national arbitration forum

 

DECISION

 

Greenberg Traurig, LLP and Greenberg Traurig of New York, P.C. and Greenberg Traurig, P.A. v. Louis Zweifach

Claim Number: FA0907001271922

 

PARTIES

Complainant is Greenberg Traurig, LLP and Greenberg Traurig of New York, P.C. and Greenberg Traurig, P.A. (“Complainant”), represented by Paul D. McGrady, of Greenberg Traurig, LLP, Illinois, USA.  Respondent is Louis Zweifach (“Respondent”), Florida, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <greenbergtraurigharassment.com>, registered with Godaddy.com, Inc.

 

PANEL

The undersigned certifies that he as acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

Louis E. Condon as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on July 2, 2009; the National Arbitration Forum received a hard copy of the Complaint on July 7, 2009.

 

On July 2, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <greenbergtraurigharassment.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 8, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 28, 2009 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 postmaster@greenbergtraurigharassment.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On August 3, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <greenbergtraurigharassment.com> domain name is confusingly similar to Complainant’s GREENBERG TRAURIG mark.

 

2.      Respondent does not have any rights or legitimate interests in the <greenbergtraurigharassment.com> domain name.

 

3.      Respondent registered and used the <greenbergtraurigharassment.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Greenberg Traurig, LLP, Greenberg Traurig of New York, P.C., and Greenberg Traurig, P.A. (collectively, “Complainant”) comprise an international, full-service law firm with more than 1,800 attorneys and governmental affairs professionals in the United States, Europe, and Asia.  Complainant is the owner of the GREENBERG TRAURIG mark, registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,810,539 issued February 3, 2004).  Complainant specializes in harassment, intellectual property, and business law. 

 

Respondent registered the <greenbergtraurigharassment.com> domain name on March 30, 2009.  The disputed domain name resolves to a website featuring click-through advertisement links that promote competing legal services and law firms dealing with harassment and employment law. 

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant has established rights in the GREENBERG TRAURIG mark under Policy ¶ 4(a)(i) based Complainant’s registration of the mark with the USPTO.  See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)). 

 

Complainant contends that Respondent’s <greenbergtraurigharassment.com> domain name is confusingly similar to its GREENBERG TRAURIG mark under Policy ¶ 4(a)(i).  The disputed domain name incorporates Complainant’s GREENBERG TRAURIG mark in its entirety with the only modifications being the omission of the space between the terms, the addition of the descriptive term “harassment,” and the affixation of the generic top-level domain “.com.”  The term “harassment” refers to employment law and harassment lawsuits and thus, is descriptive of Complainant’s business.  The Panel concludes that these alterations are insufficient to negate a finding of confusing similarity pursuant to Policy ¶ 4(a)(i).  Therefore, the Panel finds that Respondent’s <greenbergtraurigharassment.com> domain name is confusingly similar to Complainant’s GREENBERG TRAURIG mark under Policy ¶ 4(a)(i).  See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described the complainant’s financial services business, as well as a gTLD, did not sufficiently distinguish the respondent’s disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i)); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names.  Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”).  

 

Complainant has satisfied Policy ¶ 4(a)(i). 

 

Rights or Legitimate Interests

 

At the outset, Complainant must make a prima facie showing that Respondent lacks rights and legitimate interests in the disputed domain name.  The burden then shifts to Respondent to establish that it has rights or legitimate interests in the disputed domain name.  The Panel finds that Complainant has sufficiently made its prima facie showing under Policy ¶ 4(a)(ii).  Respondent has failed to respond to the allegations against it.  Consequently, the Panel may infer that Respondent lacks rights and legitimate interests in the disputed domain name.  See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent.  In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).  The Panel will however, examine the record to determine whether Respondent has any rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). 

 

The disputed domain name resolves to a website displaying click-through links that further resolve to the websites of Complainant’s competitors in the legal services industry.  Complainant contends , and the Panel agrees, that Respondent’s use of a confusingly similar domain name to redirect Internet users to a website displaying links to competing law firms is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii), respectively.  See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (concluding that using a confusingly similar domain name to divert Internet users to competing websites does not represent 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)). 

 

Furthermore, Complainant contends that Respondent is not commonly known by the <greenbergtraurigharassment.com> domain name under Policy ¶ 4(c)(ii) and that Respondent is not authorized to use Complainant’s GREENBERG TRAURIG mark.  The pertinent WHOIS information identifies the registrant as “Louis Zweifach.”  This information implies that Respondent is not commonly known by the disputed domain name in any derivation, and there is no evidence in the record to suggest otherwise.  Therefore, the Panel concludes that Respondent is not commonly known by the <greenbergtraurigharassment.com> domain name pursuant to Policy ¶ 4(c)(ii).  See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’  Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). 

 

Complainant has satisfied Policy ¶ 4(a)(ii). 

 

Registration and Use in Bad Faith

Respondent is using the disputed domain name to resolve to a website displaying click-through links promoting law firms that are in direct competition with Complainant.   The Panel finds that Respondent’s use of the confusingly similar <greenbergtraurigharassment.com> domain name to divert Internet users likely disrupts Complainant’s business and thus, constitutes bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iii).  See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).

Furthermore, Respondent is using the disputed domain name to presumably collect click-through fees.  The Panel finds that Respondent’s use of the confusingly similar domain name creates a likelihood of confusion as to Complainant’s affiliation with the disputed domain name.  Respondent is likely profiting from that confusion through the presumed receipt of fees.  Therefore, the Panel finds that Respondent’s actions constitute bad faith registration and use of the <greenbergtraurigharassment.com> domain name under Policy ¶ 4(b)(iv).  See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees.   Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).

            Complainant has satisfied Policy ¶ 4(a)(iii). 

DECISION

Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.

 

Accordingly, it is Ordered that the <greenbergtraurigharassment.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Louis E. Condon, Panelist

Dated:  August 13, 2009

 

 

Click Here to return to the main Domain Decisions Page.

 

Click Here to return to our Home Page

 

National Arbitration Forum