URS DEFAULT DETERMINATION


Thoughtworks, Inc. v.
Claim Number: FA2207002005049


DOMAIN NAME

<thoughtworks.pics>


PARTIES


   Complainant: Thoughtworks, Inc. of Chicago, IL, United States of America
  
Complainant Representative: Culhane Meadows, PLLC Jordan Arnot Leahey of Dallas, TX, United States of America

   Respondent: Redacted for Privacy / Privacy service provided by Withheld for Privacy ehf of Reykjavik, Capital Region, II, IS
  

REGISTRIES and REGISTRARS


   Registries: XYZ.COM LLC
   Registrars:

EXAMINER


   The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Examiner in this proceeding.
   Antonina Pakharenko-Anderson, as Examiner

PROCEDURAL HISTORY


   Complainant Submitted: July 20, 2022
   Commencement: July 26, 2022
   Default Date: August 10, 2022
   Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules").

RELIEF SOUGHT


   Complainant requests that the domain name be suspended for the life of the registration.

STANDARD OF REVIEW


   Clear and convincing evidence.

FINDINGS and DISCUSSION



   Findings of Fact: Complainant is Thoughtworks, Inc., a global technology consultancy that integrates strategy, design, and software engineering to enable enterprises and technology disruptors across the globe to thrive as modern digital businesses. Founded in 1993, Complainant has grown from a small team to a leading, global company of more than 10,000 employees in 43 offices located among 17 countries. Complainant has been using the THOUGHTWORKS trademark since at least as early as 1993. In its global trademark portfolio, Complainant has valid trademark registrations for THOUGHTWORKS, such as U.S. Reg. 1866548 (registered on Dec. 6, 1994, for business consulting services), and U.S. Reg. 2361539 (registered on June 27, 2000, for computer software design for others; and computer hardware and software consulting services). The Respondent did not submit a Response. Even though the Respondent has defaulted, URS Procedure 1.2.6, requires Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended.

  

Even though the Respondent has defaulted, URS Procedure 1.2.6, requires Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended.


[URS 1.2.6.1] The registered domain name(s) is/are identical or confusingly similar to a word mark:
  (i) for which the Complainant holds a valid national or regional registration and that is in current use; or
  (ii) that has been validated through court proceedings; or
  (iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.

Determined: Finding for Complainant 


Disputed Domain Name <thoughtworks.pics> is Identical to Complainant’s Verified THOUGHTWORKS Trademark: Respondent’s domain name incorporates in full Complainant’s THOUGHTWORKS mark, which the attached evidence shows is registered and in current use. The addition of the gTLD, .pics, does not distinguish Respondent’s domain name from Complainant’s mark. See Skechers U.S.A., Inc. II v. Contact Privacy Inc. Customer 1242639326, Claim Number: FA1805001787216 (June 8, 2018) (recognizing the TLD is irrelevant in assessing the first element). For these reasons, Complainant satisfies URS Procedure 1.2.6.1.


[URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name.

Determined: Finding for Complainant 


Complainant has not authorized Respondent to use its THOUGHTWORKS trademark or register the disputed domain name containing its registered trademark. Respondent is not commonly known by the disputed domain name. Respondent’s use is not a legitimate noncommercial or fair use, and is not in connection with a bona fide offering of goods or services. See Global Name Services LLP v. Deborah Jhonson et al., Claim Number: FA2003001888947 (Apr. 11, 2020) (finding second element established when respondent did not have trademark rights). Instead, it is used to impersonate Complainant and Bain & Company, whose counsel provided confirmation that it was not affiliated with Respondent’s website. For these reasons, Complainant satisfies URS Procedure 1.2.6.3.


[URS 1.2.6.3] The domain name(s) was/were registered and is being used in bad faith.
  a. Registrant has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of pocket costs directly related to the domain name; or
  b. Registrant has registered the domain name in order to prevent the trademark holder or service mark from reflecting the mark in a corresponding domain name, provided that Registrant has engaged in a pattern of such conduct; or
  c. Registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or
  d. By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant'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 Registrant's web site or location or of a product or service on that web site or location.

Determined: Finding for Complainant 


FINDING OF ABUSE or MATERIAL FALSEHOOD


The Examiner may find that the Complaint was brought in an abuse of this proceeding or that it contained material falsehoods.

The Examiner finds as follows:


  1. The Complaint was neither abusive nor contained material falsehoods. 

Registrant Registered and Uses in Bad Faith: Due to Complainant’s wellknown and famous trademark, Respondent knew of Complainant’s mark when registering the domain name. See Global Name Services LLP, Claim Number: FA2003001888947 (finding third element satisfied where no there is no explanation for respondent’s registration of a distinctive mark); Netflix, Inc. v. Jan Rassman, Claim Number: FA1509001639476 (Oct. 14, 2015) (same). Accordingly, Respondent has intentionally attempted to attract for commercial gain Internet users to the disputed domain name by creating a likelihood of confusion with Complainant’s THOUGHTWORKS marks. See Philip Morris Products S.A. v. REDACTED PRIVACY, Claim Number: FA2206002000236 (July 4, 2022). Under URS Procedure 1.2.6.3(c), Respondent also registered the domain name primarily for the purpose of disrupting the business of Complainant, namely, by impersonating and giving the misleading impression of an affiliation with a competitor, i.e., Bain & Company. See Dyson Technology Limited v. Redacted for Privacy, Claim Number: FA2204001991009 (Apr. 28, 2022). For these reasons, Complainant satisfies URS Procedure 1.2.6.3.


DETERMINATION


After reviewing the parties submissions, the Examiner determines that the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain name(s) be SUSPENDED for the duration of the registration:

  1. thoughtworks.pics

 

Antonina Pakharenko-Anderson
Examiner
Dated: August 13, 2022

 

 

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