DECISION

 

Guidehouse LLP v. Isaac Ngumi

Claim Number: FA2505002155164

 

PARTIES

Complainant is Guidehouse LLP ("Complainant"), represented by Bruce A. McDonald of SMITH, GAMBRELL & RUSSELL, LLP, District of Columbia, USA. Respondent is Isaac Ngumi ("Respondent"), Kenya.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <guidehouseinc.com>, registered with Spaceship, 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.

 

Charles A. Kuechenmeister, Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on May 12, 2025; Forum received payment on May 12, 2025.

 

On May 13, 2025, Spaceship, Inc. confirmed by e-mail to Forum that the <guidehouseinc.com> domain name is registered with Spaceship, Inc. and that Respondent is the current registrant of the name. Spaceship, Inc. has verified that Respondent is bound by the Spaceship, 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 May 16, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of June 5, 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@guidehouseinc.com. Also on May 16, 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 June 6, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Charles A. Kuechenmeister 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 a Response or any other submittal from Respondent.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

Complainant provides consulting services to the public sector and commercial markets. It has rights in the GUIDEHOUSE mark based upon its registration of that mark with the USPTO. Its rights in the mark are strong and have been enforced against other UDRP panels.

 

Respondent has no rights or legitimate interests in the domain name. Respondent is not commonly known by the domain name, it registered the domain name long after Complainant acquired rights in its mark, and it is not using the domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use because the domain name resolves to an inactive parking page.

 

Respondent registered and is using the domain name in bad faith. It is making no active use of the domain name, and it had actual knowledge of Complainant and its mark when it registered the domain name.

 

B. Respondent

Respondent did not submit a Response in this proceeding.

 

FINDINGS

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 a complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:

 

(1)       the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(2)       the 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, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations 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 as true unless the evidence is clearly contradictory. Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent's failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true). Nevertheless, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. 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"), WIPO Overview 3.0, at ¶ 4.3 ("In cases involving wholly unsupported and conclusory allegations advanced by the complainant, . . . panels may find that—despite a respondent's default—a complainant has failed to prove its case.").   The WIPO Overview is not a definitive statement of applicable law which governs any particular issue, but it does express a consensus among a significant number of UDRP panelists as to how particular issues typically are and should be resolved. This Panel accepts that consensus on this and other issues addressed later in this Decision.

 

The Panel finds as follows with respect to the matters at issue in this proceeding.

 

Identical or Confusingly Similar

The GUIDEHOUSE mark was registered to Complainant with the USPTO (Reg. No. 5,723,735) on April 9, 2019 (TSDR printout included in Complaint Attachment 3).  Complainant's registration of its mark with the USPTO establishes its rights in that mark for the purposes of Policy ¶ 4(a)(i).  DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) ("Complainant's ownership of a USPTO registration for DIRECTV demonstrates its rights in such mark for the purposes of Policy ¶ 4(a)(i).").

 

Respondent's <guidehouseinc.com> domain name is identical or confusingly similar to Complainant's mark. It fully incorporates the mark, merely adding the "inc" abbreviation for "incorporated" and a generic top-level domain (gTLD). These changes do not distinguish the domain name from Complainant's mark for the purposes of Policy ¶ 4(a)(i).  MTD Products Inc v J Randall Shank, FA 1783050 (Forum June 27, 2018) ("The disputed domain name is confusingly similar to Complainant's mark as it wholly incorporates the CUB CADET mark before appending the generic terms 'genuine' and 'parts' as well as the '.com' gTLD.").  The WIPO Overview 3.0, at ¶ 1.7, states that the test for confusing similarity "typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name."  Notwithstanding the changes described above, Complainant's mark is clearly recognizable within the domain name.

 

For the reasons set forth above, the Panel finds that the domain name is identical or confusingly similar to Complainant's GUIDEHOUSE mark, in which Complainant has substantial and demonstrated rights. 

 

Rights or Legitimate Interests

If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. 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."). If a respondent fails to come forward with such evidence, the complainant's prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0, at ¶ 2.1.

 

Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate a respondent's rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):

 

(i)                      Before any notice to the respondent of the dispute, the respondent's 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;

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

(iii)                      The respondent is 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 asserts that Respondent has no rights or legitimate interests in the domain name because (i) Respondent is not commonly known by the domain name, (ii) it registered the domain name long after Complainant acquired rights in its mark, and (iii) it is not using the domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use because the domain name resolves to an inactive parking page.  These allegations are addressed as follows:

 

The information furnished to Forum by the registrar lists the named Respondent as the registrant of the domain name. This name bears no resemblance to the domain name. Evidence could, of course, in a given case demonstrate that the respondent is commonly known by a domain name different from the name in which it registered the domain name, e.g., the case of a domain name incorporating the brand name of a specific product offered by and associated with the respondent. In the absence of any such evidence, however, and in cases where no response has been filed, UDRP panels have consistently held that WHOIS evidence of a registrant name which does not correspond with the domain name is sufficient to prove that the respondent is not commonly known by the domain name. Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent's use of the same); Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA 1574905 (Forum Sept. 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 Panel is satisfied that the Respondent has not been commonly known by the domain name.

 

Complainant alleges that Respondent has no rights or legitimate interests in the domain name in part because it registered the domain long after Complainant acquired its rights in the mark. This is relevant in connection with the bad faith analysis, but Policy ¶ 4(c) provides that a respondent can demonstrate rights or legitimate interests in a domain name if it proves that any one of the three sets of circumstances listed in subparagraphs (i) through (iii) of ¶ 4(c) is present. Complainant's prior acquisition of its mark is not relevant to any of these three circumstances. Complainant must still make out a prima facie case as to all three subparagraphs.

