WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Hugo Enterprises, LLC v. Contact Privacy Inc. Customer 1248652183 / Artemus McClary

Case No. D2021-0003

1. The Parties

The Complainant is Hugo Enterprises, LLC, United States of America (“United States”), represented by Partridge Partners PC, United States.

The Respondent is Contact Privacy Inc. Customer 1248652183, Canada / Artemus McClary, United States.

2. The Domain Name and Registrar

The disputed domain name <hugoenterise.com> (the “Domain Name”) is registered with Google LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 4, 2021. On January 4, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 4, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 7, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on January 8, 2021.

The Center verified that the Complaint together with the amendment to 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 January 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 28, 2021. On January 8, 2021, the Center received an email communication from the Respondent offering to begin settlement talks. On January 15, 2021, the Center received an email communication from the Complainant stating that it does not wish to explore settlement options. The Center notified the commencement of Panel appointment process on February 1, 2021.

The Center appointed Ellen B Shankman as the sole panelist in this matter on February 8, 2021. 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.

On February 9, 2021, the Complainant submitted a supplemental filing regarding, inter alia, the Parties’ settlement discussions. On February 8, 10, and 11, 2021, the Center received email communications regarding, inter alia, potential settlement and the Complainant’s supplemental filing.

4. Factual Background

The Complainant is a company that operates as a holding company for a variety of businesses and provides a variety of services such as financial management services, namely, holding company services.

The date of the Domain Name registration is November 11, 2020.

The trademark HUGO serves as house-mark of the Complainant and is protected as a registered trademark. The Complainant provided evidence of trademark registration for the mark HUGO, United States Trademark Registration No. 5945997 (registered on December 24, 2019, in International Class 36), that predates the date of the Domain Name registration for a variety of financial services.

The Domain Name currently resolves to an error page.

5. Parties’ Contentions

A. Complainant

The Complainant, Hugo Enterprises, LLC, is a company owned by the TD Ameritrade Founder Joe Ricketts (who is also the CEO of the Complainant), operating as a holding company for a variety of businesses. The Complainant was incorporated on October 31, 2005 and adopted the name Hugo Enterprises LLC on August 22, 2006. Since at least as early as September 30, 2008, the Complainant has been using HUGO as a trademark for “Financial management services”.

The Complaint alleges that the Complainant is known in part due to its owner’s fame. The Complainant has been mentioned in a number of publications, including, but not limited to, Fortune, Politico, and Omaha, due in part to the affiliation with its founder, the Complainant’s use of HUGO has become well-known and distinctive.

The Domain Name was registered by the Respondent long after the Complainant’s adoption and use of its corporate name and HUGO Mark. Currently, the Domain Name resolves in an error page. The Complainant claims, it is likely that the Respondent registered the Domain Name to impersonate the Complainant and to send malicious and fraudulent emails to third parties.

Moreover, the addition of “enterise” to the Complainant’s trademark fails to dispel the confusing similarity between the Complainant’s trademark and the Domain Name. If anything, the addition of “enterise” increases the confusing similarity because it appears like the Complainant’s common law HUGO ENTERPRISES trademark and tradename, and “does not eliminate the visual impression that the disputed domain name is associated with” the Complainant.

Further, the Complainant contends that the Respondent’s use of the Domain Name cannot constitute a bona fide offering of goods or services because it resolves to an error page, and reasserts that the Respondent uses the Domain Name to impersonate the Complainant. The only reason the Respondent would have registered the Domain Name and have used it in the foregoing described manner would be to perpetrate fraud or for other malicious purposes. These facts make it more likely than not that the Respondent has contacted third parties via email impersonating the Complainant or intends to do so in the future. The Respondent’s use of the Domain Name evidences an intent to mislead consumers. In light of this, the Respondent cannot have rights or legitimate interests in the Domain Name.

The Complainant also argues that the Respondent “knew or should have known” that its registration of the Domain Name would be identical or confusingly similar to the Complainant’s trademark, which is also evidence of bad faith registration and use. A simple search would have shown the Complainant’s extensive rights in the HUGO and HUGO ENTERPRISES marks. In light of the Complainant’s significant reputation, resulting from the fame of its owner, the Respondent at the time of registration had sufficient constructive notice of the registered HUGO Mark and of the HUGO ENTERPRISES common law rights. Further, it is more likely than not that the Respondent had actual knowledge of the HUGO Mark and HUGO ENTERPRISES trademark when registering the Domain Name. The Respondent’s misspelling of the Complainant’s HUGO ENTERPRISES trademark and tradename shows the Respondent must have had actual knowledge. Thus, when considering the balance of probabilities, it is more likely than not that the Respondent had actual or constructive knowledge of the HUGO and HUGO ENTERPRISES trademarks and that registration of the Domain Name would be identical or confusingly similar to the Complainant’s trademarks, and thus was done in bad faith. The Complainant states there is no legitimate reason for the Respondent’s selection of the Domain Name other than nefarious purposes, and argues that the Respondent’s primary intention was to specifically target the Complainant’s reputation and trademarks to mislead or deceive consumers. In addition, the Respondent also registered the Domain Name primarily for the purpose of disrupting the Complainant’s business.

To summarize the Complaint, the Complainant is the owner of registration for the trademark HUGO, in respect of financial services. The Domain Name is confusingly similar to the trademark owned by the Complainant. By registering the Domain Name that comprises the Complainant’s HUGO trademark in its entirety, with the mere addition of the term “enterise” (a misspelling of “enterprise”), the Respondent has created a domain name that is confusingly similar to the Complainant’s trademark. As such, the Respondent has demonstrated a knowledge of and familiarity with the Complainant’s brand and business. The addition of the term “enterise” to the term “hugo” does not prevent a finding of confusing similarity. Therefore, the Domain Name could be considered virtually identical and/or confusingly similar to the Complainant’s trademark. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Domain Name was registered and is being used in bad faith. Thus, the Respondent’s registration and use of the Domain Name constitutes bad faith registration and use under the Policy, and the Complainant requests transfer of the Domain Name.

