Baker Tilly Virchow Krause, LLP v. Ellen Polsky
Claim Number: FA1609001694731
Complainant is Baker Tilly Virchow Krause, LLP (“Complainant”), represented by Shannon V. McCue of Baker & Hostetler LLP, Ohio, USA. Respondent is Ellen Polsky (“Respondent”), Kansas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bakartilly.com>, registered with GoDaddy.com, 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 21, 2016; the Forum received payment on September 21, 2016.
On September 22, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <bakartilly.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 September 23, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 13, 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@bakartilly.com. Also on September 23, 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 October 24, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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 registered the BAKER TILLY mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,072,763, registered Mar. 28, 2006), and holds rights to the mark that it uses for accounting and advisory services. Respondent’s domain name, <bakartilly.com>, is confusingly similar to Complainant’s mark, because it incorporates the entire BAKER TILLY mark while merely omitting the space and replacing the “E” with an “A,” plus the “.com” generic top-level domain (“gTLD”) suffix.
Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not granted Respondent any sort of permission to use its BAKER TILLY mark, and the Respondent is not commonly known as <bakartilly.com>. Respondent is attempting to pass itself off as Complainant and prominently displays several of Complainant’s own biography on its website. Respondent has further used the domain name to solicit personal information from mistaken Internet users by posting fake job openings. Such use cannot constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) or (iii).
Respondent registered and has been using the disputed domain name in bad faith. Respondent surely had actual or constructive knowledge of Complainant’s rights in the BAKER TILLY mark when it registered the <bakartilly.com> domain name. This is evidenced by Respondent’s typosquatting behavior and the attempt to fraudulently misreprenset itself as an affiliate of Complainant. Respondent is commercially gaining by the confusion as to the source, sponsorship, affilliation, or endorsement of the resolving page of the disputed domain name, and is purportedly posting job opportunities in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Baker Tilly Virchow Krause, LLP of Chicago, IL, USA. Complainant is the owner of the domestic registration for the mark BAKER TILLY, which it has continuously used since at least as early as 2006 in connection with the provision of goods and services in its accounting and advisory business.
Respondent is Ellen Polsky of Leawood KS, USA. Respondent’s registrar’s address is listed as Scottsdale, AZ, USA. Respondent registered the <bakartilly.com> domain name on or about August 26, 2016,
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.”).
Complainant contends that it has rights in the BAKER TILLY mark based on its registration with the USPTO (e.g., Reg. No. 3,072,763, registered Mar. 28, 2006). Prior panels have found that such a registration confers rights in a mark pursuant to Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). The Panel here finds that Complainant has demonstrated rights in the BAKER TILLY mark.
Complainant further contends that Respondent’s <bakartilly.com> domain name is confusingly similar to its BAKER TILLY mark. Complainant asserts that Respondent is typosquatting on its mark, because the domain name only differs by replacing the “E” in BAKER TILLY with an “A,” omiting spaces, and adding a gTLD. Past panels have held a disputed domain name to be confusingly similar where it only differed by the complainant’s mark by a single letter. See Royal Bank of Scotland Grp. plc et al. v. Demand Domains, FA 714952 (Forum Aug. 2, 2006) (“The Panel finds that merely by misspelling Complainants’ mark, Respondent has not sufficiently differentiated the <privelage.com> domain name from the PRIVILEGE mark under Policy ¶ 4(a)(i).”); see also Health Republic Insurance Company v. Gustavo Winchester, FA 1622089 (Forum July 7, 2015) (finding, “Domain name syntax requires TLDs. Domain name syntax prohibits spaces. Therefore, omitted spacing and adding a TLD must be ignored when performing a Policy ¶ 4(a)(i) analysis.”). The Panel here finds that the disputed domain <bakartilly.com>, and Complainant’s BAKER TILLY mark, are confusingly similar under Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that 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 Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). The Complainant has met this burden.
Complainant contends that Respondent has no rights or legitimate interests in the <bakartilly.com> domain name. Complainant asserts that it has not licensed or otherwise authorized Respondent to use its BAKER TILLY mark in any fashion, and that Respondent is not commonly known by the disputed domain name. The Panel notes the WHOIS information for the domain name in question lists “Ellen Polsky” as the registrant. Previous panels have concluded that a respondent is not commonly known by a domain name where there is contradictory WHOIS information and a lack of contradicting evidence in the record. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). The Panel here finds that Respondent is not commonly known by <bakartilly.com>.
Complainant further asserts that Respondent is not using the disputed domain name to make a bona fide offering of goods and services under Policy ¶ 4(c)(i), or using it to make a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Complainant argues that Respondent is using the disputed domain name to misrepresent itself as Complainant, and to divert mistaken Internet users into fraudulently giving away their personal information. Complainant has submitted screen shots of Respondent’s website that it contends is not a bona fide offering of goods and services or a legitimate noncommercial or fair use of the domain name. Complainant asserts Respondent has included the Complainant’s personal history on its website to further divert Internet users. Fraudulent misrepresentation in the form of “passing off” has been considered to fail in establishing rights and legitimate interests. See Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name). The Panel here finds that Respondent does not have any rights or legitimate interests in the disputed domain name.
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
As the Respondent has not provided a response to this action, the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant alleges that Respondent has registered and is using <bakartilly.com> in bad faith. Complainant argues that Respondent is attempting to pass itself off as Complainant to attract Internet users to its domain name for commercial gain. Complainant argues that in addition to the confusingly similar domain name, Respondent has copied language from Complainant’s website and posted the information on the disputed domain name to further create confusion as to the source, sponsorship, affiliation, or endorsement of the domain. Complainant has also provided evidence that allegedly indicates Respondent is using the disputed domain name as part of an email phishing scheme. Prior panels have found using a domain name to send fraudulent emails can be in bad faith, and that a respondent passing itself off as the complainant violated Policy ¶ 4(b)(iv). See Qatalyst Partners LP v. Devimore, FA 1393436 (Forum July 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”). The Panel here finds that Respondent’s actions support the conclusion that Respondent’s registration and use is in bad faith in violation of Policy ¶ 4(b)(iv).
Complainant also argues that Respondent’s behavior constitutes typosquatting, which is bad faith under Policy ¶ 4(a)(iii). Complainant points out that Respondent’s domain name only differs by its mark by one letter, and that replacing the “E” in BAKER TILLY with an “a” is a common typographical error. Prior panels have held that a respondent was typosquatting when its domain name only differed by the complainant’s mark by a single letter. See LifeLock, Inc. v. Adam Viener / ThunkTunk LLC, FA1409001579875 (Forum Oct. 28, 2014) (“As the Panel has noted above, at the conclusion of its findings under the first Policy element under Policy ¶ 4(a)(i), the disputed domain name <lifelocl.com> differs from the LIFELOCK mark only by substituting the letter ‘L’ for the letter ‘K’ in the LOCK-portion of Complainant’s registered mark. The Panel finds this behavior amounts to typosquatting, and as such the Panel finds this to be evidence of bad faith pursuant to Policy ¶ 4(a)(iii).”). The Panel here finds that Respondent registered the <bakartilly.com> domain name to typosquat on Complainant’s mark in bad faith.
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <bakartilly.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: Nov. 7, 2016
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