DECISION

 

Guidehouse LLP v. Stacy Paul / guidehouseusa

Claim Number: FA2501002133304

 

PARTIES

Complainant is Guidehouse LLP ("Complainant"), represented by Bruce A. McDonald of SMITH, GAMBRELL & RUSSELL, LLP, District of Columbia, USA. Respondent is Stacy Paul / guidehouseusa ("Respondent"), India.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <guidehouseusa.com>, registered with Tucows Domains Inc.

 

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.

 

Debrett G. Lyons as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on January 3, 2025; Forum received payment on January 3, 2025.

 

On January 6, 2025, Tucows Domains Inc. confirmed by e-mail to Forum that the <guidehouseusa.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. 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 7, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 27, 2025 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@guidehouseusa.com. Also on January 7, 2025, 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 January 28, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Debrett G. Lyons 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 asserts trademark rights in GUIDEHOUSE. Complainant holds a national registration for that trademark.  Complainant submits that the domain name is confusingly similar to its trademark.

 

Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name because it has no trademark rights; is not known by the same name; and the domain name has not been used.

 

Complainant alleges that Respondent registered the disputed domain name in bad faith having targeted Complainant's business and trademark.  Complainant further alleges that Respondent could not make any possible bona fide use of the disputed domain name without having Complainant's authority.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The factual findings pertinent to the decision in this case are that:

1.       Complainant provides consultancy services by reference to the trademark, GUIDEHOUSE;

2.       the trademark GUIDEHOUSE is registered with United States Patent & Trademark Office ("USPTO") as Reg. No. 5723735, registered April 9, 2019; and

3.       the disputed domain name was registered on November 7, 2024, and appears to resolve to an unknown online location blocked by computer security software.

 

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.

 

Identical and/or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires a two-fold enquiry - a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.

 

It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights. See, for example, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003).  The Panel finds that Complainant has rights in GUIDEHOUSE since it is registered as the owner of that trademark with the USPTO, a national trademark authority.

 

For the purposes of comparison of the disputed domain name with the trademark the gTLD, ".com", can be disregarded. Thereafter, the domain name merely adds the country name abbreviation, "USA", to the trademark. The Panel finds the domain name to be confusingly similar to the trademark (see, for example, Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018) ("A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs."); Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) ("Where a relevant trademark is recognisable 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."); Franklin Covey Co. v. franklincoveykorea, FA 1774660 (Forum Apr. 11, 2018) finding <franklincoveykorea.com> confusingly similar to the FRANKLIN COVEY mark, as "[t]he addition of a geographic term and a gTLD do not negate confusing similarity between a domain name and a mark per Policy ¶ 4(a)(i)."); Research Now Group, Inc. v. Pan Jing, FA 1735345 (Forum July 14, 2017) ("The … elimination of spacing [is] considered irrelevant when distinguishing between a mark and a domain name.")).

 

The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

 

Rights or Legitimate Interests

Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:

 

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;  or

 

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights;  or

 

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

 

Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests for (see, example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000)).

 

The publicly available WhoIs information shielded the name of the actual owner of the domain name but in consequence of these proceedings the Registrar has identified "Stacy Paul" as the domain name registrant. The Panel finds no evidence that Respondent might be commonly known by the disputed domain name. Whilst the registrant organization is "guidehouseusa" the Panel gives the inclusion of the trademark in that name no weight since it appears simply a ruse to create a false impression of legitimacy.

 

There is no evidence that Respondent has any trademark rights. Further, Complainant states that there is no association between the parties. Furthermore, the disputed domain name resolves to what can be treated as an inactive page.

 

Without evidence of use or intention to use, the Panel finds that Respondent has not shown a right or interest in the domain name. See, for example, Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) ("Inactive holding of a domain name does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii)."); Kohler Co. v xi long chen, FA 1737910 (Forum Aug. 4, 2017) ("Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain.  Respondent's <kohler-corporation.com> resolves to an inactive webpage displaying the message "website coming soon!")).

 

A prima facie case has been made and so the onus shifts to Respondent. In the absence of a Response, the Panel finds that Respondent has not discharged the onus and finds that Respondent has no rights or interests.

 

Complainant has accordingly satisfied the second limb of the Policy.

 

Registration and Use in Bad Faith

Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and used in bad faith.

 

Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.

 

The four specified circumstances are:

 

"(i) circumstances indicating that the respondent 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 the respondent's documented out-of-pocket costs directly related to the domain name; or

 

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

 

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

 

(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent's website 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 the respondent's website or location or of a product or service on the site or location."

 

There is nothing to support application of any of the four paragraph 4(b) scenarios and so Complainant must prove registration in bad faith and use in bad faith. The Complaint does not make a compelling argument in respect of paragraph 4(a)(iii). In particular, it seemingly ignores the difficulty in terms of the Policy presented by the fact that currently there is no use of the domain name. Complainant states that:

 

"Complainant has no information, and cannot effectively obtain any information, about the Respondent, even if Complainant were not blocked by its security software from accessing Respondent's website, because Respondent's data is shielded by a privacy protection service. Whatever Respondent is doing, Respondent is doing it anonymously from a concealed location.

…

Respondent is basically unfindable by consumers who are defrauded by fictitious and anonymous persons using email addresses corresponding to domain names incorporating and imitating Complainant's name. Complainant does not know whether Respondent is engaged in that particular brand of consumer fraud, but Complainant during the past twelve months has been contacted by consumers who were defrauded by unidentified perpetrators posing as representatives of Complainant and using email addresses similarly incorporating and imitating Complainant's name."

 

Complainant's case rests on an apprehension of nefarious use of email using the disputed domain name. Under the Policy, apprehension of bad faith use is not enough. However, the Complaint might still succeed if the Panel finds registration in bad faith and so-called passive holding (use) in bad faith in line with the principles first laid out in Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) ("Telstra"). There is no developed argument of passive holding in bad faith and the Panel is left to assess that itself.

 

A prerequisite for success under the Telstra principles is proof that the trademark is well known, or at least sufficiently known that – taken with other factors – it is impossible to conceive of any good faith use of the domain name that does not hinge on Complainant's consent to use the trademark.

 

The Panel is entitled to accept Complainant's reasonable allegations and draw its own inferences regarding reputation. The Complaint states that:

 

"rights in the GUIDEHOUSE mark are strong based on continuous, extensive, and exclusive use since 2018. The name … has been used with all or substantially all of Complainant's goods and services with current annual revenues of around $3 billion."

 

The Complaint provides support for its claims that Complainant has an estimated valuation of approximately USD 7 billion and provides consulting services to the public sector and commercial markets, with expertise in management, technology, and risk assessment through its 16,500 personnel in 55 locations globally.  The Panel infers a relatively high level of public awareness of the trademark, itself an invented term with no common meaning. Absent explanation of its motive, what follows is the finding that it is more likely than not that Respondent registered the disputed domain name in bad faith. Further, the Panel finds passive holding and use in bad faith since it considers Telstra to be directly applicable.

 

Accordingly, the Panel finds that the third and final element of the Policy is satisfied.

 

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

 

 

 

Debrett G. Lyons, Panelist

Dated: January 29, 2025