Ellenoff Grossman & Schole LLP v. Demarques Saulberry
Claim Number: FA2112001978432
Complainant is Ellenoff Grossman & Schole LLP (“Complainant”), represented by Atul R. Singh of Ellenoff Grossman & Schole LLP, New York, USA. Respondent is Demarques Saulberry (“Respondent”), Nebraska, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <egs-llp.com>, which is registered with Wild West Domains, LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 27, 2021; the Forum received payment on December 27, 2021.
On December 28, 2021, Wild West Domains, LLC confirmed by e-mail to the Forum that the <egs-llp.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 December 29, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 18, 2022, 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@egs-llp.com. Also, on December 29, 2021, 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 January 20, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, founded in 1992, is a law firm based in New York City, New York.
In 2003, Complainant registered the domain name <egsllp.com>, which reflects the first initials of the firm’s name and its status as a limited liability partnership, and which registration remains current.
Complainant, which employs more than 120 attorneys providing its services across a broad spectrum of legal specialties, has acquired common law rights in the EGS mark through its continuous use of the mark in commerce since its inception, including its use of the website resolving from the <egsllp.com> domain name to market its services worldwide.
Respondent registered the domain name <egs-llp.com> on October 26, 2021.
The domain name is confusingly similar to Complainant’s EGS mark.
Respondent is not licensed or otherwise authorized to use the EGS mark.
Respondent has not been commonly known by the disputed domain name.
Respondent does not use the domain name for a bona fide offering of goods or services or any legitimate noncommercial or fair use.
Respondent’s domain name fails to resolve to an active webpage.
Respondent does not have rights to or legitimate interests in the <egs-llp.com> domain name.
Respondent both registered and now uses the domain name in bad faith.
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; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
While it is common for UDRP complainants to demonstrate their standing under the Policy to pursue a complaint against a domain name registrant by reference to rights in a trademark or service mark obtained by registration of the mark with a national or international trademark authority, it is also possible for such a complainant to rely upon rights in a mark acquired under the common law. See, for example, Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum March 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a UDRP complainant can prove that it has common law rights in its mark).
In support of its claim to common law rights in its EGS mark, Complainant submits that:
1. Complainant is a law firm, founded in 1992, which employs more than 120 attorneys who provide its services to clients across a broad spectrum of legal specialties;
2. in 2003, Complainant registered the <egsllp.com> domain name, which registration remains current, and which reflects the first initials of the firm’s name and its status as a limited liability partnership; and
3. since its inception, Complainant has made continuous use of the EGS mark in commerce, including by its use of the website resolving from the <egsllp.com> domain name to market its services worldwide.
Respondent’s failure to refute these contentions permits us to conclude that they are sufficient to establish that Complainant has rights in its EGS mark under the common law, and, therefore, standing to proceed with its Complaint under the provisions of Policy ¶ 4(a)(i). See, for example, loanDepot.com, LLC v. sm goo, FA 1786848 (Forum June 12, 2018):
Complainant’s demonstration of continuous use in commerce and accompanying promotion and media recognition are [,under Policy ¶ 4(a)(i),] adequate to sustain its claim of common law rights in the … marks.
Turning to the core question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <egs-llp.com> domain name is confusingly similar to Complainant’s EGS trademark. The domain name incorporates the mark in its entirety, with only the addition of a hyphen (-) and the initials “llp,” an abbreviation for “limited liability partnership,” a description of Complainant’s form of business organization as reflected in Complainant’s own domain name, plus the generic Top Level Domain (‘gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy.
The hyphen added to Complainant’s mark in creating the domain name is of no consequence to our analysis because a hyphen adds nothing to the meaning, nor does it change the phonetic character, of the result. See, for example, Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum February 18, 2004) (finding that hyphens included in a domain name are irrelevant to an analysis of the question of confusing similarity conducted under Policy ¶ 4(a)(i)).
As to Respondent’s inclusion of the letter combination “llp” in its domain name, this insertion serves to underscore the confusing similarity of the domain name with Complainant’s mark because it describes Complainant’s form of business organization and mimics the content of Complainant’s own official domain name.
Finally, under this head of the Policy, see, for example, Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum September 27, 2002):
[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.
This is because every domain name requires a gTLD or other TLD.
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent has neither rights to nor legitimate interests in the <egs-llp.com> domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c)(i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <egs-llp.com> domain name, and that Complainant has not licensed or otherwise authorized Respondent to use the EGS mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Demarques Saulberry,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s mark in any manner).
We next observe that Complainant asserts, without objection from Respondent, that it uses the <egs-llp.com> domain name to host an e-mail address by which it impersonates employees of Complainant in order fraudulently to obtain confidential billing information for its illicit financial gain. This employment is neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. See, for example, Abbvie, Inc. v. James Bulow, FA 1701075 (Forum November 30, 2016):
Respondent uses the … domain name to pose as Complainant’s CEO by means of email addresses at the confusingly similar domain name in an attempt to determine Complainant’s ability to process a [money] transfer. Using the domain name in this manner is neither a bona fide offering of goods and services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence in the record before us that Respondent uses the disputed <egs-llp.com> domain name to host an e-mail address by which it fraudulently impersonates employees of Complainant in furtherance of a scheme by which it seeks to obtain confidential billing information for its illicit financial gain. Under Policy ¶ 4(b)(iii), this stands as proof of Respondent’s bad faith in registering and using the domain name. See, for example, Chevron Intellectual Property, LLC v. Jack Brooks, FA 1635967 (Forum October 6, 2015) (finding that a respondent’s use of a domain name that was confusingly similar to the mark of a UDRP complainant to impersonate an executive of that complainant in e-mail messages was behavior in opposition to that complainant in the marketplace, and so was indicative of bad faith registration and use of the domain name under Policy ¶ 4(b)(iii)).
We are also convinced by the evidence that the same behavior by Respondent disrupts Complainant’s business, as a consequence of which it illustrates bad faith by Respondent in the registration and use of the domain name under Policy ¶ 4(b)(iv). See, for example, Abbvie, Inc. v. James Bulow, FA 1701075 (Forum November 30, 2016), supra:
Respondent uses the … domain name to impersonate Complainant’s CEO. Such use is undeniably disruptive to Complainant’s business and [therefore] demonstrates [Respondent’s] bad faith [in registering and using the [domain name] pursuant to Policy …¶ 4(b)(iv).
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <egs-llp.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: January 24, 2022
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