DECISION

 

Barnes & Thornburg LLP v. Michael Stuart

Claim Number: FA2608002238384

 

PARTIES

Complainant is Barnes & Thornburg LLP ("Complainant"), represented by Tate S. Coulter of Barnes & Thornburg LLP, Indiana, USA. Respondent is Michael Stuart ("Respondent"), New York, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <btlaw-us.com> (the "Disputed Domain Name"), registered with Dynadot 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.

 

David L. Kreider, Chartered Arbitrator (UK), as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum on August 10, 2026; Forum received payment on August 10, 2026.

 

On August 12, 2026, Dynadot Inc. confirmed by e-mail to Forum that the <btlaw-us.com> domain name is registered with Dynadot Inc. and that Respondent is the current registrant of the name. Dynadot Inc. has verified that Respondent is bound by the Dynadot 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").

 

Complainant submitted an Amended Complaint on August 13, 2026, following the Registrar's disclosure of the underlying registrant information.

 

On August 14, 2026, Forum served the Amended Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 3, 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@btlaw-us.com. Also on August 14, 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 September 4, 2026, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed David L. Kreider 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 alleges:

 

That it is a nationally recognized full-service law firm which has provided legal services under the BARNES & THORNBURG mark, the BTLaw mark and related BTLaw-formative marks (together, as Complainant calls them, the BTLaw Marks) since at least 1982, and has used its domain name <btlaw.com> to promote its services since 1995; that it owns United States registrations for BARNES & THORNBURG, BT HUB, BTSTRATEGIES and BT VALUEWORKS; and that it holds strong common-law rights in the BTLaw Marks.

 

That the Disputed Domain Name <btlaw-us.com> is identical or confusingly similar to the BTLaw Marks, which it wholly contains, adding only a hyphen, the two-letter abbreviation "US" for the United States, the country in which Complainant is located, and the ".com" gTLD.

 

That Respondent has no rights or legitimate interests in the Disputed Domain Name. Respondent has used it to create e-mail accounts in the names of Complainant's current employees and, displaying Complainant's marks, has asked Complainant's clients to wire payments for Complainant's services to Respondent's accounts, a fraudulent use that confers no rights or legitimate interests. Respondent is not commonly known by the Disputed Domain Name and registered it behind a privacy service, and the Disputed Domain Name resolves to a webpage with no content.

 

That Respondent registered and is using the Disputed Domain Name in bad faith. Respondent registered it with actual or constructive knowledge of Complainant's rights and has used it to impersonate Complainant's employees in order to defraud Complainant's clients for financial gain, conduct within Policy ¶ 4(b)(iv); and Respondent's use of a privacy service to do so is further evidence of bad faith.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The Panel finds the following:

 

Complainant is a law firm with its principal office at 11 South Meridian Street, Indianapolis, Indiana. Pages from its website in the record describe more than 900 lawyers in 26 offices and place it among the 100 largest law firms in the United States. United States Patent and Trademark Office records in the case file show that Complainant owns U.S. Reg. No. 2,514,161 for BARNES & THORNBURG, registered December 4, 2001; U.S. Reg. No. 5,492,970 for BT VALUEWORKS and design, registered June 12, 2018, for legal services; U.S. Reg. No. 7,287,570 for BT HUB, registered January 23, 2024; and U.S. Reg. No. 8,253,962 for BTSTRATEGIES, registered May 12, 2026, for legal and business consulting services (together, the "Registered Marks").

 

The record discloses no registration for BTLAW as such. The WHOIS record in the case file shows that Complainant's domain name <btlaw.com> was created on July 21, 1995 and is registered to Complainant; the printouts in the record show Complainant's website there, and the correspondence in the record shows its partners writing from addresses formed on it. "BT" is the abbreviation of Complainant's name, used as such in the BT-formative Registered Marks and in the "BT Foundation" and "BT Strategies" references on Complainant's website. On this record, "btlaw" has for three decades been the address of Complainant's website and is the domain from which its lawyers correspond, and the Panel finds that BTLAW has become a distinctive identifier of Complainant and its legal services (the "BTLAW Mark").

