DECISION

 

Haynes and Boone, LLP v. nancy buese

Claim Number: FA2402002085732

PARTIES

Complainant is Haynes and Boone, LLP ("Complainant"), represented by Jeffrey M. Becker of Haynes and Boone, LLP, Texas, USA. Respondent is nancy buese ("Respondent"), Arizona, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <haynesboones.com>, (the "Domain Name") registered with Hosting Concepts B.V. d/b/a Registrar.eu.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Dawn Osborne as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on February 27, 2024; Forum received payment on February 27, 2024.

 

On March 5, 2024, Hosting Concepts B.V. d/b/a Registrar.eu confirmed by e-mail to Forum that the <haynesboones.com> Domain Name is registered with Hosting Concepts B.V. d/b/a Registrar.eu and that Respondent is the current registrant of the name. Hosting Concepts B.V. d/b/a Registrar.eu has verified that Respondent is bound by the Hosting Concepts B.V. d/b/a Registrar.eu 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 6, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 26, 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@haynesboones.com. Also on March 6, 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 March 27, 2024 pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Dawn Osborne 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

The Complainant's contentions can be summarised as follows:

 

The Complainant is the owner of the trade mark HAYNESBOONE, registered, inter alia, in the USA for legal services with first use recorded as 1970. It owns and uses the domain name <haynesboone.com>.

 

The Domain Name registered in 2024 is confusingly similar to the Complainant's mark, adding only an extra letter 's' and the gTLD .com which is not enough to distinguish the Domain Name from the Complainant's mark.

 

Respondent is not commonly known by the Domain Name and has not been authorised by the Complainant to use the Complainant's mark. The Domain Name does not point to an active web site, but has been used for a fraudulent e mail scheme using the Complainant's logo and the name of one of the Complainant's partners which is not a bona fide offering of goods or services or a non commercial legitimate and fair use. Typosquatting also demonstrates a lack of rights or legitimate interests.

 

Respondent has used a confusingly similar domain name in opportunistic bad faith for a fraudulent e mail scheme, causing disruption to the Complainant's business. Typosquatting and phishing are bad faith per se. The Respondent has also provided false contact details for the WhoIS database which is also an indication of bad faith. 

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The Complainant is the owner of the trade mark HAYNESBOONE, registered, inter alia, in the USA for legal services with first use recorded as 1970.

 

The Domain Name registered in 2024 does not point to an active web site, but has been used for a fraudulent e mail scheme using the Complainant's logo and the name of one of the Complainant's partners. The Respondent has provided false contact details to the WhoIS database.

 

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

The Domain Name consists of the Complainant's HAYNESBOONE mark (registered, inter alia in the USA for legal services with first use recorded as 1970), the letter 's' and the gTLD.com.

 

Panels have found that adding one letter to a registered mark does not distinguish a domain name from that mark. See Twitch Interactive, Inc. v Antonio Teggi, FA 1626528 (Forum Aug 3, 2015)(finding that twitcch.tv is confusingly similar to the TWITCH TV trade mark because the domain name consisted of a common misspelling of the mark by merely adding the letter 'c'). Accordingly adding an extra 's' does not prevent confusing similarity between the Complainant's mark and the Domain Name.

 

The gTLD .com does not serve to distinguish the Domain Name from the Complainant's mark, which is the distinctive component of the Domain Name. See Red Hat Inc v Haecke FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).

 

Accordingly, the Panel holds that the Domain Name is confusingly similar for the purpose of the Policy to a mark in which the Complainant has rights.

 

Rights or Legitimate Interests

The Complainant has not authorised the use of its mark. There is no evidence or reason to suggest the Respondent is, in fact, commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).The use of the Domain Name is commercial and so cannot be legitimate non commercial fair use.

 

The Domain Name has been used in a fraudulent phishing scheme using the name of one of the Complainant's partners and the Complainant's logo. This is deceptive and confusing. As such it cannot amount to the bona fide offering of goods and services or a legitimate non commercial or fair use. (See DaVita Inc. v Cynthia Rochelo FA 1738034 (Forum July 20, 2017) finding that 'Passing off in furtherance of a fraudulent scheme is not considered a bona fide offering of goods or services or legitimate non commercial or fair use'.)

 

The Domain Name is also intended to be a typosquatting registration differing by one letter from the Complainant's mark and domain name. Typosquatting is also an indication of a lack of rights or a legitimate interest. See Macy's Inc. and its subsidiary Macy's West Stores, Inc. v. chen wenjie c/o Dynadot Privacy, FA1404001552918 (Forum May 21, 2014) ("Respondent's disputed domain names are typosquatted versions of Complainant's registered mark. Typosquatting shows a lack of rights or legitimate interests.").

 

As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.

 

Registration and Use in Bad Faith

Impersonating a complainant by use of a complainant's mark in a fraudulent phishing scheme is disruptive and evinces bad faith registration and use. See Microsoft Corporation v Terrence Green/ Whois Agent/Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr 4 2016)(finding that respondent's use of the disputed domain name to send fraudulent e mails constituted bad faith registration and use pursuant to Policy 4 (b)(iii).)

 

Typosquatting is an indication of bad faith per se. See Cost Plus Management Services, Inc. v. xushuaiwei, FA 1800036 (Forum Sep. 7, 2018) ("Typosquatting itself is evidence of relevant bad faith registration and use.").

 

The Respondent has provided false contact details for the WhoIS database. Providing false information at the time of a domain name's registration may be evidence of respondent's bad faith registration and use under Policy 4(a)(iii). See Farouk Systems, Inc. v. Jack King / SLB, FA1505001618704 (Forum June 19, 2015) (finding bad faith registration and use pursuant to Policy ¶ 4(a)(iii) where the respondent had provided false contact information when registering the disputed domain name). Here in the context of phishing providing false address details seems clearly in bad faith.

 

As such, the Panelist believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under para 4(b)(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 <haynesboones.com> Domain Name be TRANSFERRED from Respondent to Complainant.

 

 

 

Dawn Osborne, Panelist

Dated: March 28, 2024