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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

ThoughtWorks, Inc. v. Swapnika Kakda

Case No. D2020-1361

1. The Parties

The Complainant is ThoughtWorks, Inc., United States of America, represented by Partridge Partners PC, United States of America.

The Respondent is Swapnika Kakda, India.

2. The Domain Name and Registrar

The disputed domain name <thoughtworks.live> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 29, 2020. On May 29, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 1, 2020, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the 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 Respondent of the Complaint, and the proceedings commenced on June 4, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 24, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 25, 2020.

The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on June 30, 2020. 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 global software consultancy of some 25 years standing. Presently it employs more than 7,000 people in 43 offices located among 14 countries, including the Indian cities of Bangalore, Chennai, Gurgaon, Pune, and Hyderabad.

The Complainant owns 17 currently active trademarks for THOUGHTWORKS as word marks or in stylised forms encompassing classes 9, 16, 35, 41, and 42, including the following representative trademarks:

THOUGHTWORKS, United States Patent and Trademark Office, filed May 14, 1993, registered December 6, 1994, registration number 1866548, in class 35;

THOUGHTWORKS, Trade Marks Registry, India, registered May 17, 2010, registration number 1966239, in class 42; and,

THOUGHTWORKS, Trade Marks Registry, India, registered May 17, 2010, registration number 1966241, in class 35.

The Complainant also owns and promotes its business through the domain name <thoughtworks.com>. Its promotional activities have included “ThoughtWorks Live”, a convention held in several countries that in 2019 was held at Bengaluru (Bangalore) as “ThoughtWorks Live India 2019” and for which it used the website and pages “www.thoughtworks.com/thoughtworks-live-india-2019”.

The Respondent has not provided any background information except for contact information for the purpose of registration of the disputed domain name on May 12, 2020. The disputed domain name redirects to the Complainant’s own website “www.thoughtworks.com”.

5. Parties’ Contentions

A. Complainant

The Complainant says that it has rights in the trademark THOUGHTWORKS, to which the disputed domain name is identical or confusingly similar. In the determination of confusing similarity, the generic Top-Level Domain (“gTLD”), in this instance “.live”, is normally disregarded. The disputed domain name then incorporates the entirety of the Complainant’s trademark and is therefore identical and confusingly similar. If the gTLD “.live” were to be taken into account, confusing similarity to the Complainant’s trademark would be increased, because of the Complainant’s “ThoughtWorks Live” promotional series.

The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant asserts a prima facie case to the effect that it has no affiliation with the Respondent, who has not been licensed or granted consent to use the Complainant’s trademark.

The Complainant says it is for the Respondent to rebut the Complainant’s prima facie case in respect of rights or legitimate interests in the disputed domain name. The Respondent’s use of the disputed domain name cannot be for a bona fide offering of goods or services because it has been redirected to the Complainant’s website and therefore used to impersonate the Complainant. Furthermore the Respondent is not commonly known by, and has not acquired any trademark rights in, the disputed domain name, and there is no evidence that it is in use for any legitimate noncommercial or fair purpose.

The Complainant alleges illegal activity or intent on the part of the Respondent, which could not in any way confer rights in the disputed domain name. The Complainant submits that the Respondent would have registered the dispute domain name only for fraudulent or malicious purposes. The Complainant says, on information and belief, that the Respondent has contacted third parties by email impersonating the Complainant, or intends to do so.

The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith, in particular under paragraphs 4(b)(iii) and 4(b)(iv) of the Policy.

The Complainant says its trademark is inherently distinctive and has been well known for over 25 years, including 19 years in India. The Respondent has stated its address to be in India, where the Complainant has a presence. The Respondent therefore knew, or ought to have known, of the Complainant’s trademark, and a simple search would have revealed it. The Respondent’s action in redirecting the disputed domain name to the Complainant’s website indicates, on the balance of probabilities, actual knowledge of the Complainant’s trademark and therefor registration of the disputed domain name in bad faith. The Complainant alleges that, more likely than not, the disputed domain name was registered for fraudulent purposes.

The Complainant contends that the disputed domain name has been used in bad faith in various respects. Previous UDRP panels have found that, as here, the registration of a domain name confusingly similar to a trademark by an entity having no relationship to that trademark is itself sufficient to be evidence of bad faith registration and use. It may be inferred that the Respondent registered the disputed domain name with intent to disrupt the Complainant’s business.