 

The WHOIS record in the case file shows that the Disputed Domain Name was created on July 24, 2026 and listed a privacy service, Super Privacy Service LTD c/o Dynadot, as registrant. The Registrar's verification of August 12, 2026 confirms that the Disputed Domain Name is registered with Dynadot Inc., that the underlying registrant is "Michael Stuart" of New Hyde Park, New York, and that the Registration Agreement is in English. Nothing in the record indicates that Respondent has been commonly known by the Disputed Domain Name, and on the uncontested record Complainant has never authorized Respondent to use its marks.

 

The e-mail chain in the record shows the use to which the Disputed Domain Name has been put. On July 24, 2026, the day the Disputed Domain Name was created, a message was sent from courtney.wiegand@btlaw-us.com, copied to two further addresses at the Disputed Domain Name, to the accounting staff of a client of Complainant under the subject line "Barnes & Thornburg Invoices". Signed in the name of Complainant's accounts receivable administrator, with Complainant's Indianapolis street address and list of offices in the signature block, it pressed for payment of an "overdue invoice" and attached what it called "our new DBA banking details for ACH and wire payments". Earlier messages in the chain, over the same addresses, list Complainant's invoices to the client. The client replied that it had paid some of the invoices over the preceding two weeks, then wrote separately to a partner of Complainant asking whether the senders worked for the firm, since they were "wanting us to change banking information" and their address "doesn't look like yours". The partner answered that the named individuals do work for the firm, that he had never seen the "btlaw-us.com" address, and that no money should be sent while he looked into it.

 

Three of the earlier messages bear dates of July 7, 15 and 17, 2026, before the creation date the WHOIS record shows for the Disputed Domain Name. The record does not explain that discrepancy and the Panel does not resolve it; the findings that follow rest on the message of July 24, 2026, the replies to it, and the addresses at the Disputed Domain Name shown in use that day.

 

The Panel finds that this is phishing: the use of a confusingly similar domain name to send communications purporting to come from Complainant's own staff in order to divert money owed to Complainant. Because the communications were directed at an identified client of Complainant, in the names of Complainant's actual employees and by reference to invoices the client recognized as its own, the Panel identifies the conduct as spearphishing, the targeted form of the practice also known as Business E-mail Compromise. Complainant also asserts that the messages displayed its design trademark; the reproduction in the record shows Complainant's name, address and office list but no logo, and the Panel makes no finding on that point.

 

On the uncontested record, the Disputed Domain Name resolves to a webpage with no content.

 

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 Overview 3.1 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

Complainant has established rights in the Registered Marks through its United States registrations, registration with a national trademark authority being sufficient for purposes of Policy ¶ 4(a)(i). See WIPO Overview 3.1 at ¶ 1.2.1. None of the Registered Marks, however, is the string the Disputed Domain Name reproduces; the comparison that matters is with BTLAW, for which Complainant relies on unregistered rights. The Policy requires no registration: unregistered rights suffice where the mark has become a distinctive identifier that consumers associate with the complainant or its services, and a respondent's targeting of the mark may itself support that showing. See WIPO Overview 3.1 at ¶ 1.3; Goepfert v. Rogers, FA 861124 (Forum Jan. 17, 2007) (no particular amount of evidence is required to establish common law rights). A prior Forum panel has treated BTLAW and <btlaw.com> as a mark and domain name in which Complainant has rights, in a proceeding concerning a typosquatted domain name used, as here, to send fraudulent e-mail to third parties. See Barnes & Thornburg LLP v. josh stone, FA 2119116 (Forum Oct. 29, 2024). On the findings above, and in light of Respondent's own selection of the string to deceive a client of Complainant, the Panel finds that Complainant has common-law rights in the BTLAW Mark.

