing to rebut that presumption.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <spencerstuartt.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, October 12, 2015
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