Gibson, Dunn & Crutcher LLP v. Loginov Enterprises doo Beograd-Rakovica

Gibson, Dunn & Crutcher LLP v. Loginov Enterprises doo Beograd-Rakovica
Claim Number: FA1410001586465

Even though the Respondent has defaulted, URS Procedure 1.2.6, requires Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended.

[URS 1.2.6.1] The registered domain name(s) is/are identical or confusingly similar to a word mark:
  (i) for which the Complainant holds a valid national or regional registration and that is in current use; or
  (ii) that has been validated through court proceedings; or
  (iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.

Determined: Finding for Complainant

Complainant operates its business under the name “Gibson Dunn” in the USA and worldwide. Complainant is the holder of the trademark “Gibson Dunn” (US registration no. 2614712) registered with the USPTO for legal services and providing information in the field of law via a website on global computer. The registration was renewed in 2012 for ten years. The ownership of the trademark is confirmed by print-outs from the TESS records of the USPTO. The use of the trademark is shown through screenshots from the Complainant’s corporate website. The Examiner has no grounds to doubt that the Complainant’s trademark is registered and currently in use. Both domain names registered by Registrant are identical with the Complainant’s trademark. The fact that they were registered in the .attorney and .lawyer gTLDs adds to confusing similarity with the registered trademark, since consumers would be easily mislead as to the service provider. It is thus found that the first element of the policy is satisfied under the “clear and convincing evidences” standard.

[URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name.

Determined: Finding for Complainant

Respondent has failed to provide a response in which he would challenge trademark ownership and show that he has rights or legitimate interests in the disputed domains. Moreover, the “gibsonndunn” is not a generic term, since it apparently consists of personal names. Under these circumstances, in respect of the second element of the policy it is found in favor of the Complainant.

[URS 1.2.6.3] The domain name(s) was/were registered and is being used in bad faith.
  a. Registrant has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of pocket costs directly related to the domain name; or
  b. Registrant has registered the domain name in order to prevent the trademark holder or service mark from reflecting the mark in a corresponding domain name, provided that Registrant has engaged in a pattern of such conduct; or
  c. Registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or
  d. By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant’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 Registrant’s web site or location or of a product or service on that web site or location.

Determined: Finding for Complainant

Complainant has provided copies of WHOIS records showing that the Respondent registered the domain names at the same time when he registered the trademarked names of a number of other law firms in the .attorney and .lawyer gTLDs. These registrations were made almost simultaneously, within days following the close of the sunrise period for these gTLDs. Complainant has also provided screenshots showing prior use of each company names. Although, p. 5.9.1 of the URS Procedure expressly states that holding a large portfolio of domain names is of itself not indicative of bad faith, the circumstances of the present case, particularly the fact that the Respondent chose the .attorney and .lawyer gTLDs to register prominent law firms’ names in which he has not legitimate interests (which is difficult to explain other than by the purpose of offering these domain for sale to interested parties, or misleading users into believing that these domains may be associated with the respective law firms), may be treated as bad faith.

FINDING OF ABUSE or MATERIAL FALSEHOOD

The Examiner may find that the Complaint was brought in an abuse of this proceeding or that it contained material falsehoods.

The Examiner finds as follows:

The Complaint was neither abusive nor contained material falsehoods.

DETERMINATION

After reviewing the parties’ submissions, the Examiner determines that the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain name(s) be SUSPENDED for the duration of the registration:

gibsondunn.attorney
gibsondunn.lawyer

	Complainant Submitted: October 23, 2014
	Commencement: October 29, 2014
	Default Date: November 13, 2014
	Having reviewed the communications records, the Examiner finds that the National Arbitration Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules").

	Complainant: Gibson, Dunn & Crutcher LLP of Washington, DC, United States of America

	Respondent: Loginov Enterprises doo Beograd-Rakovica Mykhailo Loginov of Belgrade, II, RS

	Registries: ATTORNEY Registry,LAWYER Registry
	Registrars: GoDaddy.com, LLC

	The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Examiner in this proceeding.
	Ms. Natalia Stetsenko, as Examiner