 

The Disputed Domain Name <btlaw-us.com> reproduces the BTLAW Mark in its entirety, adding a hyphen, the letters "us" and the ".com" gTLD. The mark remains recognizable within the Disputed Domain Name, and the added letters, the abbreviation of the country in which Complainant practices, do not distinguish it; if anything they suggest a United States arm of the firm. See Steelcase Inc. v. Barbara Blue, FA 2172115 (Forum Sept. 10, 2025) ("us", a common abbreviation for the United States, insufficient to distinguish <steelcaseus.com> from STEELCASE); Global Name Services LLP v. Co Hoang / AI Cornerstones, FA 2230274 (Forum Aug. 5, 2026) (<dlapiper-us.com> confusingly similar to DLA PIPER). The hyphen is punctuation without distinguishing significance, and the ".com" gTLD is a technical requirement of registration and is disregarded. See WIPO Overview 3.1 at ¶ 1.11.1. The Disputed Domain Name is not identical to any mark of Complainant, as the Complaint at one point asserts; it is confusingly similar.

 

The Panel finds that the Disputed Domain Name is confusingly similar to a mark in which Complainant has rights under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the Disputed Domain Name, at which point the burden shifts to Respondent to show that it does have rights or legitimate interests. See WIPO Overview 3.1 at ¶ 2.1.

 

The WHOIS record listed only a privacy service, and the Registrar's verification identifies the underlying registrant as "Michael Stuart", a name bearing no resemblance to "btlaw-us". There is no evidence that Respondent has been commonly known by the Disputed Domain Name under Policy ¶ 4(c)(ii), and Complainant has not licensed or otherwise authorized Respondent to use its marks. See Home Depot Product Authority, LLC v. Edouard Ambrosio, FA 2162707 (Forum July 24, 2025). Respondent's use of a privacy service, which Complainant urges as evidence under this element, is considered under the third element.

 

Respondent's only established use of the Disputed Domain Name is as the sending domain for e-mail impersonating Complainant's accounts receivable staff in an attempt to divert a client's payments. That is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Hunton Andrews Kurth LLP v. Rosero org, FA 2152297 (Forum May 21, 2025).

 

Complainant has made its prima facie showing, which Respondent has not rebutted. The Panel finds that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name under Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

Respondent registered the Disputed Domain Name on July 24, 2026 and used it the same day to impersonate Complainant's staff in the manner found above, under Complainant's name, address and list of offices. Copying of that kind is not explicable except by reference to Complainant; it establishes that Respondent registered the Disputed Domain Name with actual knowledge of Complainant and of the BTLAW Mark, and in order to exploit them. See Farallon Capital Management, L.L.C. v. Farallon Capital Asia (Hong Kong) International, FA 1579916 (Forum Oct. 21, 2014). Complainant pleads constructive as well as actual knowledge; the Panel rests its finding on actual knowledge and need not consider the constructive-notice argument.

 

The spearphishing found above is bad faith registration and use: the sending of deceptive e-mail in the guise of the trademark owner to obtain money from its recipients, here aimed at an identified client by reference to invoices it owed Complainant. See WIPO Overview 3.1 at ¶ 3.4; Young Innovations, Inc. v. [unknown holder], FA 2067016 (Forum Nov. 15, 2023) (impersonation of the complainant and a named employee in furtherance of a phishing scheme is bad faith registration and use). The circumstances enumerated in Policy ¶ 4(b) are illustrative, not exhaustive, and the Panel finds bad faith on this ground under Policy ¶ 4(a)(iii) directly. The conduct also falls within the substance of Policy ¶ 4(b)(iv), on which Complainant relies: Respondent used a confusingly similar domain name to pass its e-mail off as Complainant's for commercial gain, the diversion of Complainant's receivables, and its choice of an e-mail address rather than a website as the vehicle does not take it outside that provision.

 

Respondent's registration behind a privacy service lends some further support to that finding in the context of the fraud found, though the Panel would reach the same conclusion without it. See Microsoft Corporation v. Arif Khan, FA 1907105 (Forum Aug. 31, 2020) (use of a WHOIS privacy service further supported a finding of bad faith in the context of that case).

 

The Panel finds that Respondent registered and is using the Disputed Domain Name in bad faith under Policy ¶ 4(a)(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 <btlaw-us.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

David L. Kreider, Panelist

Dated: September 4, 2026