 

The Complaint includes an image of the parking page to which the domain name points. It states that the page resolving from the domain name can't be reached. There is no evidence that Respondent has used or is making any demonstrable preparations to use the domain name. Respondent is passively holding it.  Passively holding a domain name is neither a bona fide offering of goods or services as contemplated by Policy ¶ 4(c)(ii) nor a legitimate noncommercial or fair use as contemplated by Policy ¶ 4(c)(iv). Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) ("both Domain Names resolve to a web site that shows the words, 'Not Found, The requested URL / was not found on this server.' ' 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).").

 

The evidence furnished by Complainant establishes the required prima facie case. On that evidence, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the domain name.

 

Registration or Use in Bad Faith

Policy ¶ 4(a)(iii) requires Complainant to prove that the domain name has been registered and is being used in bad faith. Policy ¶ 4(b) sets forth a nonexclusive list of four circumstances, any one of which if proven would be evidence of bad faith use and registration of a domain name. They are as follows:

 

(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 which 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 the 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, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent'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 the respondent's web site or location or of a product of service on the respondent 's web site or location.

 

The Policy does not say this in so many words, but the concept of bad faith as illustrated in the above four subparagraphs necessarily involves a subjective intent on the part of a respondent knowingly to trade upon the goodwill of the complainant. The respondent must intentionally have targeted the complainant's mark. Such subjective intent would in turn require that the respondent actually knew of the complainant and its rights in the relevant mark when it registered the domain name. Renu Medispa, LLC v Angela Sattler/Aesthetics, FA 2143814 (Forum Apr. 28, 2025) ("A foundational question under ¶ 4(a)(iii) is whether or not Respondent had knowledge of Complainant or its claimed trademark at the time it registered the disputed domain name.").

 

In attempting to discern actual knowledge and a subjective bad faith intent, panels have looked at many different types of evidence, including but not limited to use of a domain name in direct competition with a trademark owner, impersonation, the parties operating in the same market segment, the parties being physically located in the same general geographic area, a pattern of bad faith conduct, actual prior association between or among the parties, and the distinctive or famous nature of the trademark, suggesting that any similarity is not happenstance. Importantly, allegations about a respondent's subjective intention are not evidence in this regard.

 

In cases such as this, where no Response has been filed and the domain name is not being used, it can be difficult to determine whether a respondent registered a domain name with actual knowledge of the complainant and its rights in the mark. In this case, the relevant facts are as follows:

 

There is no direct evidence when the domain name was registered, but it appears that that occurred in April or early May of 2025. The information furnished to Forum states that the registration expires on April 11, 2026, which suggests a registration date of April 11 this year, and Complainant states that its reporting service alerted it to the domain name's existence on or about May 9, 2025. Complainant did not furnish extensive information about the degree of notoriety the GUIDEHOUSE mark has among the consuming public generally but the results of a Google search Complainant submitted as Complaint Attachment 5 does state that Bain Capital acquired Complainant for some $5 billion in November 2023, that Complainant is "a leading global provider of consulting services to the public and commercial markets with broad capabilities in management technology . . . ," and that it had revenues of some $3 billion. All of this strongly suggests that Complainant's GUIDEHOUSE mark was well-known generally when the domain name was registered. Further, the GUIDEHOUSE mark is unique, a coined term that has no meaning apart from its role as a brand name for Complainant. The body of evidence demonstrates that it is it more likely than not that Respondent was aware of it and had actual knowledge of it when it registered the domain name.  Respondent intended to target this Complainant and its mark.

 

As discussed in the rights and legitimate interests analysis, Respondent is passively holding the domain name. This does not fit within any of the circumstances set forth in Policy ¶ 4(b) but that paragraph recognizes that mischief can manifest in many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (Jan. 5, 2005). The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and passively holding a confusingly similar domain name can be evidence of bad faith registration for the purposes of Policy ¶ 4(a)(iii), Caravan Club v. Mrgsale, FA 95314 (Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that [failure to make an active use] of a domain name permits an inference of registration and use in bad faith).

 

The mere fact of passive holding does not automatically result in a finding of bad faith. Respondent's intent to trade off of the goodwill of the Complainant in doing so must also be proven, and it has been. Bad faith registration of this domain name has been established. Since the Policy requires a complainant to prove both registration and a continuing use in bad faith, the question next arises whether Respondent's passive holding of the domain names constitutes a continuing use in bad faith. The Policy requirement, "is being used in bad faith," can include passive use.  Telstra Corporation v. Nuclear Marshmallows, WIPO Case No. 2000-0003 ("... the concept of a domain name 'being used in bad faith' is not limited to positive action; inaction is within the concept"). In this case, there is no evidence that Respondent is holding or using the domain name under any of the specific circumstances listed in Policy ¶ 4(b), so the question arises whether the facts present in this case support a finding of continuing bad faith use on some other basis.

 

The Panel has already found that Respondent had actual knowledge of Complainant and its rights in the GUIDEHOUSE mark when it registered the domain name, and that knowledge certainly continues. Also, Respondent is holding the domain name which is confusingly similar to Complainant's mark, without itself having any legitimate connection with Complainant or its services, which in and of itself has been held to be evidence of bad faith.  Google LLC v. Noboru Maruyama / Personal, FA 1879162 (Forum Mar. 3, 2020) ("the registration and use of domain name that is confusingly similar to a trademark with which the respondent has no connection has frequently been held to be evidence of bad faith").  Finally, it is not possible to conceive of a plausible legitimate use of the domain name that would not infringe on Complainant's rights. Respondent's continuing passive holding of the domain name is in bad faith.

 

For the reasons set forth above, the Panel finds that Respondent registered and is using the domain name in bad faith within the meaning of Policy ¶ 4(a)(iii).

 

DECISION

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

 

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

 

 

 

Charles A. Kuechenmeister, Panelist

Dated: June 9, 2025