Thornton Tomasetti, Inc. v. trip last
Claim Number: FA2304002039010
Complainant is Thornton Tomasetti, Inc. (“Complainant”), represented by Arthur Wellington, New York, USA. Respondent is trip last (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thonrtontomasetti.com>, registered with NameCheap, Inc..
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.
The Honorable Neil Anthony Brown KC as Panelist.
Complainant submitted a Complaint to Forum electronically on April 6, 2023; Forum received payment on April 6, 2023.
On April 7, 2023, NameCheap, Inc. confirmed by e-mail to Forum that the <thonrtontomasetti.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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”).
On April 10, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 1, 2023 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@thonrtontomasetti.com. Also on April 10, 2023, 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 May 5, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant offers engineering and scientific consulting services worldwide. Complainant asserts rights in the THORNTON TOMASETTI mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 6280186, registered March 2, 2021). See Compl. Annex 1. The <thonrtontomasetti.com> domain name is identical or confusingly similar to Complainant’s THORNTON TOMASETTI mark because the only difference between the disputed domain name and the mark is that the letters ‘r’ and ‘n’ have been switched in “THORNTON” as well as the addition of the generic top level domain (“gTLD”) “.com”.
Respondent lacks rights or legitimate interests in the <thonrtontomasetti.com> domain name since Respondent is not licensed or authorized to use Complainant’s mark and is not commonly known by the disputed domain name. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent is not using the disputed domain name.
Respondent registered and uses the <thonrtontomasetti.com> domain name in bad faith. Respondent is impersonating Complainant via fraudulent emails seeking customer payments.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the provision of worldwide engineering and scientific services.
2. Complainant has established its rights in the THORNTON TOMASETTI mark by its registration of the mark with the United States Patent and Trademark Office (USPTO) (e.g. Reg. No. 6280186, registered March 2, 2021).
3. Respondent registered the disputed domain name on March 20, 2023;
4. Respondent is not using the disputed domain name for a bona fide, legitimate or fair use and is using it only to perpetrate a 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 first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the THORNTON TOMASETTI mark (e.g. Reg. No. 6280186, registered March 2, 2021) based upon registration with the USPTO. See Compl. Annex 1. Registration of a mark with the USPTO is a valid showing of rights in a mark under Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Since Complainant provides evidence of registration of the THORNTON TOMASETTI mark with the USPTO, the Panel finds that Complainant has demonstrated its rights in the mark per Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s THORNTON TOMASETTI mark. Complainant argues that Respondent’s <thonrtontomasetti.com> domain name is identical or confusingly similar to Complainant’s mark because the only difference between the disputed domain name and the mark is that the letters ‘r’ and ‘n’ have been switched in “THORNTON” as well as the addition of “.com” gTLD. The switching of letters to create a misspelling as well as the addition of a gTLD does not adequately distinguish a disputed domain name from a mark. See Bank of America Corporation v. Above.com Domain Privacy, FA 1629452 (Forum Aug. 18, 2015) (finding that the <blankofamerica.com> domain name contains the entire BANK OF AMERICA mark and merely adds the gTLD ‘.com’ and the letter ‘l’ to create a common misspelling of the word ‘bank.’). As such, the Panel find that the <thonrtontomasetti.com> domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established 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 that 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)).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s THORNTON TOMASETTI mark and to use it in its domain name, simply switching the letters ‘r’ and ‘n’ in “THORNTON”, which does not negate the confusing similarity between the domain name and the trademark;
(b) Respondent registered the disputed domain name on March 20, 2023;
(c) Respondent is not using the disputed domain name for a bona fide, legitimate or fair use and is using it only to perpetrate a fraud;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant contends that Respondent has no rights or legitimate interests in the <thonrtontomasetti.com> domain name because Respondent is not commonly known by the disputed domain name and Complainant has never licensed rights to or authorized Respondent to use the THORNTON TOMASETTI mark. In the absence of a response, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). In addition, where there is no evidence to indicate a complainant has authorized the use of a mark, that situation may act as support for the conclusion that a respondent is not commonly known by the disputed domain name and thus lacks any rights or legitimate interest in the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The registrant of the <thonrtontomasetti.com> domain name is not listed other than by “trip last”. Further, there is no evidence to suggest that Respondent was authorized, licensed rights to, or otherwise permitted to use the THORNTON TOMASETTI mark. Therefore, the Panel finds that Respondent is not commonly known by, and lacks rights or legitimate interests in, the disputed domain name per Policy ¶ 4(c)(ii);
(f) Complainant submits that Respondent fails to use the <thonrtontomasetti.com> domain name in connection with a bona fide offering of goods and services or for any legitimate or fair use because the evidence is that a google search of the disputed domain name produced only the result of the Complainant’s firm. A disputed domain name that is not being used legitimately does not represent a bona fide offering of goods and services or a legitimate or fair use per Policy ¶ 4(c)(i) and (iii). See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Here, Complainant provides screenshot evidence of the Google searches performed to seek Respondent’s webpage but which reveal only the name of the Complainant’s firm. See Compl. Annexes 11-12, 14-16. The Panel therefore finds that Respondent has failed to use the disputed domain name in connection with a bona fide offering of goods and services or a legitimate or fair use per Policy ¶ 4(c)(i) and (iii).
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and that it has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and uses the <thonrtontomasetti.com> domain name in bad faith. The evidence is that Respondent is using the disputed domain name to confuse third parties by sending fraudulent emails from a misleading email address to customers of Complainant seeking payment. Such conduct is not a legitimate use and is clear evidence of bad faith under Policy ¶¶ 4(a)(iii) and 4(b)(iii). See Microsoft Corporation v. Terrence Green / Whois Agent / Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr. 4, 2016) (finding the Respondent’s use of the disputed domain names to send fraudulent emails supported a finding of bad faith registration and use under Policy ¶ 4(b)(iii)). Here, Complainant provides screenshot evidence of a fraudulent email sent to a customer of the company. See Compl. Annex 2. In that regard, Complainant submits that on March 20, 2023, an email was sent from ktredway@thonrtontomasetti.com to a customer of Complainant. The email purported to be from Complainant’s Accounts Receivable department and used the name of one of Complainant’s accounting employees. The email contained the following request: “Can we have our upcoming due payment remitted to our alternative banking details?” in a clear attempt to redirect payments being made by this customer to Complainant. The customer reported the email to Complainant. Complainant is continuing to receive reports from its customers of similar emails. The Panel accepts that submission and the evidence on which it is based which shows that the domain name was registered and has been used in bad faith.
As the Panel agrees with Complainant’s submissions, it finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶¶ 4(a)(iii) and 4(b)(iii).
Complainant has thus made out the third of the three elements that it must establish.
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 <thonrtontomasetti.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown KC
Panelist
Dated: May 8, 2023
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