DECISION

 

McDonald Hopkins LLC v. Lindes fgh

Claim Number: FA2409002116496

PARTIES

Complainant is McDonald Hopkins LLC ("Complainant"), represented by Matthew J. Cavanagh of McDonald Hopkins LLC, Ohio, USA. Respondent is Lindes fgh ("Respondent"), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <mcdonaldhopkiins.com>, registered with NameSilo, LLC.

 

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.

 

Paul M. DeCicco, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on September 20, 2024; Forum received payment on September 20, 2024.

 

On September 20, 2024, NameSilo, LLC confirmed by e-mail to Forum that the <mcdonaldhopkiins.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 September 23, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 15, 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@mcdonaldhopkiins.com. Also on September 23, 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 October 16, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco, 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

Complainant contends in part as follows:

 

Complainant McDonald Hopkins LLC has used the distinctive MCDONALD HOPKINS mark for legal services for more than 22 years. Complainant's services are popular and well known in the relevant market.

 

Complainant's has a USPTO registered trademark for the MCDONALD HOPKINS.

 

Respondent's at-issue domain name is confusingly similar to a trademark in which Complainant has rights because the domain name contains a misspelled version of Complainant's MCDONALD HOPKINS mark and its top-level is irrelevant in confusingly similar analysis.

 

Respondent lacks rights and legitimate interests in respect of the at-issue domain name. Respondent has no trademark rights in the domain name and Respondent is not using the domain name in connection with any business or bona fide offering of goods or services. Complainant's has not authorized Respondent to use the MCDONALD HOPKINS mark or the <mcdonaldhopkiins.com> domain name. Respondent is not known by the <mcdonaldhopkiins.com> domain name. Respondent's at-issue domain name hosts no content and returns the message "The content of the page cannot be displayed."  Respondent is typosquatting.

 

Respondent registered and used the at-issue domain name in bad faith. Respondent's typosquatting shows bad faith registration of the at-issue domain name. Respondent's typosquatting also proves that Respondent knew of the MCDONALD HOPKINS mark. Respondent's inactive holding of <mcdonaldhopkiins.com> is further evidence of bad faith and there is no conceivable reason for Respondent's to register <mcdonaldhopkiins.com> that does not infringe upon Complainant's MCDONALD HOPKINS mark. The domain name is configured for email exchange and thus Respondent's intent must be use the domain name to send spoofing emails. Respondent's use of a proxy service to hide its identity when considered in light of the other facts, further proves bad faith registration and use.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant has trademark rights in the MCDONALD HOPKINS mark.

 

Respondent has not been authorized to use Complainant's trademarks.

 

Respondent registered the at-issue domain name after Complainant acquired rights in MCDONALD HOPKINS.

 

Respondent holds <mcdonaldhopkiins.com> passively.

 

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 at-issue domain is confusingly similar to a trademark in which Complainant has rights.

 

Complainant's USPTO registration for MCDONALD HOPKINS establishes Complainant's rights in such mark for the purposes of Policy 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant's USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)).

 

The at-issue domain name consists of a recognizable misspelled version Complainant's MCDONALD HOPKINS trademark where the domain name impermissible space is removed and an extra letter "i" is inserted, with all followed by the ".com" top level domain name. The differences between Respondent's domain name and Complainant's trademark are insufficient to distinguish Respondent's <mcdonaldhopkiins.com> domain name from Complainant's trademark under Policy ¶ 4(a)(i). Therefore, the Panel finds that Respondent's <mcdonaldhopkiins.com> domain name is confusingly similar to Complainant's MCDONALD HOPKINS trademark. See Acme Lift Company, L.L.C. v. VistaPrint Technologies Ltd, FA 1607039 (Forum Apr. 11, 2015) (stating: "Where a respondent has created a domain name in an effort to visually deceive Internet users via a simple misspelling (and when such misspellings are visually similar to the mark), a finding of confusing similarity under Policy ¶ 4(a)(i) is appropriate."); see also, Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) ("Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.") 

 

Rights or Legitimate Interests

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. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant's prima facie showing acts conclusively.

 

Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant's trademarks in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or legitimate interests in respect of the at-issue domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) ("lack of evidence in the record to indicate a respondent is authorized to use [the] complainant's mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)").

 

The WHOIS information for the at-issue domain name ultimately reveals the domain name's registrant as "Lindes fgh" and the record before the Panel contains no evidence tending to prove that Respondent is commonly known by <mcdonaldhopkiins.com>. The Panel therefore concludes that Respondent is not commonly known by the <mcdonaldhopkiins.com> domain name for the purposes of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).

 

Respondent's domain name is currently inactive as browsing to the domain name returns an error message stating that: "The content of the page cannot be displayed.". Respondent's failure to actively use <mcdonaldhopkiins.com> is neither indicative of a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor of a non-commercial or fair use under Policy ¶ 4(c)(iii). See CrossFirst Bankshares, Inc. v Yu-Hsien Huang, FA 1785415 (Forum June 6, 2018) ("Complainant demonstrates that Respondent fails to actively use the disputed domain name as it resolves to an inactive website. Therefore, the Panel finds that Respondent fails to actively 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).")

 

Given the forgoing, Respondents lacks rights and lacks of legitimate interests in respect of <mcdonaldhopkiins.com>.

 

Registration and Use in Bad Faith

As discussed below without being exhaustive, bad faith circumstances are present which lead the Panel to conclude that Respondent acted in bad faith pursuant to the Policy regarding the at-issue domain name.

 

First, Respondent engages in typosquatting. Respondent's domain contains a recognizable intentional misspelling of Complainant's trademark that merely adds an additional letter "i" to the mark. Typosquatting, in itself, indicates bad faith registration and use of Respondent's at-issue domain name. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).

 

Next, Respondent holds the at-issue domain name passively. As mentioned above, browsing to the domain name returns an error message and no substantive content is displayed. Respondent's failure to actively use <mcdonaldhopkiins.com> indicates Respondent's bad faith registration and use of such domain name 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)."). Passive holding of a domain name has been viewed as a disruption to a complainant's business under Policy ¶ 4(b)(iii). See Love City Brewing Company v. Anker Fog / Love City Brewing Company, FA 1753144 (Forum Nov. 27, 2017) (Finding that Respondent disrupts Complainant's business by pointing internet users to an expired webpage. This may create the perception that Complainant is closed, never existed, or is not a legitimate business. Therefore, the Panel finds that Respondent registered and uses the disputed domain names in bad faith per Policy ¶ 4(b)(iii).).

 

Moreover, Respondent had actual knowledge of Complainant's rights in the MCDONALD HOPKINS mark when it registered <mcdonaldhopkiins.com> as a domain name. Respondent's prior knowledge of Complainant's MCDONALD HOPKINS trademark is evident from the mark's notoriety and from Respondent's overt typosquatting of said mark in forming the at-issue domain name. Respondent's registration and use of <mcdonaldhopkiins.com> with knowledge of Complainant's rights in MCDONALD HOPKINS further shows Respondent's bad faith registration and use pursuant to the Policy. See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).

 

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 <mcdonaldhopkiins.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Paul M. DeCicco, Panelist

Dated: October 17, 2024