Baker Tilly Virchow Krause, LLP v. Francisc Rodriguez / Francisc
Claim Number: FA2004001891213
Complainant is Baker Tilly Virchow Krause, LLP (“Complainant”), represented by Kevin M. Bovard of Baker & Hostetler LLP, United States. Respondent is Francisc Rodriguez / Francisc (“Respondent”), United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bakretilly.com>, registered with Google LLC.
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.
Complainant submitted a Complaint to the Forum electronically on April 7, 2020; the Forum received payment on April 7, 2020.
On April 7, 2020, Google LLC confirmed by e-mail to the Forum that the <bakretilly.com> domain name is registered with Google LLC and that Respondent is the current registrant of the name. Google LLC has verified that Respondent is bound by the Google 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 April 9, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 29, 2020 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@bakretilly.com. Also on April 9, 2020, 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, the Forum transmitted to the parties a Notification of Respondent Default.
On May 4, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant, Baker Tilly Virchow Krause LLP, is an accounting and consulting firm that provides tax, public accounting, and assurance services.
Complainant has rights in the BAKER TILLY mark based upon registration with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <bakretilly.com> domain name is virtually identical to Complainant’s mark since it simply rearranges the letters “e” and “r” in Complainant’s BAKER TILLY mark and adds a generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <bakretilly.com> domain name because Respondent is not commonly known by the at-issue domain name and is not authorized to use Complainant’s BAKER TILLY mark. Additionally, Respondent fails to use the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent fails to make any active use the domain name for a website and uses the domain name to host email that impersonates Complainant in furtherance of a phishing scheme.
Respondent registered and uses the <bakretilly.com> domain name in bad faith because Respondent impersonates Complainant in an e-mail phishing scheme. Additionally, Respondent has actual knowledge of Complainant’s rights in the BAKER TILLY mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the BAKER TILLY mark.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in its BAKER TILLY trademark.
Respondent uses the at-issue domain name to host email pretending to originate from Complainant in furtherance of fraud.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted 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”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of a USPTO registration for BAKER TILLY is sufficient to demonstrate its rights in a mark for the purposes of Policy ¶ 4(a)(i). See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark).
Respondent’s <bakretilly.com> domain name contains a misspelling of Complainant’s BAKER TILLY trademark. In forming the domain name, Respondent transposes the “e” and “r” characters in Complainant’s mark, removes the mark’s domain name impermissible space, and appends the top-level domain name “.com” to the resulting string. Nevertheless, the differences between the at-issue domain name and Complainant’s trademark are insufficient to distinguish one from the other for the purposes of Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s <bakretilly.com> domain name is confusingly similar to Complainant’s BAKER TILLY trademark. See Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) (“The [<morganstonley.com> and <morganstainley.com>] Domain Names are confusingly similar to Complainant’s marks, as they fully incorporate the MORGAN STANLEY mark, varying it only by subtle misspellings, omitting a space between the words, and adding the generic top-level domain (“gTLD”) ‘.com.’”).
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 is not authorized to use Complainant’s trademark in any capacity and as discussed below there is no evidence supporting a finding pursuant to Policy 4(c) that Respondent has rights or interests in the at-issue domain name, Complainant’s prima facie showing acts conclusively.
The WHOIS information for the at-issue domain name ultimately identifies the domain name’s registrant as “Francisc Rodriguez / Francisc.” The record before the Panel contains no evidence that might otherwise tend to prove that Respondent is commonly known by the <bakretilly.com> domain name. The Panel therefore concludes that for the purposes of Policy ¶ 4(c)(ii) Respondent is not commonly known by the at-issue domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration); see also, Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Additionally and as discussed below regarding bad faith, Respondent uses the <bakretilly.com> domain name to host email designed to pass itself off as originating from Complainant. The <bakretilly.com> hosted email is part of a fraudulent scheme. Respondent’s scheme relies on <bakretilly.com> based email that pretends to be from an employee of Complainant and ultimately solicits payments from Complainant’s customers. Respondent’s use of the confusingly similar domain name in this manner, to pass itself off as Complainant in furtherance of fraud, 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 Universal Protein Supplements Corporation d/b/a Universal Nutrition v. Ohanz FA1802001772710 (Forum March 20, 2018) (finding an email scam using Complainant’s misspelled mark UNIVERSAL NUTRITION evidenced Respondent’s lack of rights and legitimate interests in the domain name); see also, Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the at-issue domain name to pose as Complainant’s CEO by means of email addresses at the confusingly similar domain name in an attempt to determine Complainant’s ability to process a transfer. Using the domain name in this manner is neither a bona fide offering of goods and services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶ 4(a)(ii).
Respondent’s <bakretilly.com> domain name was registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First as mentioned above regarding rights and interests, Respondent uses the <bakretilly.com> domain name to host an email address for use in connection with a scheme whereby Respondent’s masquerades as Complainant and seeks payments from targeted customers of Complainant who believe they are dealing with Respondent, when they are not. Respondent thus inappropriately exploits the goodwill inherent in Complainant’s mark through its use of the confusingly similar <bakretilly.com> domain name. Respondent’s tactics are disruptive to Complainant’s business, appear to be criminal and are of course intended to benefit Respondent financially. Respondent’s use of the domain name in this manner shows Respondent’s bad faith under Policy ¶ 4(b)(iii), and Policy ¶ 4(b)(iv). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the <abbuie.com> domain name to impersonate Complainant’s CEO. Such use is undeniably disruptive to Complainant’s business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii), and/or Policy ¶ 4(b)(iv)”); see also Chevron Intellectual Property, LLC v. Jack Brooks, FA 1635967 (Forum Oct. 6, 2015) (finding that Respondent’s use of <chevron-corps.com> to impersonate an executive of Complainant in emails is in opposition to Complainant and is therefore in bad faith under Policy ¶ 4(b)(iii)).
Additionally, Respondent is engaging in typosquatting. Typosquatting is a practice whereby a domain name registrant deliberately introduces typographical errors or misspellings into another’s trademark and then uses the resulting string in a domain name. The domain name’s registrant hopes that internet users will: 1) inadvertently type the malformed string when searching for content related to the domain name’s target trademark; and/or (as is the instant case) 2) in viewing the domain name will confuse the domain name with its target trademark. The registrant may then take advantage of the confusion to inappropriately exploit the target mark’s goodwill. In the instant case, Respondent formed the at-issue <bakretilly.com> domain name by transposing the “e“ and “r” characters in Complainant’s trademark. Respondent’s hope is that an email address containing the <bakretilly.com> domain name will be mistaken as originating from Complainant’s actual domain name. Typosquatting, in itself, indicates bad faith under Policy ¶ 4(a)(iii). 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)).
Finally, Respondent had actual knowledge of Complainant’s rights in the BAKER TILLY mark when it registered <bakretilly.com> as a domain name. Respondent’s prior knowledge of Complainant’s trademark is evident from the overt misspelling of Complainant’s trademark in the domain name and from Respondent’s use of the domain name to pass itself off as Complainant via an email phishing scheme as discussed above. See Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum January 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”). Respondent’s registration and use of a confusingly similar domain name with knowledge of Complainant’s rights in such domain name shows Respondent’s bad faith pursuant to Policy ¶ 4(a)(iii). 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bakretilly.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: May 4, 2020
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