URS DEFAULT DETERMINATION
Global Name Services LLP v. LLC GAS AND OIL INVEST et al.
Claim Number: FA2006001901545
DOMAIN NAME
<dlapiper.pro>
PARTIES
Complainant: Global Name Services LLP of Wilmington, DE, United States of America | |
Complainant Representative: DLA Piper LLP (US)
Ryan C. Compton of Washington, DC, United States of America
|
Respondent: LLC GAS AND OIL INVEST of Moscow Moscow, Moscow, RU | |
REGISTRIES and REGISTRARS
Registries: Afilias Limited | |
Registrars: OnlineNIC, Inc. |
EXAMINER
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Examiner in this proceeding. | |
Natalia Stetsenko, as Examiner |
PROCEDURAL HISTORY
Complainant Submitted: June 24, 2020 | |
Commencement: June 24, 2020 | |
Default Date: July 9, 2020 | |
Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules"). |
RELIEF SOUGHT
Complainant requests that the domain name be suspended for the life of the registration. |
STANDARD OF REVIEW
Clear and convincing evidence. |
FINDINGS and DISCUSSION
Findings of Fact: The Complainant has established rights in the "DLA Piper" trademark based on its US registration No. 3,214,009, registered on February 27, 2007. The trademark use has been confirmed by screenshots of Complainant's operating official Internet website at <dlapiper.com>. |
Even though the Respondent has defaulted, URS Procedure 1.2.6, requires Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended.
[URS 1.2.6.1] The registered domain name(s) is/are identical or confusingly similar
to a word mark: Determined: Finding for Complainant The disputed domain name is confusingly similar to the Complainant's mark because it incorporates its "DLA Piper" registered mark in its entirety, simply adding the gTLD ".pro". The general consensus is that adding a gTLD is not sufficient to escape the finding that the domain name is confusingly similar to the registered mark. Moreover, the gTLD in which the domain was registered further aggravates the likelihood of confusion. Given the Complainant's worldwide recognition in the field of legal services, hence the Complainant's mark being a strong source identifier, an Internet user would quite naturally be deceived into believing that the disputed domain name is associated with Complainant. [URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name. Determined: Finding for Complainant The Registrant is in no way related to the Complainant's business. Furthermore, the Complainant has not authorized the Respondent to register and use the disputed domain. As follows from the evidence on the case record, Respondent is passively holding the domain, which does not generate rights or legitimate interests (See, Philip Morris USA Inc. v. Gabriel Hall, WIPO Case No. D2015-1779: "Passively holding a domain name does not constitute a bona fide offering of goods or services."). Instead, the domain is put on sale, which is disruptive to Complainant's business. Respectively, the Respondent has no rights or legitimate interests in the domain name.
[URS 1.2.6.3] The domain name(s) was/were registered and is being used in bad faith.
Determined: Finding for Complainant In view of the reputation associated with the Complainant's trademarks and Complainant's presence in Russia, the country where Respondent is based, and also given the choice of the gTLD to register the domain, it is hard to believe that the domain name in question was chosen and registered for any other purpose than taking unfair advantage over the goodwill and reputation associated with the mark, and that Respondent was not aware of Complainant's mark. Previous panels found bad faith in cases where Complainant's name was famous or Respondent had knowledge of the mark. SeeCho Yong Pil v. SinwooYoon , WIPO Case No. D2000-0310 (WIPO, June 19, 2000) ("The Panel determines that the Respondent has registered the domain name in bad faith because the Complaint's name was famous at the time of registration of the domain name... "). The Panel further finds that Respondent uses the disputed domain name in bad faith, because the domain name incorporating the "DLA Piper" mark creates confusion and constitutes an intentional attempt to attract for commercial gain, Internet users to Respondent's web site, by creating a likelihood of confusion with the Complainant's Marks as to the source, sponsorship, affiliation, or endorsement of Respondent's web site or of a product or service on that web site. FINDING OF ABUSE or MATERIAL FALSEHOOD The Examiner may find that the Complaint was brought in an abuse of this proceeding or that it contained material falsehoods. The Examiner finds as follows:
DETERMINATION
After reviewing the parties submissions, the Examiner determines that the Complainant
has demonstrated all three elements of the URS by a standard of clear and convincing
evidence; the Examiner hereby Orders the following domain name(s) be SUSPENDED for
the duration of the registration:
|
Natalia Stetsenko Examiner
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page