Baker & Hostetler LLP v. Rafel Benitez
Claim Number: FA2206002001865
Complainant is Baker & Hostetler LLP ("Complainant"), represented by Deborah Wilcox of Baker & Hostetler LLP, Ohio, USA. Respondent is Rafel Benitez ("Respondent"), Spain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bakerlaws.com>, registered with Name.com, Inc.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 25, 2022; the Forum received payment on June 25, 2022.
On June 27, 2022, Name.com, Inc. confirmed by email to the Forum that the <bakerlaws.com> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, Inc. 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 July 5, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 25, 2022 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@bakerlaws.com. Also on July 5, 2022, the Written Notice of the Complaint, notifying Respondent of the email 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 July 29, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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 is one of America's largest law firms, with 17 offices and more than 1,000 attorneys nationwide. Complainant was founded by Newton D. Baker in 1916 and has used BAKER HOSTETLER and other BAKER-formative marks in connection with its business for many years. Complainant owns various United States trademark registrations for BAKER HOSTETLER (with and without the space) issued as early as 2007, along with registrations for several other related marks. The shortened form BAKER is often used to refer to Complainant. Complainant has various brands and trademark registrations that focus on that shortened form, including BAKERHOSTS and INCUBAKER, and uses <bakerlaw.com> as its primary domain name.
Respondent registered the disputed domain name <bakerlaws.com> via a privacy registration service in May 2022. Complainant alleges that the underlying registration data provided by Respondent, revealed in connection with this proceeding, is inaccurate or fictitious. The domain name is being used in email messages containing Complainant's BAKERHOSTETLER mark and other references to Complainant, in apparent attempts to obtain information or money under false pretenses. Complainant states that Respondent is not commonly known by the domain name and is not authorized or licensed to use Complainant's mark.
Complainant contends on the above grounds that the disputed domain name <bakerlaws.com> is confusingly similar to BAKERHOSTETLER and Complainant's other BAKER-formative marks; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used 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:
(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 Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
Complainant owns trademark registrations for BAKERHOSTETLER and other BAKER-formative marks. Complainant uses <bakerlaw.com> as its primary domain name and is often referred to by the shortened form BAKER. The disputed domain name <bakerlaws.com> incorporates the BAKER portion of Complainant's mark. The domain name adds the generic term "laws," which is nearly identical to the term used in Complainant's own domain name, and the ".com" top-level domain. These alterations do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., Goodwin Procter LLP v. Gayle Fandetti, FA 1738231 (Forum Aug. 8, 2017) (finding <goodwinlaws.com> confusingly similar to GOODWIN, based upon complainant's registered mark GOODWIN PROCTER and its domain name <goodwinlaw.com>). The Panel considers the disputed domain name to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's mark without authorization, and its sole apparent use has been to impersonate Complainant in connection with a fraudulent phishing scheme. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., Goodwin Procter LLP v. Gayle Fandetti, supra (finding lack of rights or interests in similar circumstances).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent'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 [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
The disputed domain name incorporates Complainant's mark without authorization, and it is being used to impersonate Complainant in connection with a fraudulent phishing scheme. Such conduct is indicative of bad faith registration and use under the Policy. See, e.g., Goodwin Procter LLP v. Gayle Fandetti, supra (finding bad faith in similar circumstances). The Panel so finds.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bakerlaws.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: August 1, 2022
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