Thornton Tomasetti, Inc. v. Domain Administrator / Fundacion Privacy Services LTD
Claim Number: FA2108001961301
Complainant is Thornton Tomasetti, Inc. (“Complainant”), represented by Arthur Wellington, New York, USA. Respondent is Domain Administrator / Fundacion Privacy Services LTD (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thortontomasetti.com> (“Domain Name”), registered with Media Elite Holdings Limited.
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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 26, 2021; the Forum received payment on August 26, 2021.
On August 30, 2021, Media Elite Holdings Limited confirmed by e-mail to the Forum that the <thortontomasetti.com> domain name is registered with Media Elite Holdings Limited and that Respondent is the current registrant of the name. Media Elite Holdings Limited has verified that Respondent is bound by the Media Elite Holdings Limited 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 1, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 21, 2021 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@thortontomasetti.com. Also on September 1, 2021, 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 September 23, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith 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, Thornton Tomasetti Inc., is a scientific and engineering consulting firm. Complainant has rights in the THORNTON TOMASETTI mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 6,280,186, registered Mar. 2, 2021). The <thortontomasetti.com> domain name is confusingly similar to the THORNTON TOMASETTI mark since it merely misspells the mark by removing the letter “n.”
Respondent has no rights or legitimate interests in the <thortontomasetti.com> domain name since Complainant did not authorize Respondent’s use of the THORNTON TOMASETTI mark.
Respondent registered or uses the <thortontomasetti.com> domain name in bad faith because Respondent creates confusion with Complainant for commercial gain.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the THORNTON TOMASETTI mark. The Domain Name is confusingly similar to Complainant’s THORNTON TOMASETTI mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the Domain Name and that Respondent registered and has used the Domain Name 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 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”).
Complainant has rights in the THORNTON TOMASETTI mark based on registration with the USPTO (e.g., Reg. No. 6,280,186, registered Mar. 2, 2021). Registration of a mark with the USPTO is sufficient to establish rights in that mark under Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”).
The Panel finds that the <thortontomasetti.com> domain name is confusing similar to Complainant’s THORNTON TOMASETTI mark since it merely misspells the mark by omitting the first letter “n” and adding the “.com” gTLD. A disputed domain name is generally found to be confusingly similar to a mark under Policy ¶ 4(a)(i) where it incorporates a misspelled version of the mark with a gTLD. See Hallelujah Acres, Inc. v. Manila Indus., Inc., FA 805029 (Forum Nov. 15, 2006) (holding that the respondent’s <hacrs.com> domain name was confusingly similar to the complainant’s HACRES mark because it omitted the letter “e” from the mark and added the generic top-level domain “.com”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the 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) and 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.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the THORNTON TOMASETTI mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS lists “Domain Administrator / Fundacion Privacy Services LTD” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).
The Complaint does not provide evidence of how the Domain Name is used. In order to properly assess the merits of the proceeding the Panel has visited the Domain Name in question and confirms that it presently resolves to a website that triggers a security warning and encourages visitors to download malware. See Paragraph 4.8 of the WIPO Overview 3.0 (Noting in particular the general powers of a panel articulated inter alia in paragraphs 10 and 12 of the UDRP Rules, it has been accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision.)
The use of a disputed domain name to redirect Internet users to a website that attempt to install malicious software is not be a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Coachella Music Festival, LLC v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1785199 (Forum June 5, 2018) (“Respondent uses the <coechella.com> domain name to direct internet users to a website which is used to attempt to install malware on visiting devices. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use under Policy ¶ 4(c)(iii).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
While the Domain Name was registered on April 23, 2020 and the THORNTON TOMASETTI mark was registered with the USPTO on March 2, 2021, the Panel notes that, based on the evidence of the registration of the THORNTON TOMASETTI mark, Complainant has used the THORNTON TOMASETTI mark in commerce since 1977 and the application to register the THORNTON TOMASETTI mark was made on January 22, 2020, both prior to the date of registration.
The Panel finds on the balance of probabilities that, April 23, 2020, Respondent had actual knowledge of Complainant’s THORNTON TOMASETTI mark. The THORNTON TOMASETTI mark is a coined word with no meaning in the English language. There is no obvious reason (and none has been provided) why an entity would register a Domain Name containing a minor misspelling of the coined THORNTON TOMASETTI mark use it for a site offering malware other than to take advantage of the similarity between the Domain Name and the THORNTON TOMASETTI mark. In the absence of rights or legitimate interests of its own the Panel finds that Respondent’s registration of the Domain Name in awareness of the THORNTON TOMASETTI mark demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
Furthermore, Respondent’s registration of the Domain Name is part of a pattern of bad faith registration and use of domain names. The Panel is aware of at least 84 prior UDRP cases where Respondent, Domain Administrator / Fundacion Privacy Services LTD, has been ordered to transfer ownership of domain names. A pattern of bad faith registration can be established by a showing of prior adverse UDRP precedent, and such a pattern can indicate bad faith per Policy ¶ 4(b)(ii). See Webster Financial Corporation and Webster Bank, National Association v. Above.com Domain Privacy, FA1209001464477 (Forum Nov. 30, 2012) (finding where the record reflected that the respondent had been a respondent in other UDRP proceedings in which it was ordered to transfer disputed domain names to various complainants established a pattern of bad faith registration and use of domain names and stood as evidence of bad faith in the registration and use of domain names under Policy ¶ 4(b)(ii)). The Panel therefore finds that the registration and use of the Domain Name is part of a pattern and is evidence of Respondent’s bad faith per Policy ¶ 4(b)(ii).
Finally, the Panel finds that Respondent registered and uses the Domain Name in bad faith as Respondent uses the Domain Name to deceive Internet users into installing malicious software on their computers. Use of a disputed domain name to impersonate a complainant in furtherance of a scheme to encourage malware is evidence of bad faith use per Policy ¶ 4(a)(iii). See Asbury Communities, Inc. v. Tiffany Hedges, FA 1785054 (Forum June 18, 2018) (“The Panel here finds that Respondent [installation of malware] further support the conclusion that Respondent registered and used the <asburymethodistvillage.com> domain name in bad faith under 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 <thortontomasetti.com> domain name be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: September 24, 2021
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