The Arns Law Firm, a Professional Corporation v. Paul Dalton
Claim Number: FA1301001480892
Complainant is The Arns Law Firm, a Professional Corporation (“Complainant”), represented by Jonathan Jaffe of Jonathan Jaffe Law, California, USA. Respondent is Paul Dalton (“Respondent”), Great Britain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <arnslawfirm.com>, registered with Cronon AG.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 17, 2013; the National Arbitration Forum received payment on January 17, 2013.
On January 21, 2013, Cronon AG confirmed by e-mail to the National Arbitration Forum that the <arnslawfirm.com> domain name is registered with Cronon AG and that Respondent is the current registrant of the name. Cronon AG has verified that Respondent is bound by the Cronon AG 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 January 22, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 11, 2013 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@arnslawfirm.com. Also on January 22, 2013, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 18, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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" 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 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
1. Complainant is a professional corporation of attorneys licensed to practice law in all California courts and in various federal courts in the United States.
2. Complainant has offered legal services to individuals and consumers since 1981.
3. Complainant’s business name comes from its senior partner, Robert Arns.
4. Complainant has developed a national reputation for its work in nation-wide class action lawsuits, the most recent of which was the world’s largest class action, Fraley v. Facebook, Inc.
a. Fraley v. Facebook, Inc. was recently settled, and notices approved by the U.S. District Court for the Northern District of California started going out to approximately 150,000,000 Facebook users in the United States on January 2, 2013.
b. Shortly thereafter, Respondent registered the <arnslawfirm.com> domain name on January 10, 2013.
5. Complainant has owned and operated the website located at <arnslaw.com> since 1997.
6. Respondent has no connection with Complainant or its senior partner.
7. Respondent does not appear to be an attorney and is not licensed to practice law in California.
8. The <arnslawfirm.com> domain name resolves to a website that is identical to Complainant’s legitimate website, with the exception of the phone and email contact information listed.
9. Respondent intentionally creates confusion by representing that the <arnslawfirm.com> domain name is run by Complainant, when it is, in fact, not.
10. Respondent is using the disputed domain name to send emails to people around the world in an attempt to gain the trust of unsuspecting victims by exploiting Complainant’s goodwill in order to defraud these victims of money.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, The Arns Law Firm, is a professional corporation of attorneys licensed to practice law in all California courts and in various federal courts in the United States. Complainant has offered legal services to individuals and consumers since 1981. Complainant has achieved secondary meaning in its ARNS LAW FIRM mark dating back to 1981.
Respondent, Paul Dalton, registered the <arnslawfirm.com> domain name on January 10, 2013. The <arnslawfirm.com> domain name resolves to a website that is identical to Complainant’s legitimate website, with the exception of the phone and email contact information listed.
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(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.”).
Although Complainant claims rights in its business name, ARNS LAW FIRM, Complainant does not claim that its mark is registered with a government trademark authority such as the United States Patent and Trademark Office. However, rights in a mark can still be established in the absence of a registered trademark through the achievement of secondary meaning. See Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that the Policy does not require that a complainant’s trademark be registered by a government authority or agency in order for the complainant to establish rights in the mark).
Complainant states that it has offered legal services to “individuals and consumers” since 1981. Complainant asserts that it has “a national reputation for nation-wide class actions, the most recent of which was the world’s largest class action, Fraley v. Facebook, Inc.” Complainant claims that notices of the settlement where emailed to approximately 150,000,000 Facebook users in the United States on January 2, 2013. Complainant further contends that the senior partner of the firm, Robert Arns, has been a licensed, practicing attorney continuously since 1975. Complainant alleges that his reputation and earned goodwill is strongly associated with his name and the name of his law firm. Complainant argues that the firm owns the legitimate domain name <arnslaw.com> at which it operates its website. The Panel finds that Complainant has submitted sufficient evidence to establish common law rights in the ARNS LAW FIRM mark under Policy ¶ 4(a)(i) by showing continuous use of the ARNS LAW FIRM mark and the subsequent acquisition of secondary meaning dating back to 1981. See also Stellar Call Ctrs. Pty Ltd. v. Bahr, FA 595972 (Nat. Arb. Forum Dec. 19, 2005) (determining that the complainant established common law rights in the STELLAR CALL CENTRES mark because the complainant demonstrated that its mark had acquired secondary meaning).
The only differences between the <arnslawfirm.com> domain name and the ARNS LAW FIRM mark are the removal of the spaces between the terms and the addition of the generic top-level domain (“gTLD”). The Panel finds that these differences are insignificant under a Policy ¶ 4(a)(i) analysis, thus making the <arnslawfirm.com> domain name identical to the ARNS LAW FIRM mark. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
Complainant claims that Respondent has no connection with either Complainant or its senior partner. Complainant also claims that Respondent does not appear to be an attorney and is not licensed to practice law in California. The WHOIS information for the disputed domain lists Respondent as “Paul Dalton,” which provides no evidence of an association with the disputed domain. The Panel finds that Respondent is not commonly known by the <arnslawfirm.com> domain name pursuant to Policy ¶ 4(c)(ii). See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response).
Complainant contends that Respondent uses the <arnslawfirm.com> domain name to resolve to a website that is identical to Complainant’s legitimate website found at <arnslaw.com>, with the exception of the phone and email contact information listed on Respondent’s site. Complainant asserts that it has received email correspondence from people around the world notifying Complainant that Respondent is using the disputed domain name to send fraudulent emails in which Respondent holds itself out as Complainant. Complainant contends that Respondent is intentionally creating confusion by representing that the <arnslawfirm.com> domain name and the emails sent therefrom originated with Complainant, when in fact they did not. Complainant asserts that Respondent is exploiting Complainant’s goodwill in an attempt to gain the trust of unsuspecting victims in order to defraud those victims of money. The Panel finds that Respondent’s attempt to pass itself off as Complainant in the furtherance of Respondent’s alleged scam negates any rights or legitimate interests in the <arnslawfirm.com> domain name under Policy ¶ 4(a)(ii) and does not constitute either a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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 Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as 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) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website).
Furthermore, Respondent’s use of the <arnslawfirm.com> domain name constitutes phishing activity, which demonstrates a lack of rights and legitimate interests under Policy ¶ 4(a)(ii). See Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (finding that using a domain name in a fraudulent scheme to deceive Internet users into providing their credit card and personal information is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use).
Complainant alleges that through its registration and use of an identical domain name, Respondent has intentionally created confusion by sending emails from the disputed domain claiming to be an agent of Complainant and by copying Complainant’s website. Complainant contends that Respondent’s activities are undertaken with the goal of generating a commercial gain by defrauding the recipients of Respondent’s emails. The Panel finds that Respondent’s attempt to pass itself off as Complainant in order to achieve a financial gain constitutes bad faith registration and use of the <arnslawfirm.com> domain name as contemplated by Policy ¶ 4(b)(iv). See H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness); see also Qatalyst Partners LP v. Devimore, FA 1393436 (Nat. Arb. Forum July 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use).
As Respondent’s use of the <arnslawfirm.com> domain name constitutes phishing, the Panel finds that Respondent’s registration and use of the domain exhibits bad faith on this basis. See Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (“‘Phishing’ involves the use of e-mails, pop-ups or other methods to trick Internet users into revealing credit cards, passwords, social security numbers and other personal information to the ‘phishers’ who intend to use such information for fraudulent purposes.”); see also Wells Fargo & Co. v. Maniac State, FA 608239 (Nat. Arb. Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers).
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 <arnslawfirm.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: March 4, 2013
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