national arbitration forum

 

DECISION

 

McKool Smith, P.C. v. Chelsea Davis

Claim Number: FA1311001529145

PARTIES

Complainant is McKool Smith, P.C. (“Complainant”), represented by Don Colleluori of FIGARI & DAVENPORT, LLP, Texas, USA.  Respondent is Chelsea Davis (“Respondent”), Texas, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <mckoolsmith.xxx>, registered with GoDaddy.com, LLC.

 

PANEL

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.

 

Darryl C. Wilson, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 8, 2013; the National Arbitration Forum received payment on November 8, 2013.

 

On November 11, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <mckoolsmith.xxx> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name.  GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.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 November 15, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 5, 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@mckoolsmith.xxx.  Also on November 15, 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 December 16, 2013 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

  1. Complainant

1.    UDRP Policy ¶ 4(a)(i): Complainant’s Rights & Domain Name’s Confusing Similarity

·        Complainant relies on the common law principles of trademark rights, rather than federal trademark registration. Complainant believes that common law rights in the MCKOOL SMITH mark are adequate for purposes of this proceeding.

·        Complainant uses the MCKOOL SMITH mark as the name of its nationally-known law firm. Complainant operates within the United States in Houston, Dallas, and Austin, Texas; New York City, New York; Washington, D.C.; and Redwood Shores and Los Angeles, California. Complainant has operated under the MCKOOL SMITH name since 1991, and has provided legal services namely in the areas of intellectual property litigation, white collar defense, and ITC litigation. Complainant has been recognized under the MCKOOL SMITH mark as a leading legal services provider by Chambers USA, Legal 500, Intellectual Asset Management Patent 1000, Managing Intellectual Property, The National Law Journal, and other preeminent publications concerning the business and culture of the legal profession. Complainant has operated the <mckoolsmith.com> domain name continuously for many years, and uses this domain name in part to provide prospective clients with information as to the experience and expertise of MCKOOL SMITH lawyers.

·        Respondent’s <mckoolsmith.xxx> domain name is textually identical to Complainant’s MCKOOL SMITH mark, as the mere adding of the “.xxx” top-level domain (“TLD”) does not present any distinction.

2.    UDRP Policy ¶ 4(a)(ii): Respondent Lacks Rights and Legitimate Interests

·        Respondent is not known by the disputed domain name. The WHOIS record and Respondent’s own e-mail correspondence illustrate that Respondent is Ms. Chelsea Davis.

·        There is currently no website resolving from the <mckoolsmith.xxx> domain name. Respondent has previously indicated that she is preparing to put the domain name to some heretofore unknown use. See Compl., at Attached Ex. D. Complainant suspects that Respondent will use the domain name to harass and disparage Complainant, as Respondent has recently filed a nearly identical United States Patent and Trademark Office ("USPTO") trademark application for MCKOOL SMITH XXX (Serial No. 86,106,112 filed October 30, 2013) that further explains Respondent’s purposes. See  Ex. E to the Complaint.

·        As explained below, and pursuant to CEDRP Policy ¶ 8, Respondent’s misappropriation of the “.xxx” TLD illustrates Respondent’s lack of rights and legitimate interests in the domain name.

3.    UDRP Policy ¶ 4(a)(iii): Respondent’s Bad Faith Use and Registration

·        Respondent registered this <mckoolsmith.xxx> domain name in bad faith as Respondent’s domain name registration occurred only after she was terminated from Complainant’s MCKOOL SMITH law firm. Respondent retains no right to hold onto domain names embodying Complainant’s mark.

·        Respondent’s passive holding of the <mckoolsmith.xxx> domain name illustrates that Respondent has acted in bad faith.

·        Respondent had actual notice of Complainant’s rights in the MCKOOL SMITH mark, as Respondent is a lawyer who was formerly associated with, and employed by, the MCKOOL SMITH law firm.

