McGuireWoods LLP v. LIUQINGRU
Claim Number: FA2202001982750
Complainant is McGuireWoods LLP (“Complainant”), Virginia, USA. Respondent is LIUQINGRU (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mcguirewoods.xyz> (the “disputed domain name”), registered with Sav.com, LLC (the “Registrar”).
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Lynda M. Braun as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 1, 2022; the Forum received payment on February 1, 2022.
On February 2, 2022, the Registrar confirmed by e-mail to the Forum that the <mcguirewoods.xyz> disputed domain name is registered with Sav.com, LLC and that Respondent is the current registrant of the name. The Registrar has verified that Respondent is bound by the Sav.com, 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 February 2, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 22, 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@mcguirewoods.xyz. Also on February 2, 2022, 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 February 25, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Lynda M. Braun 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a full-service law firm operating in the United States, Europe, and Asia. Complainant has been operating for the past 200 years, gaining respect and goodwill from its numerous clients. Complainant contends that it has rights in the MCGUIREWOODS trademark through its registrations with numerous trademark offices worldwide (e.g., United States Patent and Trademark Office (“USPTO”), United States Reg. No. 2,483,615, registered on August 28, 2001. Moreover, Complainant owns trademark registrations for the MCGUIREWOODS trademark in Benelux, the European Union, Kazakhstan, the United Kingdom, and China (where Respondent allegedly resides)d. The foregoing trademarks will hereinafter collectively be referred to as the “MCGUIREWOODS Mark”.
Complainant also contends that Respondent’s disputed domain name is confusingly similar to Complainant’s MCGUIREWOODS Mark since it incorporates the mark in its entirety, merely adding the generic top-level domain (“gTLD”) “.xyz”. Complainant further claims that Respondent has no rights or legitimate interests in the disputed domain name, and that Respondent registered and is using the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that Complainant holds valid trademark rights in the MCGUIREWOODS Mark, that the disputed domain name is confusingly similar to Complainant’s MCGUIREWOODS Mark, that Respondent lacks rights or legitimate interests in respect of the disputed domain name, and that Respondent registered and is using the disputed domain name 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 disputed domain name should be cancelled or transferred:
(1) the disputed 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 disputed domain name; and
(3) the disputed 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”).
The Panel finds that Complainant has rights in the MCGUIREWOODS Mark through registration with the USPTO in the United States and through registration in other jurisdictions worldwide. Registration of a trademark with multiple trademark offices worldwide is sufficient to establish rights in a mark. See Alibaba Group Holding Limited v. YINGFENG WANG, FA 1568531 (Forum Aug. 21, 2014) (“Complainant has rights in the ALIBABA mark under the Policy through registration with trademark authorities in numerous countries around the world.”). The Panel therefore finds that Respondent has rights in the MCGUIREWOODS Mark under Policy ¶ 4(a)(i).
The Panel further holds that the <mcguirewoods.xyz> disputed domain name is confusingly similar to the MCGUIREWOODS Mark per Policy ¶ 4(a)(i) as the disputed domain name incorporates the mark in its entirety, merely adding the “.xyz” gTLD. Addition of a gTLD to a mark is irrelevant to determining confusing similarity under Policy ¶ 4(a)(i). See Bittrex, Inc. v. Privacy protection service - whoisproxy.ru, FA 1759828 (Forum Jan. 12, 2018) (“The Panel here finds that the <bittrex.market> domain name is identical to the BITTREX mark under Policy ¶ 4(a)(i).”).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been established by Complainant.
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. Under the Policy, Complainant is required to make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, Respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. See 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”).
In this case, Respondent did not carry its burden to come forward with evidence of its rights or legitimate interests in the disputed domain name as it did not submit a response to the Complaint, but given the facts of this case, the Panel finds that Respondent would have been hard pressed to furnish availing arguments had it chosen to respond.
In support, the Panel finds that Respondent is not commonly known by the disputed domain name or any name similar to it, nor has Complainant authorized or licensed Respondent to use its MCGUIREWOODS Mark in the disputed domain name. In addition, Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use.
The Panel also concludes that Respondent does not use the disputed domain name for a bona fide offering of goods and services or legitimate noncommercial or fair use because the landing page to which the disputed domain name resolves offers the disputed domain name for sale for USD 788, which is in excess of Respondent’s out-of-pocket costs for its registration. See Airbnb, Inc. v. xiechunfu, FA1802001770765 (Forum Mar. 7, 2018) (“Offering a confusingly similar domain name for sale to the public suggests a lack of rights and legitimate interests under Policy ¶ 4(a)(ii).”). As a result, the Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain name
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been established by Complainant.
The Panel concludes that Respondent registered and is using the disputed domain name in bad faith.
First, the Panel finds that Respondent registered and uses the disputed domain name in bad faith because it offers the disputed domain name for sale. Evidence of an offer to sell a disputed domain name indicates bad faith registration and use under Policy ¶ 4(b)(i). See Capital One Financial Corp. v. haimin xu, FA 1819364 (Forum Jan. 8, 2019) (“A general offer to sell a domain name can be evidence the respondent intended to make such an offer at the time it registered the name, supporting a finding of bad faith per Policy ¶ 4(b)(i).”). Further, the Complainant offers the disputed domain name for a minimum of USD 788, an amount that is likely in excess of its out-of-pocket costs. This leads the Panel to conclude that the Respondent is leveraging the MCGUIREWOODS Mark for its own profit in bad faith. See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA150600162533 (Forum July 17, 2015) (“A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i).”)
Second, the Panel finds that Respondent has registered and is using the disputed domain name in bad faith because Respondent is attempting to attract, for commercial gain, Internet users to its resolving landing page by creating a likelihood of confusion with Complainant’s MCGUIREWOODS Mark and implies that the disputed domain name is sponsored or endorsed by or affiliated with Complainant.
Third, the Panel finds that Respondent registered and is using the disputed domain name in bad faith because Respondent registered the disputed domain name with actual knowledge of Complainant's rights in the MCGUIREWOODS Mark. Actual knowledge of a complainant’s mark prior to registering a disputed domain name is sufficient to establish bad faith under Policy ¶ 4(a)(iii). Moreover, it strains credulity to think that Respondent did not have actual knowledge of Complainant’s MCGUIREWOODS Mark or of Complainant. Prior knowledge of a complainant’s trademark and use of a disputed domain name that incorporates the trademark is sufficient to find bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (finding actual knowledge due to the domain name chosen and the use made of it); Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s mark at the time of registration).
Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been established by Complainant.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mcguirewoods.xyz> disputed domain name be TRANSFERRED from Respondent to Complainant.
Lynda M. Braun, Panelist
Dated: March 7, 2022
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page