McGuireWoods LLP v. Mykhailo Loginov / Loginov Enterprises d.o.o
Claim Number: FA1412001594837
Complainant is McGuireWoods LLP (“Complainant”), represented by William N. Federspiel of McGuire Woods LLP, Virginia, USA. Respondent is Mykhailo Loginov / Loginov Enterprises d.o.o (“Respondent”), Serbia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <mcguirewoods.lawyer> and <mcguirewoods.attorney>, registered with GoDaddy.com, LLC.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically December 11, 2014; the National Arbitration Forum received payment December 11, 2014.
On December 11, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <mcguirewoods.lawyer> and <mcguirewoods.attorney> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 15, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 5, 2015, 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@mcguirewoods.lawyer, postmaster@mcguirewoods.attorney. Also on December 15, 2014, 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 January 9, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 names be transferred from Respondent to Complainant.
A. Complainant's Contentions:
Complainant owns the MCGUIREWOODS mark through registration with the United States Patent and Trademark Office ("USPTO") (Reg. No. 2,483,615, registered Aug. 28, 2001). Complainant uses the mark to identify its law firm. The <mcguirewoods.lawyer> and <mcguirewoods.attorney> domain names are identical to the MCGUIREWOODS mark. The addition of the generic top-level domains (“gTLD”) “.lawyer” and “.attorney” serve to increase the likelihood of confusion as the terms describe the nature of the employees that make up Complainant.
Respondent has no rights or legitimate interests in the disputed domain names. Complainant has not authorized Respondent’s use of the mark, and Respondent is not commonly known by the disputed <mcguirewoods.lawyer> or <mcguirewoods.attorney> names. The disputed domain names resolve to parked pages, which contain pay-per-click advertisements that relate to other law firms. Such use is not a bona fide offering of goods or services and it is not a legitimate noncommercial or fair use.
Respondent registered and is using the disputed domain names in bad faith. First, Respondent has a history of registering domain names reliant on the marks of prominent law firms. See Gibson, Dunn & Crutcher LLP v. Loginov Enters. Doo Beograd-Rakovica, FA 1586465 (Nat. Arb. Forum Nov. 18, 2014). Respondent’s registration of these two domain names along with other domain names infringing on other firms constitutes a pattern of bad faith. Second, Respondent’s use of the disputed domain name in connection with a parked page promoting links to other law firms further demonstrates Respondent’s bad faith use and registration. Lastly, Respondent registered the disputed domain name with knowledge of the MCGUIREWOODS mark, which evidences Respondent’s bad faith registration.
Respondent's Contentions;
Respondent did not submit a Response for the Panel’s consideration.
The Panel notes that Respondent registered both disputed domain names October 9, 2014.
Complainant established that it has rights and legitimate interests in the disputed domain names.
The disputed domain names are confusingly similar to Complainant’s protected mark.
Respondent has no rights or legitimate interests in the disputed domain names.
Respondent registered and used the disputed domain names in bad faith.
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 Complainant to 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.
Given 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 will draw such inferences as the Panel 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 or Confusingly Similar:
Complainant owns the MCGUIREWOODS mark through registration with the United States Patent and Trademark Office ("USPTO") (Reg. No. 2,483,615, registered Aug. 28, 2001), which it uses to identify its law firm. The Panel finds Complainant’s USPTO registration sufficient to establish Complainant’s rights in the MCGUIREWOODS mark for purposes of Policy ¶ 4(a)(i), despite Respondent’s purported residence outside the United States. See Homer TLC, Inc. v. Song Bin, FA 1505218 (Nat. Arb. Forum July 30, 2013) (“Complainant’s USPTO registration sufficiently establishes its rights in the HOME DEPOT mark under Policy ¶4(a)(i), despite the fact Respondent resides outside of the United States.”).
Complainant contends that the <mcguirewoods.lawyer> and <mcguirewoods.attorney> domain names are identical to the MCGUIREWOODS mark. Complainant argues that the addition of the gTLD “.lawyer” and “.attorney” serve to increase the likelihood of confusion as the terms describe the nature of the employees that make up Complainant. While the addition of gTLDs are generally considered irrelevant to the confusing similarity analysis, the Panel finds that Respondent’s election of the “.lawyer” and “.attorney” descriptive terms do heighten the likelihood of confusion because Complainant’s MCGUIREWOODS mark is used to promote the services of lawyers and attorneys. See, e.g., DD IP Holder LLC v Manpreet Badhwar, FA 1562029 (Nat. Arb. Forum July 14, 2014) (“because there is a reference to food and restaurants inherent in the new gTLD ”.menu”, the combination of the “dunkin” element with the ”.menu” gTLD extension adds further to the confusing character of the domain in issue in the present case.”). The Panel finds; however, that addition of the descriptive words to the <mcguirewoods.lawyer> and <mcguirewoods.attorney> domain names create domain names that are confusingly similar to the MCGUIREWOODS mark pursuant to Policy ¶ 4(a)(i) as the domain names fully incorporate the mark.