·        Respondent seeks to tarnish the MCKOOL SMITH mark by registering the <mckoolsmith.xxx> domain name in connection with a “.xxx” TLD, thus creating the implication amongst Internet users that Complainant may now dabble in the adult entertainment industry, when such is not true.

·        As explained below, and pursuant to CEDRP Policy ¶ 8, Respondent’s misappropriation of the “.xxx” TLD is evidence of bad faith.

4.    CEDRP Policy ¶ 8: Effect of CEDRP Proceedings on This Dispute

·        Pursuant to Paragraph 9 of ICM Registry, LLC’s CEDRP for the “.xxx” TLD, the effect of registering an ineligible domain name under the “.xxx” CEDRP shall be that such conduct is evidence discrediting Respondent under UDRP Policy ¶ 4(a)(ii) and (iii). Furthermore, the “.xxx”  CEDRP disallows the use of the “.xxx”  TLD for purposes of “non-commercial commentary or criticism of a specific person or business entity.” See Compl., Attached Ex. B at ¶ 2.

·        Respondent’s Ineligibility:

o   The “.xxx”  TLD was intended for domain names held by members of the “Sponsored Community” and as such include only:

§  Providers of online adult-entertainment as between consenting adults;

§  Adult entertainment providers such as webmasters, recorded or live performers, production studios, store owners, or adult club operators; and

§  Product and service providers specializing in the provision of goods or services to affiliates of the Sponsored Community (e.g., adult-content oriented domainers, manufactures, distribution centers, caterers, makeup artists, stylists, etc.).

o   Respondent, as a lawyer who is a disgruntled former employee of Complainant’s law firm, does not fall within any of these categories.

·        Use for Inapplicable Purposes:

o   Respondent registered the <mckoolsmith.xxx> domain name solely to harass Complainant as an attempt at retaliation for Respondent’s termination from Complainant’s employment several years ago. The “.xxx”  TLD was intended for the specific purposes of catering to the “Sponsored Community” and was not intended for wholesale use for the registration of any domain name.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

Preliminary Issue:  Applicability of RES and CEDRP to UDRP Proceedings

While the current case was commenced under the UDRP, Complainant makes arguments relating to the Charter Eligibility Dispute Resolution Policy (“CEDRP”). The CEDRP was established for disputes relating to domain names that include the “.xxx” top-level domain.  However, cases relating to domain names that include the “.xxx” top-level domain may still be brought under the UDRP, which has occurred in the instant proceeding. CEDRP ¶ 8 allows a panel to use the factors under CEDRP ¶¶ 2(a) and (b) as applicable terms of legitimate rights or registration and use under the UDRP.  CEDRP ¶ 2(a), “Registration or Use Inconsistent with Community Eligibility,” states that “[a] complaint under this section shall be required to show that a registered domain name in the .XXX TLD has not been registered or used in compliance with the Sponsored Community eligibility criteria as further defined in the Registry-Registrant Agreement.”  The Panel finds the CEDRP relevant  and applicable to the instant proceeding.

FINDINGS

Complainant is McKool Smith of Dallas, TX, USA. Complainant is a law firm with offices throughout the USA, asserting national recognition in the mark MCKOOL SMITH, which it claims to have been providing legal services under since 1991. Complainant lists a number of publications recognizing it as a leading law firm, and further states that substantial funds and energy have been expended in establishing its common law trademark rights and goodwill in the name MCKOOL SMITH. Complainant provides no evidence regarding the substantiality of funds or other expenditures nor the extent of goodwill developed beyond Complainant’s own statements. Complainant also owns the domain name <mckoolsmith.com> which it registered in 1997 and which it states has been continually used as a business site since that time.

 

Respondent is listed as Chelsea Davis of Dallas, TX, USA. Respondent’s registrar’s address is listed as Scottsdale, AZ, USA. Respondent registered the <mckoolsmith.xxx> domain name on April 18, 2013. Respondent also filed an application to register the domain name as a USA trademark for the purpose of criticizing the Complainant’s employment practices.

 

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."

 

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.”).

