WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Slalom, LLC v. Whois Agent, Whois Privacy Protection Service Inc.; Registration Private, Domains By Proxy, LLC, DomainsByProxy.com; Jennifer E rosenblum, Linda Bates, Troy Johnson, Troy Johnson
Case No. D2018-1634
1. The Parties
The Complainant is Slalom, LLC of Seattle, Washington, United States of America ("United States"), represented by CSC Digital Brand Services AB, Sweden.
The Respondents are Whois Agent, Whois Privacy Protection Service Inc. of Kirkland, Washington, United States; Registration Private, Domains By Proxy, LLC, DomainsByProxy.com of Scottsdale, Arizona, United States; Jennifer E Rosenblum of Brewster, New York, United States; Linda Bates of Cortlandt Manor, New York, United States; Troy Johnson of Cortlandt Manor, New York, United States; and Troy Johnson of Houma, Louisiana, United States.
2. The Domain Names and Registrars
The disputed domain names <slalomconsult.org> and <slalomconsultingllc.com> are registered with GoDaddy.com, LLC.
The disputed domain names <slalomconsultllc.com> and <slalomconsults.com> are registered with eNom, Inc.
The disputed domain names are referred to herein as the Domain Names, and the relevant registrars are referred to as the Registrars.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 19, 2018. On July 19, 2018, the Center transmitted by email to the Registrars requests for registrar verification in connection with each of the Domain Names. On the same date, the Registrars transmitted by email to the Center their respective verification responses disclosing registrant and contact information for the Domain Names which differed from the named Respondents and contact information in the Complaint. The Center sent an email communication to the Complainant on July 20, 2018 providing the registrant and contact information disclosed by the Registrars, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 25, 2018.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondents of the Complaint, and the proceedings commenced on July 27, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 16, 2018. The Respondents did not submit any response. Accordingly, the Center notified the Respondents' default on August 17, 2018.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on August 22, 2018. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is a limited liability company organized under the laws of the United States State of Colorado and headquartered in Seattle, Washington, United States. The Complainant's Slalom Consulting division was established in 2001. The record shows that by 2017 the Complainant had 5,000 employees and annual revenues exceeding USD one billion. The Complainant operates a website at "www.slalom.com" advertising its business and technology consulting services and some 30 offices in the United States (including the State of New York, where the individual Respondents are located), as well as in Toronto and London. The Complaint attaches examples of media articles recognizing the Complainant's achievements in national and international publications such as Forbes, Fortune, Consulting Magazine, and Glassdoor.
The Complainant holds several relevant trademark registrations in the United States and other jurisdictions, including United States registrations for SLALOM as a standard-character mark, Registration Number 3537619 (registered November 25, 2008) and Registration Number 4007182 (registered August 2, 2011).
According to the Registrars, the Domain Names <slalomconsults.com> and <slalomconsultllc.com> were created on June 2, 2018 and June 4, 2018, respectively, while the Domain Names <slalomconsult.org> and <slalomconsultingllc.com> were created at about the same time using a different Registrar, on June 4, 2018 and June 7, 2018, respectively. The Domain Name <slalomconsultingllc.com> was registered in the name of Linda Bates of Cortlandt Manor, New York, United States, while the other Domain Names were registered in the name of the domain privacy service associated with the respective Registrar. Following notification of this dispute, the respective Registrars identified the registrants of two of the Domain Names as Troy Johnson, in one case giving the same postal address as Linda Bates in Cortlandt Manor, New York, and in the other giving a postal address in Houma, Louisiana, United States, but with the same telephone number given for Troy Johnson at the New York address and the same email address given for Linda Bates. In the case of <slalomconsult.org>, however, the registrant was identified as Jennifer E rosenblum of Brewster, New York, United States (near the New York address given for "Linda Bates" and "Troy Johnson").
It does not appear that the Domain Names <slalomconsults.com>, <slalomconsultllc.com>, and <slalomconsult.org> have been associated with an active website. As shown in a screenshot attached to the Complaint (and as remains true at the time of this Decision), the Domain Name <slalomconsultingllc.com> has resolved to a landing page headed with the Domain Name and some version of the announcement, "This Web page is parked for FREE, courtesy of GoDaddy". The landing page promotes the Registrar's services and advertises the Domain Name for sale.
Three days after the Domain Name <slalomconsultingllc.com> was registered, it was used as an email domain to send a fraudulent "phishing" email to a user of Glassdoor.com, a popular website for company reviews and job searches. The email purportedly came from "Troy Johnson, Slalom Consulting LLC", and it invited the addressee to explore a job opening with the Complainant by clicking on a link and supplying personal information. Troy Johnson (the name also used in registering two of the Domain Names) is the Complainant's General Manager and co-founder, whose profile is published on the Complainant's website. The Complainant reports that "numerous" such emails were sent using the Domain Name <slalomconsultingllc.com>.
5. Parties' Contentions
The Complainant contends that all four Domain Names are confusingly similar to its registered SLALOM trademark, incorporating that mark in its entirety and adding the generic words or abbreviations "consult", "consults", "consulting", and "llc". This is confusing because the Complainant's primary business is consulting and its name is Slalom, LLC.
The Complainant argues that no Respondent has permission to use the trademark and no evident rights or legitimate interests in the Domain Names, which have been used only for a phishing scam, advertised for sale or promoting the Registrar's services, or held passively. Accordingly, the Complainant infers that the Domain Names have all been registered or used in bad faith.
