McGuireWoods LLP v. Meaghan Downey NA
Claim Number: FA1911001871964
Complainant is McGuireWoods LLP (“Complainant”), represented by Amanda L. DeFord of McGuireWoods LLP, Virginia, USA. Respondent is Meaghan Downey NA (“Respondent”), United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mcguireewoods.com>, registered with Wild West Domains, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 19, 2019; the Forum received payment on November 19, 2019.
On November 20, 2019, Wild West Domains, LLC confirmed by e-mail to the Forum that the <mcguireewoods.com> domain name is registered with Wild West Domains, LLC and that Respondent is the current registrant of the name. Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 21, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 11, 2019 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@mcguireewoods.com. Also on November 21, 2019, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On December 16, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a well-respected international law firm. Complainant has rights in the trademark MCGUIREWOODS through its use in commerce since 1966 and its registration of the mark with the United States Patent and Trademark Office (“USPTO”) and the trademark offices of other countries dating back to 2001. Respondent’s <mcguireewoods.com> domain name, registered on November 6, 2019, is identical or confusingly similar to Complainant’s mark. The <mcguireewoods.com> domain name merely adds an extra letter “e” to Complainant’s mark as well as the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <mcguireewoods.com> domain name. There is no evidence that Respondent is commonly known by the disputed domain name and Complainant has never granted Respondent license or other rights to use the mark. Respondent also does not use the domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. The <mcguireewoods.com> domain name fails to resolve to an active website. However, Respondent uses the domain name to send emails mimicking Complainant’s employees in furtherance of a financial phishing scam.
Respondent registered and uses the <mcguireewoods.com> domain name in bad faith. Respondent uses the disputed domain names to conduct a financial phishing scam targeting Complainant via email. Respondent registered the <mcguireewoods.com> domain name with Complainant squarely in mind.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the disputed domain name was registered and is being used by Respondent in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant asserts rights in the MCGUIREWOODS mark based on registration with the USPTO and other trademark offices around the world. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”) Complainant provides a copy of its USPTO registration certificate. Accordingly, the Panel finds that Complainant has established rights in the MCGUIREWOODS mark for the purposes of Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <mcguireewoods.com> domain name is identical or confusingly similar to the MCGUIREWOODS mark. The <mcguireewoods.com> domain name adds the letter “e” to Complainant’s mark and uses the “.com” generic top-level domain (“gTLD”). Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See Coachella Music Festival, LLC v. Domain Administrator / China Capital Investment Limited, FA 1734230 (Forum July 17, 2017) (“The addition of letters—particularly of those that create a common misspelling—fails to sufficiently distinguish a domain name from a registered mark.”). Also, use of the “.com” gTLD does not reduce confusion here. See MTD Products Inc v. Mike Kernea / Skyline, FA 1775278 (Forum Apr. 19, 2018) (“The mere addition of a gTLD is inconsequential and does not avoid a finding of identity.”) The Panel therefore finds that the disputed domain name is confusingly similar to the MCGUIREWOODS mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Should it succeed in that effort, the burden then shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant contends that Respondent has no rights or legitimate interests in the <mcguireewoods.com> domain name as there is no evidence that Respondent is commonly known by the disputed domain name and Complainant has never granted Respondent license or other rights to use the MCGUIREWOODS mark. WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding that a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated that the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the <mcguireewoods.com> domain name lists the registrant as “Meaghan Downey NA.” Furthermore, there is no other evidence to suggest that Respondent in known otherwise or that it was authorized to use the MCGUIREWOODS mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant next argues that Respondent does not use the <mcguireewoods.com> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as the disputed domain name fails to resolve to an active website. The failure to actively use a disputed domain name will typically not be held up as a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name). Complainant provides a screenshot of the web page that resolves from the disputed domain name and this shows a mostly blank page that displays “Gateway Timeout” and “server error” messages. Therefore, the Panel finds that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or legitimate noncommercial or fair user per Policy ¶ 4(c)(iii).
Complainant also argues that Respondent uses the <mcguireewoods.com> domain name to send emails in furtherance of a financial phishing scam. Passing oneself off as an employee of a complainant in furtherance of an email phishing scheme is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or legitimate noncommercial or fair user per Policy ¶ 4(c)(iii). See Emerson Electric Co. v. Adilcon Rocha, FA 1735949 (Forum July 11, 2017) (finding that respondent’s attempt to pass itself off as the complainant through emails does not constitute a bona fide offering of goods or services and, as such, respondent lacked rights or legitimate interests in the disputed domain name); see also DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (”Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”). Complainant provides copies of emails in which Respondent uses an email address associated with the disputed domain name in furtherance of a phishing scheme. Respondent seeks to impersonate one of Complainant’s employees by using an email address that mimics that employee’s legitimate address. The content of the emails clearly demonstrates Respondent’s attempt at having another one of Complainant’s employees deposit funds into a bank account specified by Respondent. Based upon these facts, the Panel finds that Respondent does not make a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name per Policy ¶ 4(c)(iii).
Complainant argues that Respondent registered the <mcguireewoods.com> domain name with Complainant squarely in mind. Actual knowledge of a complainant’s rights in a mark prior to registering the disputed domain name is firm ground upon which to support a claim of bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“the Panel here finds actual knowledge through the name used for the domain and the use made of it.”) Here, the Complaint asserts that as a result of “extensive advertising and promotion of its services as well as the significant number of clientele the firm represents”, and due to “favorable industry acceptance and recognition”, its MCGUIREWOODS mark has gained strong recognition amongst the relevant consuming public and trade. However, Complainant submits no evidence to support these claims other than a copy of its USPTO trademark registration and a single screenshot of a page from its own website showing an image of an individual next to the words “Tried-And-True Discovery.” As trademark registration certificates do not attest to the public recognition of their marks and a single webpage screenshot with very little text on it speaks only to a small element of Complainant’s promotional efforts, the Panel is unable to determine, from the submitted evidence, the scope of the mark’s reputation.
However, passing oneself off as a complainant via email can demonstrate actual knowledge of the trademark rights of a complainant thus supporting bad faith registration per Policy ¶ 4(a)(iii). See Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum Jan. 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”) Complainant argues that based on Respondent’s targeting of Complainant through phishing emails, copies of which have been submitted into evidence, Respondent had actual knowledge of Complainant’s rights in the MCGUIREWOODS mark. Therefore, the Panel finds it more likely than not that Respondent had actual knowledge of Complainant’s rights in its mark prior to registration of the disputed domain name.
Complainant next asserts that Respondent registered and uses the <mcguireewoods.com> domain name in bad faith as Respondent has sought to conduct a financial scam targeting Complainant via an email adderss that incorporates the disputed domain name. Passing oneself off as a complainant via email in furtherance of fraud can evince bad faith registration and use per Policy ¶¶ 4(b)(iii) and (iv). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the <abbuie.com> domain name to impersonate Complainant’s CEO. Such use is undeniably disruptive to Complainant’s business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii), and/or Policy ¶ 4(b)(iv)”); see also Qatalyst Partners LP v. Devimore, FA 1393436 (Forum July 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use per Policy ¶ 4(b)(iv)). Complainant provides copies of emails sent to one of Complainant’s employees in which Respondent uses an email address associated with the disputed domain names to impersonate another of Complainant’s employees in furtherance of a phishing scheme seeking to have funds deposited in a bank account designated by Respondent. It is thus clear to the Panel that Respondent registered and uses the disputed domain names in bad faith per Policy ¶¶ 4(b)(iii) and (iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mcguireewoods.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: December 17, 2019
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