Baker, Tilly, Virchow, Krause LLP v. James Sofie
Claim Number: FA1611001702774
Complainant is Baker, Tilly, Virchow, Krause LLP (“Complainant”), represented by Shannon V. McCue of Baker & Hostetler LLP, Ohio, USA. Respondent is James Sofie (“Respondent”), New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bakartilly.us>, 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 Forum electronically on November 14, 2016; the Forum received payment on November 14, 2016.
On November 14, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <bakartilly.us> 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 the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On November 15, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 5, 2016 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@bakartilly.us. Also on November 15, 2016, 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 December 12, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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 to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Baker Tilly Virchow Krause, LLP, is a full-service accounting and advisory firm. In connection with this business, Complainant uses its BAKER TILLY marks to market and provide its services as part of a global network of accounting and advisory firms. Complainant has rights in the BAKER TILLY mark based upon registration with the United States Patent and Trademark office (“USPTO”) (e.g., Reg. No. 3,167,367, registered Nov. 7, 2006). Respondent’s <bakartilly.us> is confusingly similar to the BAKER TILLY mark as the domain name incorporates the mark in its entirety, merely replacing the letter “e” with a letter “a,” omitting the space, and appending the country code top-level domain (“ccTLD”) “.us.”
Respondent has no rights or legitimate interests in the <bakartilly.us> domain name. Respondent is not commonly known by the disputed domain name, nor has Respondent been authorized by Complainant to register any variant of the BAKER TILLY mark in a domain name per Policy ¶ 4(c)(iii). Nothing in the available evidence indicates that Respondent has rights in a mark identical to the disputed domain name, which would serve to satisfy Policy ¶ 4(c)(i). Further, Respondent is not making a bona fide offering of goods or services via the disputed domain name, nor a legitimate noncommercial or fair use as described in Policy ¶ 4(c)(ii) and (iv). Instead, the disputed domain name resolves to a parked website and is being used to host an email server that Respondent uses to post fraudulent job openings in an attempt to solicit financial information from misled applicants.
Respondent registered or has used the disputed domain name in bad faith. Respondent has used the disputed domain to support an email address used to perpetuate a fraudulent scheme. Respondent copied text from Complainant’s actual website to use in its bogus job postings, indicating actual knowledge of Complainant’s rights in the BAKER TILLY mark. Additionally, the <bakartilly.us> domain itself shows Respondent is engaged in typosquatting by replacing the letter “e” with the letter “a” in Complainant’s mark, demonstrating bad faith under Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <bakartilly.us> domain name.
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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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 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 (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 claims rights in the BAKER TILLY mark based upon registration with the USPTO (e.g., Reg. No. 3,167,367, registered Nov. 7, 2006). Panels have frequently found registration of a mark with the USPTO is sufficient to establish rights in that mark in a Policy ¶ 4(a)(i) analysis. See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”).
Complainant also argues that Respondent’s <bakartilly.us> is confusingly similar to the BAKER TILLY mark as the domain name incorporates the mark in its entirety, with merely a substitution of the letter “e” with a letter “a,” omitting the space, and addition of the “.us” ccTLD. Panels have held the misspelling of a mark, and addition of a ccTLD Is insufficient to distinguish a disputed domain name in a confusing similarity analysis under Policy ¶ 4(a)(i). See Royal Bank of Scotland Grp. plc et al. v. Demand Domains, FA 714952 (Forum Aug. 2, 2006) (“The Panel finds that merely by misspelling Complainants’ mark, Respondent has not sufficiently differentiated the <privelage.com> domain name from the PRIVILEGE mark under Policy ¶ 4(a)(i).”); see also Allied Bldg. Prods. Corp. v. Henkel, FA 827652 (Forum Dec. 11, 2006) (holding that “it is well established that the top-level domain, here “.us,” is insignificant with regard to UDRP analysis” when determining confusing similarity). Additionally, Panels have found omission of a space irrelevant in a confusing similarity analysis. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). Therefore, the Panel agrees that Respondent’s <bakartilly.us> is confusingly similar to Complainant’s BAKER TILLY mark.
