DECISION

 

Huron Consulting Group Inc. v. joan faust

Claim Number: FA2401002079445

 

PARTIES

Complainant is Huron Consulting Group Inc. ("Complainant"), represented by Melissa A. Vallone of Barnes & Thornburg LLP, Illinois, USA. Respondent is joan faust ("Respondent"), New York, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <huronconsultingfirm.com>, registered with Metaregistrar BV.

 

PANEL

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.

 

Ho-Hyun Nahm, Esq. as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on January 16, 2024; Forum received payment on January 16, 2024.

 

On January 18, 2024, Metaregistrar BV confirmed by e-mail to Forum that the <huronconsultingfirm.com> domain name is registered with Metaregistrar BV and that Respondent is the current registrant of the name. Metaregistrar BV has verified that Respondent is bound by the Metaregistrar BV 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 19, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 8, 2024 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@huronconsultingfirm.com. Also on January 19, 2024, 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, Forum transmitted to the parties a Notification of Respondent Default.

 

On February 9, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, Esq. as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

i) Complainant is a worldwide consulting firm assisting clients in diverse industries to improve performance, comply with complex regulations, etc. As a result of Complainant's substantial investment of time and resources, and continuous and exclusive use for over twenty years, the HURON CONSULTING GROUP mark is widely recognized and has generated an immeasurable amount of goodwill. Complainant has rights in the HURON CONSULTING GROUP mark through its registration with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 4,903,900 registered February 23, 2016). The disputed domain name is confusingly similar to Complainant's HURON CONSULTING GROUP mark as it incorporates Complainant's well-known HURON and HURON CONSULTING marks in their entirety. The only differences between the disputed domain and Complainant's marks are the addition of the generic term "firm" and the generic top-level domain (gTLD) ".com."

 

ii) Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed Respondent any rights in the HURON CONSULTING GROUP mark. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the disputed domain name resolves to an inactive webpage.

 

iii) Respondent registered and uses the disputed domain name in bad faith. Respondent registered and is using the domain primarily for the purpose of deceiving consumers as to the source, sponsorship, affiliation, or endorsement of Respondent's domain and thereby disrupting Complainant's business. The disputed domain name resolves to an inactive webpage. Use of a privacy protection service to register the disputed domain name that is identical to Complainant's marks and nearly identical to the domain of Complainant's official website <huronconsultinggroup.com> but for the addition of the generic term "firm," is an obvious instance of typosquatting and an indication of Respondent's bad faith. Respondent registered the disputed domain name with constructive or actual knowledge of Complainant's rights in the HURON CONSULTING GROUP mark.

 

B. Respondent

Respondent did not submit a Response in this proceeding.

 

FINDINGS

1. The disputed domain name was registered on December 17, 2023.

 

2. Complainant has rights in the HURON CONSULTING GROUP mark through its registration with the USPTO (e.g., Reg. No. 4,903,900 registered February 23, 2016).

 

3. The disputed domain name resolves to an inactive webpage.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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").

 

Identical and/or Confusingly Similar

Complainant asserts rights in the HURON CONSULTING GROUP mark based upon registration with the USPTO (e.g., Reg. No. 4,903,900 registered February 23, 2016). Registration of a mark with the USPTO is a valid showing of rights in a mark under Policy ¶ 4(a)(i). Since Complainant provides evidence of registration for the HURON CONSULTING GROUP mark with the USPTO, the Panel  finds that Complainant has established rights in the mark under Policy ¶ 4(a)(i).

