DECISION

 

Boston Trust Walden Company v. Thomas Farese / Boston Investments

Claim Number: FA2201001979428

 

PARTIES

Complainant is Boston Trust Walden Company (“Complainant”), represented by Robert M. O’Connell, Jr. of Orrick, Herrington & Sutcliffe LLP, Massachusetts, USA.  Respondent is Thomas Farese / Boston Investments (“Respondent”), Florida, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <bostontrusts.com>, registered with Godaddy.Com, Llc.

 

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on January 6, 2022; the Forum received payment on January 6, 2022.

 

On January 7, 2022, Godaddy.Com, Llc; confirmed by e-mail to the Forum that the <bostontrusts.com> domain name is registered with Godaddy.Com, Llc and that Respondent is the current registrant of the name. Godaddy.Com, Llc has verified that Respondent is bound by the Godaddy.Com, 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 January 13, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 7, 2022 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@bostontrusts.com.  Also on January 13, 2022, 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.

 

A timely Response was received and determined to be complete on February 8, 2022.

 

On February 14, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.   Complainant

1.    Complainant is a financial services company. Complainant has rights in the BOSTON TRUST mark through its registrations with the United States Patent and Trademark Office (“USPTO”) of the BOSTON TRUST WALDEN mark (e.g. BOSTON TRUST WALDEN Reg. 6,142,943, registered Sep. 1, 2020). See Compl. Ex. 5. Respondent’s <bostontrusts.com> domain name is identical or confusingly similar to Complainant’s marks as it incorporates the words BOSTON TRUST in their entirety and add the letter “s”, along with the “.com” generic top-level domain (“gTLD”).

2.    Respondent lacks rights and legitimate interests in the <bostontrusts.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its BOSTON TRUST mark in the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, but instead inactively hosts parked pay-per-click links on the disputed domain name’s resolving website.

3.    Respondent registered and uses the <bostontrusts.com> domain name in bad faith. Respondent inactively holds parked, pay-per-click links on the disputed domain name’s resolving website. Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the BOSTON TRUST mark. Respondent offers to sell the domain name.

 

B.   Respondent

1.    Respondent offers to cancel the <bostontrusts.com> domain name on condition that Complainant pay its cost to acquire the domain name.

 

FINDINGS

1.    Respondent’s <bostontrusts.com> domain name is confusingly similar to Complainant’s BOSTON TRUST mark.

 

2.    Respondent does not have any rights or legitimate interests in the <bostontrusts.com> domain name.

 

3.    Respondent registered or used the <bostontrusts.com> domain name in bad faith.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

Complainant claims rights in the BOSTON TRUST mark through its registrations with the USPTO of the BOSTON TRUST WALDEN mark (e.g. BOSTON TRUST WALDEN Reg. 6,142,943, registered Sep. 1, 2020). See Compl. Ex. 5. Registration with the USPTO is generally sufficient in demonstrating rights in a mark under Policy ¶ 4(a)(i). See Nintendo of America Inc. v. lin amy, FA 1818485 (Forum Dec. 24, 2018) ("Complainant’s ownership a USPTO trademark registration for the NINTENDO mark evidences Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel agrees and finds Complainant has rights in the mark under Policy ¶ 4(a)(i).

 

Complainant also claims common law rights in the BOSTON TRUST mark. Under Policy ¶ 4(a)(i), common law rights in a mark may suffice in lieu of a registered trademark, and are generally established through secondary meaning, which may be demonstrated through various factors including longstanding use of a mark, public and media recognition, advertising and use of the mark, and holding of a domain name identical to a mark. See Marquette Golf Club v. Al Perkins, 1738263 (Forum July, 27, 2017) (finding that Complainant had established its common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including “longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising.”). Complainant provides screenshots of its identical <bostontrustwalden.com> domain name, along with a screenshot of a webpage containing information about Complainant’s various mutual funds operated under the BOSTON TRUST mark. See Compl. Exs. 3 and 7. The Panel agrees and finds the Complainant has common law rights in the mark under Policy ¶ 4(a)(i).

 

Complainant argues that Respondent’s <bostontrusts.com> domain name is identical or confusingly similar to Complainant’s BOSTON TRUST mark. Under Policy ¶ 4(a)(i), adding an “s” and the “.com” gTLD is generally insufficient in differentiating a disputed domain name from the mark it incorporates. See LodgeWorks Partners, L.P. v. Isaac Goldstein / POSTE RESTANTE, FA 1717300 (Forum Apr. 5, 2017) (“The Panel agrees; Respondent’s <archerhotels.com> is confusingly similar to complainant’s ARCHER HOTEL mark.”). The disputed domain name incorporates the BOSTON TRUST mark and adds an “s” and the “.com” gTLD. Therefore, the Panel agrees and finds Respondent’s domain name is identical or confusingly similar to Complainant’s mark 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 under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also 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”).

