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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

ThoughtWorks, Inc. v. Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf / SUMARDI SUMARDI

Case No. D2021-1895

1. The Parties

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

The Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / SUMARDI SUMARDI, Cambodia.

2. The Domain Name and Registrar

The disputed domain name <thoughtworks-studios.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 16, 2021. On June 17, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 17, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 18, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on June 22, 2021.

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”).

The Respondent sent informal communications to the Center on June 23, 2021, and June 24, 2021.

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 13, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Parties of the Commencement of Panel Appointment Process on July 14, 2021.

The Center appointed Luca Barbero as the sole panelist in this matter on July 16, 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.

4. Factual Background

The Complainant is a United States company founded in 1993 and specialized in global software consultancy services. The Complainant has more than 8,000 employees in 47 offices located among 17 countries.

The Complainant is the owner of several trademark registrations for THOUGHTWORKS, including the following, as per trademark certificates submitted as annexes to the Complaint:

- United States trademark registration No. 1866548, for THOUGHTWORKS (word mark), filed on May 14, 1993 and registered on December 6, 1994, in international class 35;
- United States trademark registration No. 2361539 for THOUGHTWORKS (word mark), filed on October 23, 1998 and registered on June 27, 2000, in international class 42;
- United States trademark registration No. 4587445 for THOUGHTWORKS (word mark), filed on September 6, 2013 and registered on August 19, 2014, in international class 9;
- United States trademark registration No. 4635415 for THOUGHTWORKS (word mark), filed on September 6, 2013 and registered on November 11, 2014, in international class 42.

The Complainant is also the owner of the domain name <thoughtworks.com>, which was registered on January 20, 1995 and is used by the Complainant to promote its products and services under the trademark THOUGHTWORKS.

For approximately 15 years, the Complainant was the owner of the disputed domain name, which was used to provide information on the Complainant’s case studies on the correspondent website. However, this registration lapsed. Shortly after, the Disputed Domain Name was registered by Respondent.

The disputed domain name was registered on September 25, 2006 by the Complainant, which previously used the disputed domain name to provide its case studies on the correspondent website. The disputed domain name was acquired by the Respondent at the beginning of 2021.

The disputed domain name is currently pointed to an online gambling website featuring the Complainant’s trademark THOUGHTWORKS. Based on the screenshots submitted by the Complainant, which have not been challenged by the Respondent, the website previously displayed also a “menu” section listing the Complainant’s services.

5. Parties’ Contentions

A. Complainant

The Complainant contends that disputed domain name is confusingly similar to the Complainant’s trademark THOUGHTWORKS in which the Complainant has rights as it reproduces the trademark in its entirety with the mere addition of the descriptive term “studios” and the generic Top Level Domain (“gTLD”) “.com”.

With reference to rights or legitimate interests in respect of the disputed domain name, the Complainant states that the Respondent is in no way affiliated with or related to the Complainant, nor is it licensed or otherwise authorized to use the Complainant’s trademark THOUGHTWORKS in a domain name registration or otherwise. The Complainant highlights that it has no relationship with the Respondent that could in any way imply a permission or other right for the Respondent to use the trademark in the disputed domain name and that the Respondent is not commonly known by the disputed domain name nor has the Respondent ever owned any rights in the THOUGHTWORKS mark.

Moreover, the Complainant emphasizes that the Respondent’s use of the disputed domain name cannot constitute a bona fide offering of goods or services as the Respondent is using the disputed domain name to impersonate the Complainant, while also promoting an online gambling website.

The Complainant also contends that, by registering the disputed domain name, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without the intent to misleadingly divert consumers or tarnish the Complainant’s trademark at issue since the disputed domain name incorporates both the Complainant’s trademark and services, implying a high risk of affiliation and impersonation.