None of the named Respondents replied to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules, "A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
A. Consolidation and Multiple Respondents
The four Domain Names were registered in the names of different registrants, but as described above there are strong reasons to believe that the registrants are identical or related. The Domain Names are very similar to each other and were registered, two each with two different Registrars, over a period of six days. Two of the Domain Names were registered in the name of the Complainant's own General Manager, Troy Johnson, giving addresses in two different states but using some of the same contact details of one of the other registrants, Linda Bates. The last Domain Name was registered in the name of a person in a neighboring town, Jennifer Rosenblum.
The Panel notes that the contact details for Ms. Bates and Ms. Rosenblum are published in online directories of the affluent New York suburban region where they reside, and it is possible that a person hiding behind their assumed identities used their published information without their knowledge, as is the case with the Complainant's General Manager Troy Johnson, and that they chose not to respond to the Complaint because they had no interest in the Domain Names. The Panel notes as well that the original Complaint in this proceeding included yet another similar domain name, registered at about the same time in the name of another individual and, according to him, using his stolen credit card for the registration fee. (That domain name dispute was resolved, and the domain name was not included in the amended Complaint.)
Whoever is actually behind the Domain Names (referred to hereafter as the "Respondent") demonstrates a pattern of obfuscation and deception, characterized by impersonation, the use of domain privacy services, false registration contact details, a phishing scam, and a failure to reply to communications from the Complainant or the Center or submit a Response in this proceeding. This pattern, along with the close similarity of the Domain Names and the timing of their registration, persuades the Panel that (a) the Domain Names are likely under common control, (b) consolidation would be equitable to all parties, and (c) consolidation is in the interest of procedural efficiency. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 4.11.2.
B. Identical or Confusingly Similar
The Complainant indisputably holds a registered SLALOM trademark. The Domain Names all incorporate that mark in its entirety. The Domain Names do not avoid confusion by adding the generic words or abbreviations "consult", "consults", "consulting", and "llc", especially given that the Complainant's primary business is consulting and its name is Slalom, LLC. As in most cases, the generic Top-Level Domains ("gTLD"s) ".com" and ".org" are not a distinguishing feature. See WIPO Overview 3.0, section 1.11.
The first element of a UDRP complaint "functions primarily as a standing requirement" and entails "a straightforward comparison between the complainant's trademark and the disputed domain name". See WIPO Overview 3.0, section 1.7. The Panel concludes under this test that the Domain Name is confusingly similar for purposes of the first element of the Policy.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent's use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate non-commercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Since a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a disputed domain name, it is well established that after a complainant makes a prima facie case, as the Complainant has here, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1. The Respondent has not done so in this proceeding, and the Panel finds that the second element of the Complaint has been established.
D. Registered and Used in Bad Faith
The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that "shall be evidence of the registration and use of a domain name in bad faith", including the following (in which "you" refers to the registrant of the domain name):
"(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location".
Although "slalom" is a dictionary word referring to a kind of ski race, it is clear that the Respondent was well aware of the Complainant and the trademark significance of SLALOM. Each of the Domain Names adds a version of "consult" or "consulting", and consulting is the Complainant's primary business. The name of the Complainant's General Manager was given as the name of the registrant for two of the Domain Names, and the phishing email that was sent a few days after registering the Domain Names purported to come from the Complainant. Indeed, it does not appear that the Respondent registered the Domain Names to develop websites but rather for use as email domains that would appear to be associated with the Complainant and could be used for phishing fraud schemes.
The Domain Name <slalomconsultingllc.com> has been used for months since registration for a landing page advertising the Domain Name for sale and promoting the Registrar's services. This suffices to meet the criteria of paragraph 4(b)(iv), misdirecting Internet users for commercial gain. It is not necessary to establish that the registrant itself profits, as the registrant remains responsible for this commercial exploitation of another party's trademark.
More egregiously, the Respondent has used that Domain Name for a phishing scam, impersonating an officer of the Complainant in numerous emails using the Domain Name in an attempt to collect personal information from recipients, presumably in furtherance of a fraud scheme. The examples in paragraph 4(b) are expressly non-exclusive, and this conduct must be considered bad faith within the meaning of the Policy. Although it is not the conduct of an ordinary commercial "competitor", panels have also cited paragraph 4(b)(iii) in cases involving fraud and similar conduct "in opposition" to a complainant for direct or indirect material gain. See WIPO Overview 3.0, section 3.1.3.
For the three Domain Names that have not yet been used for a website or phishing scam, the Complainant relies on the "passive holding" doctrine, where there is not yet any active use of a domain name based on a well-known mark but there is also no plausible legitimate reason for the respondent to register it. See WIPO Overview 3.0, section 3.3; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. This is a persuasive approach to the facts in the current proceeding. The Complainant's mark, while not as highly distinctive as those in some of the "passive holding" cases, is well established and was certainly targeted by the Respondent, as evidenced by the phishing scam and the use of the name "Troy Johnson", the Complainant's General Manager, in registering two of these Domain Names. The Respondent took pains to hide its identity and promptly used one of the related Domain Names in a fraudulent scheme. It is probable that the others were obtained for a similar purpose, and there is no plausible legitimate purpose for registering and maintaining these similar Domain Names. The Panel finds bad faith, therefore, with respect to these three Domain Names as well.
The Respondent's pattern of obfuscation and deception, including impersonation and false registration contact details, as well as the failure to reply to communications or submit a Response in this proceeding, further support the inference of bad faith with respect to all four of the Domain Names.
The Panel concludes that the Complainant has established the third element of the Complaint, bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, <slalomconsultingllc.com>, <slalomconsultllc.com>, <slalomconsult.org>, and <slalomconsults.com> be transferred to the Complainant.
W. Scott Blackmer
Date: September 7, 2018