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain names are confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights or Legitimate Interests:
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden of proof shifts to Respondent to show it does have such 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); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain names. Complainant urges that it did not authorize Respondent’s use of the mark, and claims Respondent is not commonly known by the disputed <mcguirewoods.lawyer> or <mcguirewoods.attorney> names. The Panel notes that the WHOIS information relating to these disputed domain names identifies “Mykhailo Loginov” of “Loginov Enterprises d.o.o” as the registrant of record. In light of this scant record, which has no reply from Respondent, the Panel finds no basis to consider Respondent as being commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
To further demonstrate Respondent’s lack of rights in the domain name, Complainant adds that the disputed domain names resolve to parked pages, which contain pay-per-click advertisements that relate to other law firms. The Panel notes that Complainant included screenshots of the disputed landing pages, which depict both competing links and links unrelated to Complainant’s legal services such as “Aggressive VA Attorney,” “Workers’ Compensation,” and “Trial and Pretrial Advocacy.” See Compl., at Attached Ex. F. The Panel finds Respondent’s use of the disputed domain names to feature parked hyperlinks containing links in competition with Complainant’s legal services 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 pursuant to Policy ¶ 4(c)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain names containing Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant argues that Respondent has a history of registering domain names reliant on the marks of prominent law firms. Complainant explicitly cites to Gibson, Dunn & Crutcher LLP v. Loginov Enters. Doo Beograd-Rakovica, FA 1586465 (Nat. Arb. Forum Nov. 18, 2014) to support this claim. Complainant also lists several domain names held by Respondent that allegedly interfere with the marks of third parties. While such domain names and marks are not presently in dispute and have not yet been subject to the scrutiny of adjudication, the Panel finds some evidence supports these allegations with respect to its Policy ¶ 4(b)(ii) analysis. The Panel finds that Respondent’s multiple registrations including these two domain names and the prior UDRP case decided against Respondent, do constitute a pattern of bad faith as understood by Policy ¶ 4(b)(ii). See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).”); YAHOO! INC v. Syrynx, Inc., D2000-1675 (WIPO Jan. 30, 2001) (finding a bad faith pattern pursuant to Policy ¶ 4(b)(ii) in the respondent's registration of two domain names incorporating the complainant's YAHOO! mark). Accordingly, the Panel finda evidence of bad faith pursuant to Policy ¶ 4(b)(ii) as Respondent’s history of bad faith permeates the instant case.
Complainant further argues that Respondent’s use of the disputed domain name in connection with a parked page promoting links to other law firms further demonstrates Respondent’s bad faith use and registration. The Panel recalls that the disputed domain names resolve to promote links in competition with Complainant’s law firm and legal services, including “Aggressive VA Attorney,” “Workers’ Compensation,” and “Trial and Pretrial Advocacy.” See Compl., at Attached Ex. F. The Panel agrees that such behavior falls within that proscribed by Policy ¶ 4(b)(iii), and therefore finds evidence of Respondent’s bad faith registration and use pursuant to the provision. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (“Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Complainant additionally claims that Respondent registered the disputed domain names with knowledge of the MCGUIREWOODS mark, and argues that this further evidences Respondent’s bad faith. Although previous panels have declined to find evidence of bad faith based on constructive knowledge, panels have found Policy ¶ 4(a)(iii) bad faith where circumstances support an inference of actual knowledge. See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Nat. Arb. Forum March 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”); Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Here, the Panel considers Respondent’s election to register the present domain name with the gTLDs “.lawyer” and “.attorney.” The use this suggests supports findings that Respondent knew about Complainant and its legal offerings. The Panel finds that the circumstances support an inference of Respondent’s actual knowledge of Complainant at the time the domain names were registered, and finds additional evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain names in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall GRANTED.
Accordingly, it is Ordered that the <mcguirewoods.lawyer> and <mcguirewoods.attorney> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: January 22, 2015
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