 

Complainant argues the disputed domain name <huronconsultingfirm.com> is confusingly similar to Complainant's HURON CONSULTING GROUP mark as it incorporates Complainant's well-known HURON and HURON CONSULTING marks in their entirety. The only differences between the disputed domain and Complainant's marks are the addition of the generic term "firm" and the generic top-level domain (gTLD) ".com." Adding a generic term and a gTLD fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Empowered Medical Solutions, Inc. d/b/a QRS-Direct and QRS Magnovit AG v. NULL NULL / QUANTRON RESONANCE SYSTEMS / JIM ANDERSON / HTR / unknown HTR / HTR, FA 1784937 (Forum June 8, 2018) ("Adding or removing descriptive terms or a gTLD is insufficient to differentiate a disputed domain name from a complainant's mark under Policy ¶ 4(a)(i)."). The Panel notes that the disputed domain name merely replaces the generic term "GROUP" with the generic term "firm," adding the ".com" gTLD. Therefore, the Panel finds the disputed domain name is confusingly similar to Complainant's mark per Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. 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 lacks rights or legitimate interests in the disputed domain name since Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed to Respondent any rights in the HURON CONSULTING GROUP mark. WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name). In addition, a lack of authorization to use a complainant's mark may also indicate that a respondent is not commonly known by the disputed domain name. See Deutsche Lufthansa AG v. Mohamed elkassaby, FA 1801815 (Forum Sept. 17, 2018) ("The WHOIS lists "Mohamed elkassaby" as registrant of record.  Coupled with Complainant's unrebutted assertions as to absence of any affiliation between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii)."). The unmasked WHOIS information for the disputed domain name lists the registrant as "joan faust." There is nothing in the records to suggest that Respondent is commonly known by the disputed domain name per Policy ¶ 4(c)(ii).

 

Complainant argues that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as the disputed domain name resolves to an inactive webpage. Complainant provides evidence of the disputed domain name resolving to an inactive webpage. Therefore, the Panel finds that Respondent fails to use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).

 

The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.

 

Registration and Use in Bad Faith

The Panel notes that the disputed domain name resolves to an inactive webpage. Complainant provides a screenshot showing the disputed domain name resolves to an inactive webpage. The Panel observes that the inactive use of a domain name does not necessarily circumvent a finding that the domain name is being used in bad faith within the requirements of paragraph 4(a)(iii) of the Policy.  See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (finding that in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the panel must give close attention to all the circumstances of the respondent's behavior, and a remedy can be obtained under the Policy only if those circumstances show that the respondent's passive holding amounts to acting in bad faith.)

 

The particular circumstances of this case that the Panel has considered are:

 

i) Complainant is a worldwide consulting firm assisting clients in diverse industries to, e.g., improve performance, comply with complex regulations, reduce costs, etc. Complainant has provided services to a wide variety of organizations, including healthcare organizations, Fortune 500 companies, leading academic institutions, and medium-sized businesses. In connection with these services, Complainant has used the HURON CONSULTING GROUP mark since at least as early as 2002. Complainant has invested a substantial amount of time and resources promoting its goods and services under the HURON CONSULTING GROUP mark. As a result of Complainant's substantial investment of time and resources, and continuous and exclusive use for over twenty years, the HURON CONSULTING GROUP mark is considered being widely recognized; and

 

ii) Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name.

 

Taking into account the circumstances above, the Panel concludes that Respondent's inactive use of the disputed domain name constitutes bad faith under Policy, paragraph 4(a)(iii) and that Respondent is using the disputed domain name in bad faith.

 

Complainant further contends Respondent registered the disputed domain name with actual or constructive knowledge of Complainant's rights in the HURON CONSULTING GROUP marks when he or she registered the disputed domain name. While constructive knowledge is insufficient for a finding of bad faith, worldwide prominence of a mark can demonstrate actual knowledge of a complainant's rights in a mark at registration and show bad faith under Policy ¶ 4(a)(iii). See The Am. Auto. Assoc., Inc. v. Zag Media Corp., FA 1226952 (Forum Nov. 13, 2008) ("Mere constructive knowledge is insufficient to support a finding of bad faith."); see also AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) ("Complainant contends that Respondent's knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant's mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii)."). The Panel infers, due to the notoriety of Complainant's mark as noted above that Respondent registered the disputed domain name with knowledge of Complainant's rights in HURON CONSULTING GROUP mark, which constitutes bad faith registration per Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <huronconsultingfirm.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Ho-Hyun Nahm, Esq., Panelist

Dated: February 11, 2024