Complainant has proved 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 (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 (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 holds the position that Respondent has no rights or legitimate interests in the <bakartilly.us> domain name. To begin, Complainant asserts that Respondent is not commonly known by the disputed domain name nor has Respondent been authorized by Complainant to register any variant of BAKER TILLY in a domain name per Policy ¶ 4(c)(iii). The WHOIS information associated with the disputed domain name identifies Respondent as “James Sofie.” Respondent has not submitted any evidence which would rebut the assertion that it is not commonly known by the disputed domain name. Therefore, the Panel sees no foundation upon which a declaration that Respondent is commonly known by the <bakartilly.us> domain name is proper. See Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
The Panel finds there is nothing in the available evidence which indicates that Respondent has rights in a mark identical to the disputed domain name, which would serve to satisfy Policy ¶ 4(c)(i). See Pepsico, Inc. v. Becky, FA 117014 (Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)). Therefore, the Panel holds that Respondent has failed Policy ¶ 4(c)(i).
Further, Complainant argues that Respondent is not making a bona fide offering of goods or services via the disputed domain name, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(ii) and (iv), respectively. Instead, the disputed domain name purportedly resolves to a parked page and is being used to host an email address used to post fraudulent job openings and send emails to solicit sensitive financial information form potential applicants. Panels have found that using a disputed domain name to send emails purportedly on behalf of a complainant does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Chevron Intellectual Property LLC v. Thomas Webber / Chev Ronoil Recreational Sport Limited, FA 1661076 (Forum Mar. 15, 2016) (finding that the respondent had failed to provide a bona fide offering of goods or services or any legitimate noncommercial or fair use, stating, “Respondent is using an email address to pass themselves off as an affiliate of Complainant. Complainant presents evidence showing that the email address that Respondent has created is used to solicit information and money on false pretenses. The disputed domain name is being used to cause the recipients of these emails to mistakenly believe Respondent has a connection with Complainant and is one of the Complainant’s affiliates.”). In light of Respondent’s use of the disputed domain name and the available precedent, the Panel finds Respondent is not making an offering which would satisfy Policy ¶¶ 4(c)(ii) or (iv).
Complainant further argues that Respondent’s behavior amounts to typosquatting, as Respondent’s <bakartilly.us> only differs from Complainant’s legitimate domain <bakertilly.com> mark by one letter and ccTLD, which in itself is evidence of its lack of rights or legitimate interests in the domain name. Panels have found such typosquatting to demonstrate lack in rights or legitimate interests. See LTD Commodities LLC v. Party Night, Inc., FA 165155 (Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of Complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”). The Panel agrees and finds Respondent’s typosquatting behavior shows a lack of rights or legitimate interests in the disputed domain name.
Complainant has proved this element.
Complainant makes no arguments of Respondent’s bad faith under Policy ¶ 4(b), though it makes additional claims of Respondent’s bad faith. Panels have read Policy ¶ 4(b) as setting forth a non-exclusive set of circumstances, and have accepted other showings of bad faith. See Digi Int’l Inc. v. DDI Sys., FA 124506 (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). Accordingly, the Panel here may look beyond Policy ¶ 4(b) to the totality of the circumstances when analyzing bad faith.
Complainant claims that Respondent copied text directly from Complainant’s own website to use in Respondent’s bogus job postings, indicating that Respondent had actual knowledge of Complainant’s rights in the BAKER TILLY mark. Complainant also claims Respondent’s attempts at passing off as Complainant via email are further indications Respondent had actual knowledge of Complainant’s rights. Panels have found actual knowledge of a complainant’s right to support a finding of bad faith. See 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).
Complainant contends that Respondent engaged in typosquatting by replacing the letter “e” with the letter “a” in Complainant’s BAKER TILLY mark. Panels have held typosquatting itself to be evidence of bad faith under Policy ¶ 4(a)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)). The Panel agrees Respondent engaged in typosquatting and finds bad faith under Policy ¶ 4(a)(iii).
Complainant has proved this element.
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bakartilly.us> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.) Panelist
Dated: December 20, 2016
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