DECISION

 

Taft Stettinius & Hollister LLP v. nicanor Sanderson / COll

Claim Number: FA2606002228261

 

PARTIES

Complainant is Taft Stettinius & Hollister LLP ("Complainant"), represented by Neil Peluchette of Taft Stettinius & Hollister LLP, Indiana, USA. Respondent is nicanor Sanderson / COll ("Respondent"), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <tafltlaw.com>, registered with NameCheap, 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 June 19, 2026; Forum received payment on June 19, 2026.

 

On June 23, 2026, NameCheap, Inc. confirmed by e-mail to Forum that the <tafltlaw.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 June 24, 2026, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 14, 2026 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@tafltlaw.com. Also on June 24, 2026, 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 July 15, 2026, 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 uses the trademarks TAFT and TAFT LAW in connection with the provision of legal services. It submits that the disputed domain name is confusingly similar to its trademarks.

 

Complainant submits that Respondent has no rights or legitimate interests in the domain name because it is not known by the domain name; has not been authorized to use the trademarks; and does it use the domain name for a bona fide offering of goods or services or legitimate non-commercial or fair use. The disputed domain name does not resolve to an active website but has been used to send emails as part of scheme to defraud Complainant or its clients.

 

Complainant asserts that Respondent registered the domain name in bad faith with actual knowledge of Complainant's rights and used it in bad faith for commercial gain.

 

B. Respondent

Respondent failed to submit a formal Response in this proceeding.

 

FINDINGS

1.       Complainant is the owner of United States Patent and Trademark Office ("USPTO") Reg. No. 3,526,513, for TAFT, registered on November 4, 2008, and Reg. No. 7,492,797, for TAFT LAW registered on September 3, 2024;

2.       Respondent registered the domain name on June 17, 2026; and

3.       the domain name does not link to an active website but has been used as part of an email address which poses as that of one of the partners of Complainant.

 

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 established rights in TAFT and TAFT LAW since it provides proof of its registration of those marks with the USPTO, a national trademark authority.

 

Complainant submits that the disputed domain name is confusing similar to its trademarks. The Panel agrees.  The WIPO Overview of WIPO Panel Views on Select UDRP Questions ("WIPO Overview 3.1") recognises at #1.9 that a domain name consisting of a common, obvious, or intentional misspelling of a complainant's trademark is usually considered to be confusingly similar to the trademark.

 

Once the gTLD, ".com", is subtracted from the domain name, the Panel finds that the element, tafltlaw, is confusingly similar to both TAFT and TAFT LAW (see, for example, Am. Int'l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Forum Dec. 31, 2007) holding that the gTLD can be disregarded; Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) holding that the absence of spaces must be disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax prohibits them; 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."); Acme Lift Company, L.L.C. v. VistaPrint Technologies Ltd, FA 1607039 (Forum Apr. 11, 2015) ("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.")).

 

The Panel accordingly 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 (see, for example, Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000‑0624).

 

There is no suggestion that Respondent might be commonly known by the disputed domain name. Respondent has no trademark rights and the Panel accepts Complainant's submission that Respondent has no permission to use the trademark. The evidence accompanying the Complaint supports the claim that the domain name has been used for an illegal purpose, attempting to defraud Complainant or its clients by use of an email address composed of the name of one of Complainant's partners plus a domain name confusingly similar to the trademarks. Clearly, there has been no bona fide offering of goods or services or fair use of the name, and the Panel finds that a prima facie case has been made (see, for example, DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) ("Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate non-commercial or fair use.")).

 

The onus shifts to Respondent and in the absence of a Response, Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.

 

Registration and Use in Bad Faith

Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy. The four scenarios 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.'

 

The Panel finds that Respondent's conduct in linking the domain name to a confusingly similar email address falls under paragraph 4(b)(iv). The manifest intention was commercial gain. In terms of the Policy, the Panel finds that Respondent had intentionally attempted to attract Internet users to its online location by creating a likelihood of confusion with Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of that location (see, for example, BBY Solutions, Inc. v. geeks squad, FA 1920588 (Forum Dec. 14, 2020) finding 4(b)(iv) of the Policy satisfied where respondent used the domain name to create a likelihood of confusion with the complainant's mark, either that of being the complainant or having an affiliation with the complainant).

 

Accordingly, the Panel finds that Complainant has established the third and final element of the Policy.

 

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

 

 

 

Debrett G. Lyons, Panelist

Dated: July 17, 2026