Thoughtworks, Inc. v Lisa Labonte

WIPO Case No. D2024-2168

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Thoughtworks, Inc. v. Lisa Labonte

Case No. D2024-2168

1. The Parties

Complainant is Thoughtworks, Inc., United States of America (“United States”), represented by Culhane

Meadows PLLC, United States.

Respondent is Lisa Labonte, United States.

2. The Domain Names and Registrars

The disputed domain name <thoughtworkis.com> is registered with Hosting Concepts B.V. d/b/a
Registrar.eu., and the disputed domain name <thoughtworkis.vip> is registered with NameSilo, LLC (the

“Registrars”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 27, 2024. On communication to the Complainant on May 29, 2024, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on May 29, 2024.
May 28, 2024, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain names. On May 28 and 29, 2024, the Registrars transmitted by email
to the Center the verification responses disclosing registrant and contact information for the disputed domain

names which differed from the named Respondent (Redact for Privacy, PrivacyGuardian.org llc, Whois

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 Respondent of the Complaint,
and the proceedings commenced on May 31, 2024. In accordance with the Rules, paragraph 5, the due
date for Response was June 20, 2024. Respondent did not submit any response. Accordingly, the Center
notified Respondent’s default on June 21, 2024.

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The Center appointed Georges Nahitchevansky as the sole panelist in this matter on June 26, 2024. 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

Complainant, Thoughtworks, Inc., is a global technology consultancy company with 48 offices in 19 countries. Complainant owns and uses the mark THOUGHTWORKS in connection with its services and owns a number of trademark registrations for THOUGHTWORKS around the world. Of particular relevance, here, Complainant owns two word mark registrations for THOUGHTWORKS in the United States (Registration Nos. 1866548 and 2361539), the earliest of which issued to registration in 1994, and a stylized version of THOUGHTWORKS with a slash in front (Registration No. 6843544) that issued to registration on September 13, 2022. Complainant also owns and uses the domain name <thoughtworks.com> to provide information concerning Complainant and its services.

Respondent is an individual who appears to be based in California, United States. The disputed domain names were registered on April 23, 2024. Respondent has used, and continues to use, the disputed domain names for sign in pages that feature the stylized version of Complainant’s THOUGHTWORKS mark and which asks for the entry of a phone number and password.

5. Parties’ Contentions

A. Complainant

Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain names.

Notably, Complainant contends that the disputed domain names incorporate an intentional misspelling of Complainant’s THOUGHTWORKS mark and are being used to impersonate Complainant in bad faith as part of a likely fraudulent scheme to obtain the login information of Complainant’s customers or for some other illegal scheme.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:

(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii)       Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii)      the disputed domain names were registered and are being used in bad faith.

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between

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Complainant’s trademark and the disputed domain names. WIPO Overview of WIPO Panel Views on
Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

Based on the available record, the Panel finds that Complainant has shown rights in the THOUGHTWORKS mark and that the THOUGHTWORKS mark is recognizable within the disputed domain names for purposes of the Policy. WIPO Overview 3.0, section 1.2.1. Indeed, the disputed domain names merely consist of a

misspelling of Complainant’s THOUGHTWORKS mark. Accordingly, the disputed domain names are
confusingly similar to Complainant’s THOUGHTWORKS mark for purposes of the Policy. WIPO Overview

3.0, sections 1.7 and 1.9.

Based on the available record, the Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the available record, the Panel finds that Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain names. Respondent, who has failed to appear in this proceeding, has not rebutted Complainant’s prima facie showing, and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain names such as those enumerated in the Policy or otherwise.

Here, Respondent has only used the disputed domain names as part of what appears to be a fraudulent scheme. Respondent has used the disputed domain names for “Sign In” pages that prominently feature Complainant’s stylized version of the THOUGHTWORKS mark with a slash in front of it. Such impersonation

of Complainant has likely been done to trick unsuspecting consumers into providing their login information or
for some other scheme, and is thus not legitimate. As panels have consistently held, the use of a domain
name for illegal activity such as phishing and related fraud can never confer rights or legitimate interests on a

respondent. WIPO Overview 3.0, section 2.13.1.

Based on the available record, the Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

In the present case, the Panel notes that Respondent has registered and used the disputed domain names which are based on Complainant’s THOUGHTWORKS for web pages that attempt to pass themselves off as official login pages for Complainant and its services. Such actions, which amount to fraud, are opportunistic and in bad faith. WIPO Overview 3.0, section 3.4.

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Having reviewed the record, the Panel finds Respondent’s registration and use of the disputed domain names constitute bad faith under 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 names <thoughtworkis.com> and <thoughtworkis.vip> be transferred to

Complainant.

/Georges Nahitchevansky/
Georges Nahitchevansky
Sole Panelist
Date: July 10, 2024