Huron Consulting Group Inc. v. Oneandone Private Registration / 1&1 Internet Inc
Claim Number: FA1611001705246
Complainant is Huron Consulting Group Inc. ("Complainant"), represented by David A.W. Wong of Barnes & Thornburg LLP, Indiana, USA. Respondent is Oneandone Private Registration / 1&1 Internet Inc ("Respondent"), Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <huronperfect.com>, registered with 1&1 Internet SE.
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 November 30, 2016; the Forum received payment on December 1, 2016.
On December 5, 2016, 1&1 Internet SE confirmed by email to the Forum that the <huronperfect.com> domain name is registered with 1&1 Internet SE and that Respondent is the current registrant of the name. 1&1 Internet SE has verified that Respondent is bound by the 1&1 Internet SE 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 December 6, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 27, 2016 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@huronperfect.com. Also on December 6, 2016, 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 January 5, 2017, 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 is a global professional services firm. Complainant has used HURON and related marks in connection with its business since 2002. Complainant's U.S. trademark registrations include HURON (a design mark comprised of the word "Huron" in block letters enclosed within a rectangle, registered in 2010); HURON CONSULTING GROUP (in the form of a stylized word mark, registered in 2009, and also as a standard character mark, registered in February 2016); and other HURON-formative marks. Complainant also owns numerous registrations for these marks in other jurisdictions.
Respondent registered the disputed domain name <huronperfect.com> in November 2016. The registration is held in the name of a privacy shield, concealing the identity of the actual registrant. Complainant states that Respondent has never been known as HURON or HURON CONSULTING GROUP or any variation thereof. Complainant states further that Respondent has impersonated Complainant in communications with third parties, using the disputed domain name for an email address and a website that contains content copied from Complainant's own website, requesting sensitive personal information.
On these grounds Complainant contends that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
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 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 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(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.").
The disputed domain name <huronperfect.com> combines Complainant's registered HURON mark (and the dominant portion of its other HURON-formative marks) with the generic term "perfect" and the ".com" top-level domain. These additions do not substantially diminish the similarity between the domain name and Complainant's mark for purposes of the Policy. See, e.g., Huron Consulting Group Inc. v. David White, FA 1701395 (Forum Dec. 6, 2016) (finding <huroninc.net> confusingly similar to HURON HEALTHCARE and HURON CONSULTING GROUP); Montblanc-Simplo G.m.b.H v. Jing Yang, D2013-0856 (WIPO July 11, 2013) (finding <perfectmontblanc.com> confusingly similar to MONTBLANC); Revlon Consumer Products Corp. v. Amar Fazil, D2011-0014 (WIPO Mar. 1, 2011) (finding <revlonperfect1.com> confusingly similar to REVLON). The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights.
Under the Policy, Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006).
Respondent registered a domain name combining Complainant's mark with a geographic term, and the only apparent use of the domain name has been in connection with a fraudulent phishing scheme. Such use does not give rise to rights or legitimate interests under the Policy. See Huron Consulting Group Inc. v. David White, supra.
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)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor."
Respondent registered a domain name that combines Complainant's mark with a generic term, doing so through a privacy registration service in an effort to conceal Respondent's identity, and is using the domain name to impersonate Complainant in connection with a fraudulent phishing scheme. Such conduct is indicative of bad faith registration and use under the Policy. See Cargill, Inc. v. Sales office / cargillbrasil, FA 1704952 (Forum Jan. 3, 2017); Huron Consulting Group Inc. v. David White, supra. The Panel finds that the disputed domain name was registered and is being 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 <huronperfect.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: January 5, 2017
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