Thomson Reuters Global Resources Unlimited Company v. Gabe Berger
Claim Number: FA1901001825921
Complainant is Thomson Reuters Global Resources Unlimited Company (“Complainant”), represented by Thomas Walsh of MontaguLaw, P.C., USA. Respondent is Gabe Berger (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <thompsonreuters-accounting.com> and <thompsonrueters-accounting.com>, registered with Hostinger, UAB.
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.
Charles A. Kuechenmeister.
Complainant submitted a Complaint to the Forum electronically on January 18, 2019; the Forum received payment on January 18, 2019.
On January 21, 2019, Hostinger, UAB confirmed by e-mail to the Forum that the <thompsonreuters-accounting.com> and <thompsonrueters-accounting.com> domain names (the Domain Names) are registered with Hostinger, UAB and that Respondent is the current registrant of the names. Hostinger, UAB has verified that Respondent is bound by the Hostinger, UAB 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 22, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of February 11, 2019 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@thompsonreuters-accounting.com, postmaster@thompsonrueters-accounting.com. Also on January 22, 2019, 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 February 18, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister 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 Names be transferred from Respondent to Complainant.
Paragraph 3(c) of the Rules provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name-holder.” The available evidence indicates that both of the Domain Names are registered by the same person or entity. The WHOIS reports submitted as Complaint Exhibit B confirm that both are registered to “Gabe Berger,” and the address given for the registrant of each Domain Name is the same. Both Domain Names were registered October 17, 2018, with the same registrar. On this evidence the Panel finds that both Domain Names are registered to the same person or entity and will proceed as to both of them.
A. Complainant
Complainant provides information to businesses and professionals in the legal, tax, accounting, and media markets. Complainant has rights in its THOMSON REUTERS mark through its registration of that mark with the European Union Intellectual Property Office (“EUIPO” formerly known as “OHIM”) (Reg. No. 6,474,341 registered on Mar. 30, 2009). Respondent’s Domain Names are confusingly similar to Complainant’s mark because they incorporate the Complainant’s mark in its entirety, altering it only by adding a “p” to “Thomson” in both Domain Names, reversing the order of the “e” and “u” in the Reuters element of the mark in one of the Domain Names, and adding a hyphen, the generic term “accounting” and the “.com” generic top-level domain (“gTLD”) to both names.
Respondent lacks rights or legitimate interests in the Domain Names because Respondent is not commonly known by the Domain Names and Complainant has not authorized or permitted him to use its mark in any fashion. Additionally, Respondent fails to use the Domain Names in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use. Rather, both Domain Names resolve to inactive websites.
Respondent registered and uses the Domain Names in bad faith. Respondent is making no active use of the Domain Names. Moreover, Respondent is attempting to trade off Complainant’s goodwill and the fame of its mark. Finally, Respondent attempts to take advantage Internet users’ typographical errors by engaging in typosquatting.
B. Respondent
Respondent did not submit a Response in this proceeding.
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 provides that in order to obtain an order cancelling or transferring a domain name, Complainant must prove each of the following three elements:
(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, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations 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 Panel finds as follows with respect to the matters at issue in this proceeding:
Complainant registered its THOMSON REUTERS mark with the EUIPO (Reg. No. 6,474,341) on March 30, 2009. See Complaint Ex. D. Registration of a trademark is sufficient to establish a complainant’s rights in that mark for the purposes of Policy ¶ 4(a)(i). Lilly A/S v. yiyi chen, FA 1704586 (Forum Jan 5, 2017) (“Until March 23, 2016, the EUIPO was known as the Office for Harmonization in the Internal Market. Registration of a mark with the EUIPO (or any other similar governmental authority) is sufficient to establish rights in the mark.”).
Respondent’s Domain Names are confusingly similar to Complainant’s mark because they incorporate Complainant’s mark in its entirety, altering it only by adding a “p” in the Thomson element of the mark, a hyphen, the generic term “accounting,” and the “.com” gTLD. Additionally, the <thomsonrueters-accounting.com> Domain Name transposes the “u” and “e” in the Reuters element of the mark. These changes are not sufficient to distinguish the Domain Names from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). Bank of America Corporation v. Above.com Domain Privacy, FA 1629452 (Forum Aug. 18, 2015) (finding that the <blankofamerica.com> domain name contains the entire BANK OF AMERICA mark and merely adds the gTLD ‘.com’ and the letter ‘l’ to create a common misspelling of the word ‘bank’), Abbott Laboratories v. Miles White, FA 1646590 (Forum Dec. 10, 2015) (holding that the addition of descriptive terms, particularly terms that pertain to complainant’s business, do not adequately distinguish a disputed domain name from complainant’s mark under Policy ¶ 4(a)(i)), RetailMeNot, Inc. v. Domain Admin / Private Registrations Aktien Gesellschaft, FA 1625879 (Forum Aug. 6, 2015) (finding confusing similarity while Respondent merely transposed the letters “a” and “t” in the RETAILMENOT mark in crafting the <reatilmenot.com> domain name).
For the reasons set forth above, the Panel finds that the Domain Name is identical or confusingly similar to the THOMSON REUTERS mark, in which Complainant has substantial and demonstrated rights.
Rights or Legitimate Interests
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”). If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at ¶ 2.1.