 

Identical and/or Confusingly Similar

Complainant relies on common law principles of trademark rights, rather than federal trademark registration. Complainant believes that common law rights in the MCKOOL SMITH mark are adequate for purposes of this proceeding. The Panel notes that Policy ¶ 4(a)(i)’s requirement that a complainant must demonstrate rights in a mark may be satisfied even without having registered the mark. See, e.g., Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)). The Panel finds that it may consider whether Complainant has established secondary meaning in its mark so as to justify a finding of common law rights.

 

Complainant claims that it uses the MCKOOL SMITH mark as the name of its nationally-known law firm. Complainant notes that it operates within the United States in Dallas, Houston, and Austin Texas; New York City, New York; Washington, D.C.; and Los Angeles and Redwood Shores, California. Complainant has operated under the MCKOOL SMITH name since 1991, and has provided legal services namely in the areas of intellectual property litigation, white collar defense, and ITC litigation. Complainant states that it has been recognized under the MCKOOL SMITH mark as a leading legal services provider by Chambers USA, Legal 500, Intellectual Asset Management Patent 1000, Managing Intellectual Property, The National Law Journal, and other preeminent publications concerning the business and culture of the legal profession but Complainant’s only support of such statements is similar statements made by Complainant on its website.

 

Complainant has operated the <mckoolsmith.com> domain name continuously since 1997, and uses this domain name in part to provide prospective clients with information as to the experience and expertise of MCKOOL SMITH lawyers. In the case of AOL LLC v. DiMarco, FA 1275978 (Nat. Arb. Forum Sept. 9, 2009), the panel determined that the common law mark had achieved secondary meaning when the mark had become associated with the specific services provided, and was not merely a generic or otherwise unknown phrase in the mind of consumers. The Panel here finds that the non-descriptive nature of the MCKOOL SMITH mark vis-à-vis the provision of legal services, along with Complainant’s uncontested assertions, passes the threshold requirement that the mark is sufficiently distinctive to support a finding of secondary meaning within the scope of Policy ¶ 4(a)(i).

 

Complainant also argues that Respondent’s <mckoolsmith.xxx> domain name is textually identical to Complainant’s MCKOOL SMITH mark, as the mere adding of the “.xxx” top-level domain (“TLD”) does not present any distinction. The Panel finds that the <mckoolsmith.xxx> domain name is identical to Complainant’s MCKOOL SMITH mark in this respect under Policy ¶ 4(a)(i). See, e.g., Bass Pro Intellectual Prop., LLC v. Stanley, FA 1433158 (Nat. Arb. Forum Apr. 24, 2012) (finding no reason to deviate from the principle of ignoring the gTLD extension when comparing a domain name and a trademark in cases involving the “.xxx” TLD); see also, Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)).

 

Respondent makes no contentions with regards to Policy ¶ 4(a)(i). 

 

The Complainant has proven this element.

 

Rights or Legitimate Interests

The Panel recognizes that 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). The Complainant has met this burden.

Complainant argues that Respondent is not known by the domain name.

 

Complainant illustrates that the WHOIS record and Respondent’s own e-mail correspondence provides that Respondent is Ms. Chelsea Davis. See Compl., at Attached Ex. D. The Panel notes that there is no evidence in the record to suggest that Respondent is known by the <mckoolsmith.xxx> domain name. See, e.g., M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also, Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”). The Panel finds that Respondent is not known by the <mckoolsmith.xxx> domain name under Policy ¶ 4(c)(ii).

 

Complainant asserts that there is currently no website resolving from the <mckoolsmith.xxx> domain name. Complainant claims that Respondent has previously indicated that she is preparing to put the domain name to some heretofore unknown use. See Compl., at Attached Ex. D. Complainant suspects that Respondent will use the domain name to harass and disparage Complainant, as Respondent has recently filed a nearly identical USPTO trademark application for MCKOOL SMITH XXX (USPTO Serial No. 86,106,112 filed October 30, 2013) that further explains Respondent’s purposes. See Ex. E to the Complaint. The Panel finds that the non-use of the <mckoolsmith.xxx> domain name suggest that Respondent has not made preparation to put the domain name to a Policy ¶ 4(c)(i) bona fide offering of goods or service, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website.  The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy  ¶ 4(c)(iii).”).

