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:
  (i) for which the Complainant holds a valid national or regional registration and that is in current use; or
  (ii) that has been validated through court proceedings; or
  (iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.

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.
  a. Registrant has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of pocket costs directly related to the domain name; or
  b. Registrant has registered the domain name in order to prevent the trademark holder or service mark from reflecting the mark in a corresponding domain name, provided that Registrant has engaged in a pattern of such conduct; or
  c. Registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or
  d. By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant's web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of Registrant's web site or location or of a product or service on that web site or location.

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:


  1. The Complaint was neither abusive nor contained material falsehoods. 

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:

  1. dlapiper.pro

 

Natalia Stetsenko
Examiner
Dated: July 14, 2020

 

 

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