The Complainant says the Respondent is using the disputed domain name with intent to create confusion with the Complainant’s trademark for commercial gain. The redirection of the disputed domain name to the Complainant’s website is an action that has been found by UDRP panels in other previous cases to constitute use in bad faith, in part because the Respondent has control over the redirection and represents a continuing threat to do so. The disputed domain name has been used to impersonate the Complainant, constituting use in bad faith.

The Complainant has cited a number of previous decisions under the Policy that it considers should support its position.

The Complainant requests the transfer of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable dispute resolution provider, in compliance with the Rules, that:

“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) you have no rights or legitimate interests in respect of the domain name; and

(iii) your domain name has been registered and is being used in bad faith”.

The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.

A. Identical or Confusingly Similar

On the basis of the trademark registration evidence produced by the Complainant, the Panel is satisfied that the Complainant has rights in the registered trademark THOUGHTWORKS in accordance with paragraph 4(a)(i) of the Policy.

The disputed domain name is <thoughtworks.live>. Disregarding the gTLD “.live”, the disputed domain name is identical to the Complainant’s registered trademark and the Panel finds for the Complainant under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has stated a prima facie case to the effect that the Respondent is not in any way connected with the Complainant or authorised to use the Complainant’s trademark, and has no rights or legitimate interests in the disputed domain name.

Under paragraph 4(c) of the Policy the Respondent may contest the Complainant’s prima facie case in order to establish rights or legitimate interests in a disputed domain name by demonstrating, without limitation:

“(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial 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”.

The Respondent has not contested the Complainant’s prima facie case under paragraphs 4(c)(i), (ii) or (iii) of the Policy or otherwise. Whilst the Respondent was not obliged to file a Response, the Panel may, if no satisfactory explanation of the Respondent’s position is forthcoming, “draw such inferences therefrom as it considers appropriate” (paragraph 14(b) of the Rules). The Panel cannot conceive of any way in which the Respondent is likely to have rights or legitimate interests in the disputed domain name and finds for the Complainant under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainant is required to prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists certain circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(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 on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location”.

Complaints do not necessarily fit precisely within the illustrative circumstances of paragraph 4(b) of the Policy and bad faith may be found alternatively.

According to the evidence, a substantial part of the Complainant’s promotional effort has been a series of conventions under the theme “ThoughtWorks Live”, including “ThoughtWorks Live India 2019”. Confusing similarity to the Complainant’s trademark THOUGHTWORKS was found in section 6A above irrespective of the presence of the gTLD “.live”, the word “live” not being part of any of the Complainant’s registered trademarks. Although the gTLD need not normally be taken into account, it can be. In this instance it is apparent that the gTLD is not the usual mere technicality such as “.com” and that it is far more than a coincidence that the disputed domain name, by being registered in the “.live” gTLD, thereby matches the Complainant’s promotional theme “ThoughtWorks Live” to all intents and purposes.

The video screen capture made on May 27, 2020, produced in evidence, recorded the disputed domain name, when typed into an Internet browser, being redirected to the Complainant’s own website at “www.thoughtworks.com”. The Respondent has not offered any explanation. On the totality of the evidence, the disputed domain name, in which the Respondent has been found to have no rights or legitimate interests, is not only identical to the Complainant’s trademark, but has been registered in a gTLD that can only compound confusion with the Complainant. The Panel finds it more probable than not that a significant proportion of visitors to the disputed domain name, finding themselves viewing the Complainant’s authentic website, would be confused into believing erroneously that the disputed domain name belonged to the Complainant. The Panel finds it implausible, on the balance of probabilities, that the Respondent has invested in the disputed domain name and engaged in the aforementioned deception for any purpose other than commercial gain. The Respondent’s ultimate plan for the disputed domain name can be speculated upon, but it is not necessary to do so. The evidence is sufficient for the Panel to find, on the balance of probabilities, that the disputed domain name has been registered and used with intent to cause confusion with the Complainant’s trademark for the Respondent’s commercial gain within the contemplation of paragraph 4(b)(iv) of the Policy. The Panel finds the disputed domain name to have been registered and used in bad faith under paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <thoughtworks.live> be transferred to the Complainant.

Dr. Clive N.A. Trotman
Sole Panelist
Date: July 10, 2020

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