 

Complainant argues that Respondent’s misappropriation of the “.xxx” TLD illustrates Respondent’s lack of rights and legitimate interests in the domain name. Complainant alleges that Respondent is not a member of the adult-entertainment community that the “.xxx” TLD is explicitly reserved for and that Respondent is abusing the “.xxx” TLD by using the domain name as leverage in extorting Complainant by association of the MCKOOL SMITH legal services mark with the adult-entertainment business. See CEDRP ¶ 2(a) (outlining the circumstances in which registration of a “.xxx” domain name is inappropriate). The Panel notes that pursuant to the CEDRP, Respondent’s conduct suggests that Respondent lacks Policy ¶ 4(a)(ii) rights and legitimate interests in the domain name. See CEDRP ¶ 8 (“If a domain name in the .XXX TLD is subject to a UDRP proceeding, the factors set forth in the CEDRP may be alleged. . . as applicable terms of legitimate rights. . . under the UDRP.”). The Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name under the UDRP as well as CEDRP ¶ 2.

 

Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).

 

Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain. 

 

The Complainant has proven this element.

 

Registration and Use in Bad Faith

The Panel notes that although Complainant makes no arguments under Policy ¶ 4(b), such pleadings are not necessary so long as Complainant establishes bad faith through use and registration in some manner. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”). Therefore, the Panel will consider the totality of the circumstances in making a determination of bad faith under Policy ¶ 4(a)(iii).

 

Complainant claims that Respondent registered this <mckoolsmith.xxx> domain name in bad faith as Respondent’s domain name registration occurred only after she was terminated from Complainant’s MCKOOL SMITH law firm. Complainant argues that Respondent retains no right to hold onto domain names embodying Complainant’s mark. In Anbex Inc. v. WEB-Comm Techs. Group, FA 780236 (Nat. Arb. Forum Sept. 19, 2006), the panel agreed that the respondent, as a former employee of the complainant, illustrated its bad faith when it registered and held onto infringing domain names following termination of employment. The Panel here finds that Respondent lacks rights in the domain name, and has registered and is using the disputed domain name in bad faith.

 

Complainant next argues that Respondent’s passive holding of the <mckoolsmith.xxx> domain name illustrates that Respondent has acted in bad faith. The Panel agrees that the domain name is being passively held, and used for no active purpose. The Panel finds that such inactivity is suggestive of Policy ¶ 4(a)(iii) bad faith. See Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Nat. Arb. Forum Apr. 12, 2007) (holding that non-use of a confusingly similar domain name for over seven months constitutes bad faith registration and use).

 

Complainant argues that Respondent’s misappropriation of the “.xxx” TLD illustrates Respondent’s bad faith use and registration in respect to the disputed domain name. Complainant alleges that Respondent is not a member of the adult-entertainment community that the “.xxx” TLD is explicitly reserved for and that Respondent is abusing the “.xxx” TLD by using the domain name as leverage in extorting Complainant by association of the MCKOOL SMITH legal services mark with the adult-entertainment business. See CEDRP ¶ 2(a) (outlining the circumstances in which registration of a “.xxx” domain name is inappropriate). The Panel finds that pursuant to the CEDRP, Respondent’s conduct suggests that Respondent engaged in Policy ¶ 4(a)(iii) bad faith in regards to this <mckoolsmith.xxx> domain name. See CEDRP ¶ 8 (“If a domain name in the .XXX TLD is subject to a UDRP proceeding, the factors set forth in the CEDRP may be alleged. . . as applicable terms of. . . registration and use under the UDRP. . .”).

 

Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).

 

The Complainant has proven this element.

 

DECISION

Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.

 

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

 

Darryl C. Wilson,

Dated: December 30, 2013

 

 

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