On February 9, 2021, the Complainant submitted a supplemental filing regarding, inter alia, the Parties’ settlement discussions.

B. Respondent

The Respondent did not substantively reply to the Complainant’s contentions. However, the Respondent sent several email communications to the Center and Complainant regarding, inter alia, an interest in potential settlement, non-specific claims of good faith registration of the Domain Name, and non-specific claims that the Complaint has no merit.

The Respondent submitted a communication email by the Center on January 8, 2021, asking for the suspension to settle the dispute. The Panel quotes the communication in full for reference below.

“Hello,
In light of this unfamiliar information that my company has received about its (name/domain name) that was purchased and issued lawfully several years ago, I would like to suspend the dispute and begin settlement talks.
Thanks,
Artemus McClary CEO
HUGO Enterprises LLC”.

After the Panel was appointed, the Respondent submitted a communication email by the Center on February 8, 2021. The Panel quotes the communication in full for reference below:

“Hello,
The company domain name was purchased in good faith and is a far cry from the complaint which has no merit on its face.
Thanks,
Michelle McClary
CEO”.

On February 10, 2021, the Respondent sent an email communication regarding the Complainant’s supplemental filing. On February 11, 2021, the Respondent sent an email communication regarding potential settlement.

6. Discussion and Findings

The burden for the Complainant under paragraph 4(a) of the Policy is to prove:

(i) the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and used in bad faith.

Under Section 10(d) of the Rules: “The Panel shall determine the admissibility, relevance, materiality and weight of the evidence.” The Panel has accepted as admissible and relevant all claims and evidence received from the Parties on or before February 8, 2021. The Panel does not consider there to be any exceptional circumstances requiring the consideration of the Complainant’s supplemental filing or later Respondent communications, and further notes that such communications would not affect the outcome of this case.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has satisfactorily proven that it has registered trademark rights for HUGO.

Further, the Panel finds that the Domain Name integrates the Complainant‘s mark HUGO in its entirety with the addition of the descriptive element “enterise” as a deliberate misspelling of “enterprise”, and that the Domain Name is confusingly similar to the Complainant’s trademark. Further, the Panel finds that the mere addition of the term “enterise” to the Domain Name does not prevent a finding of confusing similarity between the Domain Name and the Complainant’s trademark. See Pfizer Inc. v. Asia Ventures, Inc., WIPO Case No. D2005-0256. See also Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110.

Accordingly, the Panel finds that the Complainant has satisfied the first requirement that the Domain Name is identical or confusingly similar to the Complainant’s registered trademark, under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy in turn identifies three non-exclusive means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often-impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name and that it is not related to or affiliated in any way with the Complainant, nor has the Complainant authorized the Respondent to use its trademarks.

The Panel notes that the Respondent’s first email requesting settlement identifies the Respondent as the CEO of Hugo Enterprises LLC and makes the statement that the Domain Name was obtained lawfully. The Panel further notes that in the second email received from the Respondent, the CEO’s identity has changed and there is no reference to Hugo Enterprises LLC. Even taking into account these communications, the Respondent has provided no clear evidence or specific claims of use of “Hugo” or “Hugo Enterprises LLC” as a trademark, company name, or otherwise that would support a finding of rights or legitimate interests in the Domain Name.

Furthermore, the Panel notes the similarity of the Domain Name to both the Complainant’s trademark and company name suggests knowledge of the Complainant and its trademark, as well as an intention to take undue advantage of the reputation of the Complainant and its trademark.

Based on the available record, the Panel finds that the Complainant has established a prima facie case, which was not refuted by the Respondent, and that the Respondent lacks rights or legitimate interests in the Domain Name.

Therefore, the Complainant has satisfied the second requirement that the Respondent has no rights or legitimate interests in the Domain Name, under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel agrees with the Complainant that when considering the balance of probabilities, it is more likely than not that the Respondent had actual or constructive knowledge of the HUGO trademark and that registration of the Domain Name would be identical or confusingly similar to the Complainant’s trademarks. Although no direct evidence was provided that the Respondent impersonated the Complainant or sent malicious and fraudulent emails to third parties, the Panel finds that it is implausible that there could be any legitimate use of this Domain Name.

By registering the Domain Name that comprises the Complainant’s HUGO trademark in its entirety, with the mere addition of the term “enterise”, the Respondent has demonstrated a knowledge of and familiarity with the Complainant’s brand and business. In light of the facts set forth within this Complaint, the Panel finds that it is “not possible to conceive of a plausible situation in which the Respondent would have been unaware of” the Complainant’s brand at the time the Domain Name was registered. See Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000). Further, “it defies common sense to believe that the Respondent coincidentally selected the precise domain without any knowledge of the Complainant and its trademarks.” See Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415 (December 10, 2007).

Furthermore, the lack of active use of the disputed domain name does not prevent a finding of bad faith in the circumstances of this case. See WIPO Overview 3.0, section 3.3. In that regard, the reputation of the Complainant’s trademarks, the choice of additional term in the Domain Name, the similarity of the Domain Name to the Complainant’s company name, the failure of the Respondent to provide any evidence of actual or contemplated good faith use, and the implausibility of any good faith use to which the Domain Name could be put, support a finding of bad faith.

The Panel finds that the Complainant has satisfied the third requirement that the Respondent has registered and is using the Domain Name 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 Domain Name, <hugoenterise.com>, be transferred to the Complainant.

Ellen B Shankman
Sole Panelist
Date: February 18, 2021