Traurig, LLP and Greenberg Traurig of
Claim Number: FA0806001212889
Complainant is Greenberg
Traurig, LLP and Greenberg Traurig
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <greenbergtrauriglaw.com>, registered with Godaddy.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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 27, 2008; the National Arbitration Forum received a hard copy of the Complaint on June 30, 2008.
On June 27, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <greenbergtrauriglaw.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On July 7, 2008, a Notification of
Complaint and Commencement of Administrative Proceeding (the "Commencement
Notification"), setting a deadline of July 28, 2008
by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to firstname.lastname@example.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 31, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <greenbergtrauriglaw.com> domain name is confusingly similar to Complainant’s GREENBERG TRAURIG mark.
2. Respondent does not have any rights or legitimate interests in the <greenbergtrauriglaw.com> domain name.
3. Respondent registered and used the <greenbergtrauriglaw.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Greenberg Traurig, LLP, is an international
full-service law firm with more than 1,750 attorneys and governmental affairs
professionals in the
Respondent registered the <greenbergtrauriglaw.com> domain name on June 21, 2008, and is using the disputed domain name to resolve to a website that consists entirely of an unauthorized copy of Complainant’s website.
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."
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
The Panel finds that Complainant’s USPTO registration of the
GREENBERG TRAURIG mark confers upon Complainant sufficient rights in the mark
under Policy ¶ 4(a)(i). See
Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12,
2006) (holding that the complainants established rights in marks because the
marks were registered with a trademark authority); see also Reebok Int’l Ltd. v.
Respondent’s <greenbergtrauriglaw.com> domain name merely includes Complainant’s entire and unaltered GREENBERG TRAURIG mark while adding the generic and descriptive word “law” and the generic top-level domain (“gTLD”) “.com.” TLD additions are considered irrelevant under the UDRP. Moreover, when a generic word is added to a mark that actually describes the trademark holder’s business, panels are consistent in finding that the disputed domain name is confusingly similar to the mark. To this end, Complainant operates a law firm. That Respondent added the word “law” to the mark in the disputed domain name indicates a trite and stale attempt to distinguish the disputed domain name, and as such this attempt utterly fails. Therefore, the Panel finds that the <greenbergtrauriglaw.com> domain name is confusingly similar to Complainant’s GREENBERG TRAURIG mark under Policy ¶ 4(a)(i). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark); see also Miller Brewing Co. v. Domain Active Pty. Ltd., FA 243606 (Nat. Arb. Forum Apr. 23, 2004) (finding that the <millerbeers.com> domain name was confusingly similar to the complainant’s MILLER mark, because “[t]he addition of a descriptive term that describes Complainant’s business to Complainant’s registered mark, does not remove the domain from the realm of confusing similarity with regard to Policy ¶ 4(a)(i).”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Because the Panel finds that Complainant has met its burden of setting forth a prima facie case supporting its allegations that Respondent lacks rights and legitimate interests in the <greenbergtrauriglaw.com> domain name, Respondent receives the burden of showing that it does have rights or legitimate interests. See Document Techs., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO June 6, 2000) (“Although Paragraph 4(a) of the Policy requires that the Complainant prove the presence of this element (along with the other two), once a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name.”); see also Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant under Policy ¶ 4(c), the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name).
There is no evidence in the record suggesting that Respondent is or ever was commonly known by the disputed domain name. The WHOIS information lists Respondent as “Greenberg Traurig,” however there is no corroborating information that would solidify this listing. Moreover, Complainant alleges that it has not given Respondent license or permission to use its mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name).
Respondent is using the disputed domain name to resolve to a website that patently copies Complainant’s own website content. Complainant alleges that Respondent is using this device to conduct fraudulent activity such as “spamming activities.” Without any response from Respondent to contradict this assertion, the Panel finds that Respondent has conducted itself in a deceptive and fraudulent manner, intending to carry out some nefarious scheme upon unsuspecting Internet users. The Panel characterizes this activity as phishing, which describes attempts to glean Internet user information that should remain private. The Panel therefore finds that Respondent has not made a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Allianz of Am. Corp. v. Bond, FA 690796 (Nat. Arb. Forum June 12, 2006) (holding that the respondent’s use of the <allianzcorp.biz> domain name to fraudulently acquire the personal and financial information of Internet users seeking Complainant’s financial services was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)); see alsoHOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004) (finding that a domain name that “is confusingly similar to Complainant’s mark, redirects Internet users to a website that imitates Complainant’s website, and is used to acquire personal information from Complainant’s potential associates fraudulently” does not fall within the parameters of Policy ¶¶ 4(c)(i) or (iii)).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s confusingly similar disputed domain name resolves to a website that deceptively imitates Complainant’s own website, presumably for commercial gain. The Panel finds that Respondent’s manipulation of confusion regarding Complainant’s mark constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002) ("While an intent to confuse consumers is not required for a finding of trademark infringement, intent to deceive is strong evidence of a likelihood of confusion.").
Respondent has engaged in an exercise of phishing. The disputed domain name serves no other
purpose than to route Internet users seeking Complainant’s legal services to a
website that mimics Complainant’s own website.
Presumably, Respondent is conducting itself in such a manner for some
commercial benefit, whether it is realized through the receipt of personal
Internet user data, or by some other disreputable design. The Panel finds that Respondent’s attempts to
take advantage of the unsuspecting Internet public in order to create such
disarray through its deceptive and fraudulent disputed domain name and
corresponding website is clear evidence of its bad faith registration and use
under Policy ¶ 4(a)(iii). See Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum
Mar. 29, 2004) (“The domain name <billing-juno.com> was registered and
used in bad faith by using the name for fraudulent purposes.”); see also Wells Fargo & Co. v.
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <greenbergtrauriglaw.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: August 6, 2008
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