 

Complainant claims that Respondent is not commonly known by the <bostontrusts.com> domain name, nor has Complainant authorized or licensed Respondent to use its BOSTON TRUST mark in the disputed domain name. Under Policy ¶ 4(c)(ii), relevant WHOIS Information, among other evidence, may demonstrate that a Respondent is not commonly known by a disputed domain name, while a lack of information demonstrating otherwise may affirm a Complainant’s assertion that it never authorized or licensed Respondent to use its mark in the disputed domain name. See Google Inc. v. Domain Admin / Whois Privacy Corp., FA1502001605239 (Forum Mar. 22, 2015) (“WHOIS information for the at-issue domain name lists ‘Domain Admin / Whois Privacy Corp.’ as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <google-status.com> domain name.  Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii).”). Furthermore, even where a Respondent’s WHOIS information appears to resemble the mark, in the absence of further proof, past panels have failed to find a Respondent is commonly known by the disputed domain name. See Google Inc. v. S / Google International, FA1506001625742 (Forum Aug. 4, 2015) (“Respondent did identify itself as ‘Google International’ in connection with its registration of the Disputed Domain Name, and this is reflected in the WHOIS information.  However, Respondent has not provided affirmative evidence from which the Panel can conclude that Respondent was commonly known by the Disputed Domain Name before Respondent’s registration thereof.”). The WHOIS of record identifies Respondent as “Robert Nichols” of “Boston Trust Realty Group”, and the response identifies Respondent as “Thomas Farese” or “Boston Investments.” Respondent provides no further proof of its business or name, and nothing in the record rebuts Complainant’s assertion that it never authorized or licensed Respondent to use its BOSTON TRUST mark in the disputed domain name. See Registrar Verification Email; see also Response. Therefore, the Panel agrees and finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).

 

Complainant argues that Respondent does not use the <bostontrusts.com> domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use. Under Policy ¶¶ 4(c)(i) and (iii), inactively holding a disputed domain name, or only holding parked, pay-per-click links, is generally not considered a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business); see also Dell Inc. v. link growth / Digital Marketing, FA 1785283 (Forum June 7, 2018) (“Respondent’s domain names currently display template websites lacking any substantive content. The Panel finds that Respondent does not have rights or legitimate interests with respect of the domain name per Policy ¶¶ 4(c)(i) or (iii).”). Complainant argues that the disputed domain name’s resolving website resolves to a page with no substantive content but parked, pay-per-click links. See Compl. Ex. 6. Therefore, the Panel agrees and finds Respondent does not use the disputed domain name for any bona fide offerings of goods or services, nor any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).

 

Registration and Use in Bad Faith

Complainant argues that Respondent registered and uses the <bostontrusts.com> domain name in bad faith by offering it for sale. Offering a domain name for sale may demonstrate bad faith under Policy ¶ 4(b)(i) where a Panel finds Respondent registered the domain name with the intent to sell it. See Airbnb, Inc. v. Super Privacy Service LTD c/o Dynadot, FA 1821386 (Forum Jan. 10, 2019) (“Complainant argues that Respondent registered and uses the <airbnbb.com> domain name in bad faith by offering it for sale.  The Panel agrees and finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(i).”). The Panel recalls Complainant’s screenshot of the disputed domain name’s resolving website, which features a prompt to “get this domain”. See Compl. Ex. 6. Therefore, the Panel agrees and finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(i).

 

Complainant argues that Respondent registered and uses the <bostontrusts.com> domain name in bad faith by disrupting Complainant’s business for commercial gain. Under Policy ¶¶ 4(b)(iii) and (iv), hosting parked, pay-per-click links may evidence such bad faith behavior. See For Your Ease Only, Inc v. Expired domain caught by auction winner.***Maybe for sale on Dynadot Marketplace*** c/o Dynadot, FA 1791755 (Forum July 16, 2018) (“[T]he evidence shows that Respondent previously used the domain names to resolve to websites which hosted links to Complainant’s competitors; this demonstrates bad faith under Policy ¶¶ 4(b)(iii) and (iv).”). The Panel recalls that the disputed domain name’s resolving website features no content but parked, pay-per-click links to related/competing services. See Compl. Ex. 6. Therefore, the Panel agrees and finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv).

 

Complainant argues that Respondent registered the <bostontrusts.com> domain name with bad faith actual knowledge of Complainant’s rights in the BOSTON TRUST mark. Under Policy ¶ 4(a)(iii), actual knowledge is generally sufficient in demonstrating bad faith, and may be established through Respondent’s incorporation of a registered/well-known mark into and use of a disputed domain name. See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to and in competition with Complainant.”). The Panel recalls that the BOSTON TRUST mark is fully incorporated into the disputed domain name, while the resolving website offers competing hyperlinks. See Compl. Ex. 6. Therefore, the Panel agrees and finds Respondent registered the disputed domain name 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 <bostontrusts.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

John J. Upchurch, Panelist

Dated:  March 16, 2022