With reference to the circumstances evidencing bad faith, the Complainant indicates that, considering the use of the trademark and the content under the “menu” tab on the correspondent website, the Respondent knew about the Complainant and its THOUGHTWORKS trademark, especially considering that a simple online search would have come up with multiple results leading to the Complainant and its services.

The Complainant emphasizes that the use of the disputed domain name in connection with a gambling site is also in itself sufficient evidence of bad faith since there is no legitimate reason for the Respondent’s selection of the disputed domain name other than to deliberately profit from confusing internet users with the Complainant’s THOUGHTWORKS trademark, exploiting the likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the disputed domain name.

Moreover, the Complainant submits that the circumstance that the “menu” page of the website at the disputed domain name also contained a list of the Complainant’s copyrighted materials implies bad faith and intent on the Respondent’s part to impersonate the Complainant in order to disrupt the Complainant’s business, which in itself constitutes bad faith use of the disputed domain name.

B. Respondent

The Respondent did not submit a formal Response.

On June 23, 2021, the Respondent sent an informal email communication to the Center, requesting proof of the Complainant’s rights in the trademark THOUGHTWORKS.

One June 24, 2021, the Respondent sent a second informal email to the Center, asserting that it legally bought the disputed domain name from the concerned Registrar and indicating that it could provide proof of the same, to the Center.

6. Discussion and Findings

According to 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”. Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has established rights over the trademark THOUGHTWORKS based on the trademark registrations cited under section 4 above and the related trademark certificates submitted as annex 5 to the Complaint.

As highlighted in section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the first element functions primarily as a standing requirement, and the threshold test for confusing similarity typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. Moreover, where the relevant trademark is recognizable within a disputed domain name, the addition of additional (generic or descriptive or otherwise) terms does not prevent a finding of confusing similarity under the first element (sections 1.8 of the WIPO Overview 3.0).

In the case at hand, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark THOUGHTWORKS as it reproduces the trademark in its entirety within the gTLD “.com”, which can be disregarded when comparing the similarities between a domain name and a trademark, and the mere addition of the word “studios”, which does not prevent a finding of confusing similarity.

Therefore, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to a trademark in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent may establish rights or legitimate interests in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:

“(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 Panel finds that the Complainant has made a prima facie case and that the Respondent has failed to rebut this or to raise any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name.

The Panel notes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademarks. Furthermore, there is no indication before the Panel that the Respondent is commonly known by the disputed domain name.

In light of the pointing of the disputed domain name to a gambling site featuring the Complainant’s trademark on the one hand, and the “menu” items on the page containing materials misappropriated from the Complainant on the other hand, the Panel finds that the Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services, or a legitimate, noncommercial or fair use without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademark.

Therefore, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in the disputed domain name according to paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires that the Complainant prove that the disputed domain name was registered and is being used by the Respondent in bad faith.

The Panel finds that, in light of the prior registration and use of the Complainant’s trademark THOUGHTWORKS in connection with the Complainant’s services and of the distinctiveness of the Complainant’s trademark entirely reproduced in the disputed domain name, the Respondent very likely registered the disputed domain name, after it was expired, having the Complainant’s trademark in mind.

Furthermore, the circumstance that the disputed domain name has been pointed to a website featuring the Complainant’s trademark and providing, on a “menu” page, information about the Complainants’ services (as highlighted by the screenshots in Annex 6 to the Complaint) demonstrates that the Respondent was indeed well aware of and targeted the Complainant and its trademark.

The Panel also finds that, in view of the Respondent’s use of the disputed domain name to divert users to the website described above, promoting online gambling services and referring also to the Complainant’s trademark and services, the Respondent intentionally attempted to attract Internet users to its website, for commercial gain, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of its website and the services provided therein, according to paragraph 4(b)(iv) of the Policy.

Therefore, the Panel finds that the Complainant has also proven that the Respondent registered and has been using the disputed domain name in bad faith according to 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-studios.com> be transferred to the Complainant.

Luca Barbero
Sole Panelist
Date: July 30, 2021

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