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate a respondent’s rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) before any notice to respondent of the dispute, respondent has used or has made demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) respondent (as an individual, business or other organization) has been commonly known by the domain name, even if respondent has acquired no trademark or service mark rights; or
(iii) respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Names because (i) he is not commonly known by the Domain Names, (ii) Complainant has not authorized or licensed him to use its THOMSON REUTERS mark, and (iii) Respondent is making no active use of either Domain Name. These allegations are supported by competent evidence.
The WHOIS reports submitted as Complaint Exhibit B show that the Domain Names are registered to “Gabe Berger.” This name bears no resemblance to either Domain Name. UDRP panels have consistently held that evidence of a registrant name that is materially different from the domain name at issue is competent evidence that the respondent is not commonly known by the domain name. Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). The Panel is satisfied that Respondent has not been commonly known by the Domain Name for the purposes of Policy ¶ 4(c)(ii).
Complainant states that it has never licensed or authorized Respondent to use its mark in any way. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel. In the absence of evidence that a respondent is authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights or legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name), Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”).
Complaint Exhibit H is a screenshot of the web page resolving from the <thompsonreuters-accounting.com> Domain Name. The only operative message on this page reads “This site can’t be reached.” Complaint Exhibit I shows a “Redirect Error” message for the <thompsonrueters-accounting.com> Domain Name. It is clear that neither Domain Name is hosting an active web site. Nor is there any evidence showing some other use being made of either Domain Name. Hosting an inactive web site does not qualify as using a domain name for a bona fide offering of goods and services within the meaning of Policy ¶4(c)(i) or a legitimate noncommercial or fair use within the meaning of Policy ¶4(c)(iii). George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name).
Complainant has made its prima facie case. On the evidence presented, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the Domain Names.
(i) respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of respondent’s documented out-of-pocket costs directly related to the domain name;
(ii) respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that respondent has engaged in a pattern of such conduct;
(iii) respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has 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 of service on respondent’s web site or location.
The Policy recognizes that mischief can manifest in many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005). The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and UDRP panels have found numerous circumstances in addition to those articulated in Policy ¶ 4(b) to constitute evidence of bad faith use and registration. Among them is a failure to make active use of an infringing domain name. Indiana University v. Ryan G Foo / PPA Media Services, FA1411001588079 (Forum Dec. 28, 2014) (“Under the circumstances, Respondent’s seemingly inutile holding of the at-issue domain name shows Respondent’s bad faith pursuant to Policy ¶ 4(a)(iii).”). Kaspersky Lab Zao v. Tarsim Rayaneh Engineering Co., FA1356035 (Forum Dec. 13, 2010) (“Respondent’s failure to make an active use of the contested domain name is evidence that Respondent registered and uses the disputed domain name in bad faith under Policy ¶4(a)(iii)”).
In addition, as discussed above in the identical or confusingly similar analysis, both Domain Names incorporate Complainant’s THOMSON REUTERS mark in its entirety, altering the THOMSON component of the mark only by adding a “p,” to produce a different but common spelling of that name. Likewise, the <thompsonrueters-accounting.com> Domain Name reverses the order of the “e” and the “u” in the Reuters element of the mark. This kind of subtle, intentional misspelling has become known as “typosquatting.” It is evident that Respondent registered and is using the Domain Names because, by design, they contain Complainant’s mark with subtle misspellings that would likely deceive Internet users who mistakenly misspell Complainant’s name into believing that they would reach Complainant’s web site. Again, considering the nonexclusive, open-ended nature of Policy ¶ 4(b), typosquatting has, in and of itself, been held to be evidence of bad faith registration and use. Adorama, Inc. v. Moniker Privacy Services, FA1503001610020 (Forum May 1, 2015) (“Respondent has also engaged in typosquatting, which is additional evidence of bad faith registration and use under Policy ¶ 4(a)(iii)”), Vanguard Trademark Holdings USA LLC v. Shuai Wei Xu / Xu Shuai Wei, FA 1784238 (Forum June 1, 2018) (finding the respondent engaged in typosquatting—and thus registered and used the at-issue domain names in bad faith—where the names consisted of the complainant’s mark with small typographical errors introduced therein).
Typosquatting necessarily implicates another factor that has, by itself, often been held by UDRP panels to constitute bad faith. It is evident from the close similarity between Complainant’s mark and the Domain Names that Respondent had actual knowledge of Complainant’s mark in October 2018, when it registered the Domain Names. See, Complaint Exhibit B for registration date. Given the nonexclusive nature of Policy ¶ 4(b), actual knowledge of a complainant’s rights in a mark prior to registering an identical or confusingly similar domain name has often been held to be evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii). Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name), Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (“Complainant contends Respondent’s appropriation of Complainant’s trademark was a clear intent to trade upon Complainant’s reputation and goodwill in order to confuse Internet users. Therefore, the Panel finds Respondent did have actual knowledge of Complainant’s mark prior to registration and this constitutes bad faith per Policy ¶ 4(a)(iii).”).
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Names in bad faith within the meaning of Policy ¶ 4(a)(iii).
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 <thompsonreuters-accounting.com> and <thompsonrueters-accounting.com> Domain Names be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
February 20, 2019
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