McGuireWoods LLP v. Nick Pappan
Claim Number: FA1911001872013
Complainant is McGuireWoods LLP (“Complainant”), represented by Amanda L. DeFord of McGuireWoods LLP, Virginia, USA. Respondent is Nick Pappan (“Respondent”), Michigan, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mcguirewods.com>, registered with Google LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 19, 2019; the Forum received payment on November 19, 2019.
On Nov 19, 2019, Google LLC confirmed by e-mail to the Forum that the <mcguirewods.com> domain name is registered with Google LLC and that Respondent is the current registrant of the name. Google LLC has verified that Respondent is bound by the Google 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@mcguirewods.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 15, 2019 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 claims rights in the MCGUIREWOODS service mark acquired through its ownership its international portfolio of trademark registrations and its extensive use of the mark for almost 20 years in its legal services activities. Complainant currently employs over 1000 lawyers in over 26 offices in the United States and Europe with a wider network of associated colleagues across the world. Complainant has an established web presence and its domain name <mcguirewoods.com> resolves to its principal website.
Complainant submits that the disputed domain name is virtually identical and confusingly similar to its MCGUIREWOODS name and registered trademark. The only difference being the removal of an ‘o’ in the name “Woods” and the addition of the top-level domain of <.com>. Complainant argues that neither the slight misspelling of Complainant’s MCGUIREWOODS mark, nor the inclusion of the <.com> gTLD extension in any way mitigates the risk of confusion.
Complainant submits that Respondent has no rights or legitimate interest in the disputed domain name arguing that Complainant has owned and used the MAGUIREWOODS mark for almost 20 years and has never granted Respondent any right or license to use its service mark, or any misspelling thereof, in commerce for any purposes. Furthermore, Complainant submits that upon information and belief, Respondent is not commonly known by McGuireWoods or “mcguirewods”. Complainant further argues that Respondent is not engaging, and has not engaged, in a bona fide offering of goods or services under, or a fair use of, the disputed domain name because the disputed domain name resolves to an inactive webpage.
Complainant submits that the disputed domain name was registered and is being used in bad faith, as it is almost identical to Complainant’s distinctive MCGUIREWOODS name and mark. Complainant argues that “mcguirewods” has no meaning or reference other than as Complainant’s name and trademark.
Complainant further argues that it is implausible that the disputed domain name was chosen and registered for any reason other than to cause confusion with Complainant’s business and has been registered for the purpose of typosquatting. Complainant refers to a screenshot of the inactive webpage to which the disputed domain name resolves and submits that the passive holding of the disputed domain name by Respondent is evidence of bad faith registration and use.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a legal services firm with an international reputation and is the owner of a portfolio of trademark registrations including U.S. trademark MCGUIREWOODS registration No. 2,483,615, registered on August 28, 2001 for services in international class 42, as well as subsequent registrations its MCGUIREWOODS service mark in Benelux, China, Kazakhstan, United Kingdom and a CTM.
Complainant has an established Internet presence and is the owner of several domain names that incorporate the MCGUIREWOODS Mark, including <mcguirewoods.com>.
The disputed domain name was registered on September 4, 2019 and resolves to an inactive webpage which states: ”DNS error DNS error (the host name of the page you are looking for does not exist). Please check that the host name has been spelled correctly.”
There is no information available about the Respondent except for that provided in the Complaint and the Registrar’s response to the Forum’s request for verification of the registration details of the disputed domain name. The Respondent is not identified in the published WhoIs.
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 has provided convincing evidence of its rights in the MCGUIREWOODS service mark acquired through its ownership of the abovementioned international portfolio of trademark registrations and its extensive use of the mark in the provision of legal services. Complainant has a substantial practice and an Internet presence and currently employs over 1000 lawyers in over 26 offices in the United States and Europe.
As Complainant correctly submits, the disputed domain name is virtually identical and confusingly similar to the MCGUIREWOODS name and mark in which Complainant has rights. The only difference between the domain name and Complainants’ service mark is the removal of an ‘o’ from the name “Woods”. This Panel accepts Complainant’s submissions that neither the slight misspelling of Complainant’s MCGUIREWOODS mark, nor the inclusion of the <.com> gTLD extension in any way mitigates the risk of confusion.
This Panel finds therefore that the disputed domain name is confusingly similar to the trademark MCGUIREWOODS in which Complainant has rights. Complainant has succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interest in the disputed domain name. Complainant has held rights in the MAGUIREWOODS mark for almost 20 years and has never granted Respondent any license or other rights to use its service mark, or any misspelling thereof, in commerce for any purposes. Complainant also asserts that Respondent is not commonly known by McGuireWoods or “mcguirewods”. Complainant also submits that Respondent does not use the disputed domain name for a bona fide offering of goods or services as it does not resolve to an active webpage.
In such circumstances the burden of production shifts to Respondent to prove its rights or legitimate interests. Respondent has not responded to this Complaint and has failed to discharge its burden of production. This Panel finds therefore that on the balance of probabilities, Respondent has no rights or legitimate interests in the disputed domain name and Complainant has succeeded in the second element of the test in Policy ¶ 4(a)(ii).
The disputed domain name is almost identical to Complainant’s MCGUIREWOODS service mark which is a combination of the names McGuire and Woods. This combination has no meaning or reference other than as Complainant’s name and trademark. It is implausible that the disputed domain name was chosen and registered for any reason other than to take predatory advantage of Complainant’s name and mark. The fact that the letter “o” has been omitted so that it was possible to register the disputed domain name when Complainant already owned <mcguirewoods.com> further convinces this Panel that the disputed domain name was registered in bad faith.
It is well established that passive holding of a domain name can be evidence of bad faith registration and use. In the present case, the distinctive character of Complainant’s trademark, Complainant’s international reputation, the fact that Complainant maintains a website to which the almost identical <mcguirewoods.com> resolves, Respondent’s failure to submit a response, and the finding that it is implausible that the disputed domain name could be put to any good faith use, convinces this Panel that the disputed domain name was registered and is being used in bad faith.
This Panel finds that that on the balance of probabilities the disputed domain name was registered for the purpose of typosquatting because it is almost identical to Complainant’s name, mark and Internet domain name <mcguirewoods.com>, as only the letter ‘o’ has been omitted from Complainant’s MCGUIREWOODS name and mark. Furthermore, on the balance of probabilities the disputed domain name was registered and is being passively with an intention of creating a likelihood of confusion with Complainant's mark when the disputed domain name is ever used.
This Panel finds that the disputed domain name was registered and is being used in bad faith and Complainant has therefore also succeeded in the third element of the test in Policy ¶ 4(a)(iii) and is entitled to the reliefs sought.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mcguirewods.com> domain name be TRANSFERRED from Respondent to Complainant.
_________________________
James Bridgeman SC
Panelist
Dated: December 16, 2019
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