Thomson Reuters Global Resources Unlimited Company v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA1903001836055
Complainant is Thomson Reuters Global Resources Unlimited Company (“Complainant”), represented by Thomas Walsh of MontaguLaw, P.C., New York, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thompsonreuterswebex.com>, 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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 27, 2019; the Forum received payment on March 27, 2019.
On March 27, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <thompsonreuterswebex.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 March 29, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 18, 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@thompsonreuterswebex.com. Also on March 29, 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 April 19, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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 leading provider of information for businesses and professionals in the legal, tax and accounting, and media markets. Complainant has rights in the THOMSON-REUTERS trademark through its registration of the trademark with the European Union Intellectual Property Office (EUIPO) (e.g. Reg. No. 006474341, registered March 30, 2009). Respondent’s <thompsonreuterswebex.com> domain name is confusingly similar to Complainant’s trademark as it only adds the letter “p” along with the descriptive term “webex.”
Respondent has no rights or legitimate interests in the <thompsonreuterswebex.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the trademark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use.
Respondent registered and uses the <thompsonreuterswebex.com> domain name in bad faith. Respondent, given the distinctiveness of the trademark and the fame associated with it, clearly registered the domain name to capitalize on the goodwill associated with the trademark. Additionally, Respondent has made no use of the disputed domain name. Further, Respondent has exhibited bad faith by engaging in typosquatting.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the European Union Trade Mark Registration No 006474341 THOMSON-REUTERS (word), registered March 30, 2009 for goods and services in classes 9, 16, 35, 36, 37, 38, 41, 42, 44, and 45.
Respondent registered the <thompsonreuterswebex.com> domain name on September 28, 2018.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The Complainant claims rights in the THOMSON-REUTERS trademark through its registration of the trademark with the EUIPO (e.g. Reg. No. 006474341, registered March 30, 2009). Registration of a mark with the EUIPO sufficiently confers a complainant’s rights in a trademark for the purposes of Policy ¶ 4(a)(i). See NIKE, Inc., and Nike Innovate, C.V. v. Emile Boulanger, FA 1732458 (Forum July 3, 2017) (“Registration with the OHIM…” [now: EUIPO] “…is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Complainant has established rights in the THOMSON-REUTERS trademark for the purposes of Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <thompsonreuterswebex.com> domain name is confusingly similar to Complainant’s trademark as it adds the letter “p” along with the descriptive term “webex.” The Panel also notes that the domain name adds the “.com” generic top-level domain (“gTLD”) and finds that the addition of a letter, a descriptive term, and a gTLD generally does not sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See OpenTable, Inc. v. Above.com Domain Privacy, FA 1626187 (Forum Aug. 10, 2015 (“Respondent’s <oipentable.com> domain name is confusingly similar to the OPENTABLE mark under Policy ¶ 4(a)(i) because the disputed domain merely adds the letter ‘i’ . . . ”); see also The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”). In the present case, the Panel notes that the added term “webex” indicates a service for online meetings, that the Complainant is in fact using in connection with its trademark THOMSON-REUTERS, and the combination makes no difference but rather indicate further that the disputed domain name is a service provided by the Complainant for the Complainant’s customers. The Panel therefore finds that the <thompsonreuterswebex.com> domain name is confusingly similar to the THOMSON-REUTERS trademark under Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also 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”).
Complainant contends that Respondent has no rights or legitimate interests in the <thompsonreuterswebex.com> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the trademark. Relevant information includes the WHOIS, assertions by a complainant regarding the nature of its relationship with a respondent, and other evidence in the record to support these assertions. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same); see also Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sep. 4, 2018) (concluding that Respondent was not commonly known by the disputed domain name where “the WHOIS of record identifies the Respondent as “Bhawana Chandel,” and no information in the record shows that Respondent was authorized to use Complainant’s mark in any way.”). The WHOIS in this case identifies “Carolina Rodrigues / Fundacion Comercio Electronico” as the registrant, and nothing in the record indicates that Complainant authorized Respondent to use the trademark for any purpose. Accordingly, the Panel agrees that Respondent is not commonly known by the <thompsonreuterswebex.com> domain name under Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. The Panel notes that while Complainant does not make any specific argument regarding Respondent’s use of the domain name under rights and legitimate interests, Complainant does provide an argument under the bad faith portion of its Complaint, where Complainant claims that Respondent makes no use of the resolving webpage. Failure to make active use of a confusingly similar domain name can evince a lack of rights and legitimate interests under Policy ¶¶ 4(c)(i) and (iii). See Dell Inc. v. link growth / Digital Marketing, FA 1785283 (Forum June 7, 2018) (“Respondent’s domain names currently display template websites lacking any substantive content. The Panel finds that Respondent has does not have rights or legitimate interests with respect of the domain name per Policy ¶¶ 4(c)(i) or (iii).”). Complainant provides a screenshot of the resolving webpage, which shows a “Security Check” webpage prompting users to select an “I’m human” button. Accordingly, the Panel finds that Respondent fails to make use of the domain name, failing to use the domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
Complainant claims that Respondent, given the distinctiveness of the trademark and the fame associated with it, clearly registered the domain name to capitalize on the goodwill associated with the trademark. Using a confusingly similar domain name to trade upon the goodwill of a complainant’s trademark can evince bad faith under Policy ¶ 4(b)(iv). See Menard, Inc. v. Domain Admin / Whois Privacy Corp., FA 1785761 (Forum June 13, 2018) (“A respondent’s appropriation of a complainant’s mark in a confusingly similar domain name to divert potential consumers to its own web site is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also Dell Inc. v. Prashant Chhibber, FA 1785651 (Forum June 1, 2018) (“The Panel finds that Respondent used the domain names to create confusion with Complainant’s DELL mark for commercial gain and that Respondent registered the domain names in bad faith under Policy ¶ 4(b)(iv).”). Accordingly, the Panel holds that Respondent attempted to commercially benefit of Complainant’s trademark in bad faith under Policy ¶ 4(b)(iv).
Next, Complainant argues that Respondent has made no use of the disputed domain name. Inactively holding a confusingly similar domain name can evince bad faith under Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). As noted above, Complainant has provided a screenshot of the resolving webpage, which shows a “Security Check” webpage prompting users to select an “I’m human” button. As such, the Panel agrees that Respondent’s failure to use the domain name demonstrates Respondent’s bad faith under the Policy.
Further, Complainant avers that Respondent has exhibited bad faith by engaging in typosquatting. A finding of typosquatting can evince bad faith under Policy ¶ 4(a)(iii). See 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). Respondents who capitalize on common typing errors engage in bad faith registration under Policy ¶ 4(a)(iii).”). Here, Respondent adds the letter “p” (as well as the term “webex”) to Complainant’s THOMSON-REUTERS trademark. THOMSON and THOMPSON are indeed very similar and as the Complainant’s customers are international, the added letter “p” may well not be noted enough to avoid reading the word as the correct initial part of the Complainant’s trademark. Panel finds that Respondent’s changes of the Complainant’s trademark in the domain name further demonstrates Respondent’s bad faith per Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <thompsonreuterswebex.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: April 25, 2019
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