Huron Consulting Group Inc. v. David White
Claim Number: FA1611001701395
Complainant is Huron Consulting Group Inc. (“Complainant”), represented by David A.W. Wong of Barnes & Thornburg LLP, Indiana, USA. Respondent is David White (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <huroninc.net>, registered with 1&1 Internet SE.
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 November 4, 2016; the Forum received payment on November 7, 2016.
On November 7, 2016, 1&1 Internet SE confirmed by e-mail to the Forum that the <huroninc.net> domain name is registered with 1&1 Internet SE and that Respondent is the current registrant of the name. 1&1 Internet SE has verified that Respondent is bound by the 1&1 Internet SE 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 November 8, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 28, 2016 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@huroninc.net. Also on November 8, 2016, 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 December 1, 2016, 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, Huron Consulting Group, Inc. is a global professional services firm which provides change management services to industries and businesses throughout the world. In connection with these services, Complainant uses the marks HURON CONSULTING GROUP, HURON HEALTHCARE and various designs and stylizations thereof, (collectively, the “HURON marks”).
Complainant has rights in the HURON marks based upon registration with the United States Patent and Trademark office (“USPTO”) and other trademark agencies throughout the world (e.g., HURON CONSULTING GROUP—Reg. No. 4,903,900, registered Feb. 23, 2016; HURON HEALTHCARE—Reg. No. 4,101,995, registered Feb. 21, 2012).
Respondent’s <huroninc.net> is confusingly similar to Complainant’s marks, as it incorporates the HURON marks, simply omitting the terms “consulting group” or “healthcare,” adding the term “inc” and appending the generic top-level domain “.net.”
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor is Respondent affiliated with Complainant in any way. The disputed domain name resolves to a website that is substantially similar to Complainant’s with which Respondent attempts to solicit sensitive personal information from Internet users. Accordingly, Respondent is not using the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) and (iii).
Respondent’s use of the disputed domain name is in bad faith under the Policy. Respondent is using the disputed domain name to attract Internet users for commercial gain by attempting to impersonate Complainant in a fraudulent scheme to gather Internet users’ personal information. The website displays Complainant’s proprietary intellectual property in furtherance of its objective. Moreover, Respondent had actual or constructive knowledge of Complainant’s rights in the mark at the time Respondent registered and subsequently used the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the HURON HEALTHCARE and HURON CONSULTING GROUP marks through its registration of such marks with the USPTO and otherwise.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent did not use its real identity in registering the at-issue domain name.
The at-issue domain name was registered after Complainant acquired rights in its HURON related trademarks.
Respondent’s <huroninc.net> domain name is used to perpetuate a scheme to defraud visitors to the domain name’s website by impersonating Complainant.
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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See 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); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of its HURON centric marks with the USPTO is sufficient to establish its rights in a mark under Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark Office (‘USPTO’)”).
The at-issue domain name contains the dominant portion of Complainant’s trademarks, HURON, adds the generic term “inc” and concludes with a necessary top-level domain name, here “.net”. Omitting a word from a mark is insufficient to differentiate such mark from an at-issue domain name for the purpose of the Policy. Likewise, the addition of the generic term “inc” fails to distinguish the domain name form Complainant’s trademark. Finally, appending the necessary top-level to complete the domain name is immaterial to studied analysis under Policy ¶ (4)(a)(i). Therefore, the Panel concludes that the <huroninc.net> domain name is confusingly similar to Complainant’s trademark. See VNY Model Management, Inc. v. Lisa Katz / Domain Protection LLC, FA 1625115 (Forum Aug. 17, 2015) (finding that Respondent’s <vnymodels.com> domain name is confusingly similar to the VNY MODEL MANAGEMENT mark under Policy ¶ 4(a)(i).); see also, Abbott Laboratories v. Miles White, FA 1646590 (Forum Dec. 10, 2015) (holding that the addition of descriptive terms, particularly terms that pertain to complainant’s business, do not adequately distinguish a disputed domain name from complainant’s mark under Policy ¶ 4(a)(i).); see also, Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
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 (Nat. Arb. Forum Aug. 18, 2006). Where 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.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademarks in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might conclude that Respondent has rights or interests in respect of the <huroninc.net> domain name.
WHOIS information for the <huroninc.net>domain name lists “David White” as the domain name’s registrant and there is nothing in the record that suggests the Respondent is otherwise commonly known by the <huroninc.net> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Respondent’s domain name addresses a website that is designed to deceive visitors into giving up their private personal information. Respondent’s use of the confusingly similar domain name in a scheme to pass itself off as Complainant indicates that Respondent has no rights or interest in the at-issue domain name. Certainly, using the domain name as Respondent does suggests 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 Kmart of Mich., Inc. v. Cone, FA 655014 (Forum Apr. 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶ 4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
The domain name was registered and used in bad faith. As discussed below, bad faith circumstances are present which compel the Panel to conclude that Respondent acted in bad faith under paragraph 4(a)(iii) of the Policy.
As mentioned above regarding Policy ¶ 4(a)(ii), the <huroninc.net> domain name addresses a website which is used to impersonate Complainant and defraud website visitors. Respondent’s use of the confusingly similar domain name to perpetuate fraud demonstrates Respondent’s bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv). See H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness).
Additionally, Respondent registered the confusingly similar <huroninc.net> domain name knowing that Complainant had trademark rights in the HURON centric trademarks. Respondent’s prior knowledge is evident because of the notoriety of Complainant’s trademarks and Respondent’s use of the trademark laden domain name to pose as Complainant. Given the forgoing, it is clear that Respondent intentionally registered the at-issue domain name to improperly exploit its trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's HURON related trademark further indicates that Respondent registered and used the <huroninc.net> domain names in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. 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").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <huroninc.net> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: December 6, 2016
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page