Perkins Coie LLP v. ICS INC.
Claim Number: FA1601001655419
Complainant is Perkins Coie LLP (“Complainant”), represented by Alexander J.A. Garcia of Perkins Coie LLP, Colorado, USA. Respondent is ICS INC. (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <perkinscole.com>, registered with Tucows Domains Inc.
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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 6, 2016; the Forum received payment on January 6, 2016.
On January 7, 2016, Tucows Domains Inc. confirmed by e-mail to the Forum that the <perkinscole.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. 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 8, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 28, 2016 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@perkinscole.com. Also on January 8, 2016, 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 Forum transmitted to the parties a Notification of Respondent Default.
On February 3, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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.
Complainant
Complainant uses the PERKINS COIE mark in connection with its business providing legal services. Complainant has registered the PERKINS COIE mark with the likes of the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,825,410, registered March 8, 1994), demonstrating rights in the mark. The <perkinscole.com> domain name is confusingly similar to Complainant’s mark as it merely changes the “i” to an “l” in Complainant’s mark and adds the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name or any variant of Complainant’s mark, nor has Complainant given permission for Respondent to make use of the mark. Further, Respondent is not making a bona fide offering of goods or services through the disputed domain name or a legitimate noncommercial or fair use. The resolving website for the disputed domain name is merely a parked page, with a number of click-through links which may be seen to compete with Complainant, such links include, “Attorney Family,” “White Collar Crime Lawyer,” and “Criminal Defense Lawyer.”
Respondent registered and used the disputed <perkinscole.com> domain in bad faith under Policy ¶ 4(a)(iii). Respondent has placed a general offer to sell the disputed domain name on its website. Respondent has registered the domain name to disrupt Complainant’s business. Specifically, Respondent uses the disputed domain name to advertise and promote directly competing products and services. Respondent uses the likelihood of confusion between the disputed domain name and Complainant to attract Internet users for commercial gain. Respondent uses the disputed domain name to post hyperlinks to Complainant’s competitors. Respondent has engaged in typosquatting, and had actual and/or constructive knowledge of Complainant’s mark at the time of domain name registration, thereby violating Policy ¶ 4(a)(iii). Respondent uses the disputed domain name to redirect Internet users to a website featuring malware or other malicious content, which is further evidence of bad faith.
Respondent
Respondent did not submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <perkinscole.com> domain name.
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(f), 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.”).
Complainant uses the PERKINS COIE mark in connection with its business providing legal services. Complainant has provided evidence of registration of the PERKINS COIE mark with the USPTO (e.g., Reg. No. 1,825,410, registered March 8, 1994), which it alleges demonstrates rights in the mark. Panels have found that trademark registrations with the USPTO suffice to demonstrate a complainant’s rights in its marks for the purposes of Policy ¶ 4(a)(i), even where Complainant and Respondent live or operate in different countries. See Viber Media S.ŕ r.l. v. Kristaps Sirmais / SIA "FUN FACTORY", FA 1626671 (Nat. Arb. Forum Aug. 4, 2015) (“Accordingly, even though Respondent reportedly resides in Latvia, the Panel finds find that Complainant’s USPTO registration is sufficient under Policy ¶ 4(a)(i).”). Therefore, the Panel finds that Complainant has demonstrated its rights in its mark pursuant to Policy ¶ 4(a)(i).
Complainant argues the <perkinscole.com> domain name is confusingly similar to Complainant’s mark as it merely changes the letter “i” to an “l” in Complainant’s mark and adds the generic top-level domain (“gTLD”) “.com.” Panels have found such alterations to a mark are insufficient in overcoming a finding of confusing similarity under Policy ¶ 4(a)(i). See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). Therefore, the Panel finds that Respondent’s <perkinscole.com> domain name is confusingly similar to Complainant’s PERKINS COIE mark pursuant to Policy ¶ 4(a)(i).
Complainant has proved this element.
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); 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 name. Complainant contends that Respondent is not commonly known by the disputed domain name or any derivative of Complainant’s mark. Complainant states that Respondent is not authorized to use Complainant’s mark. The WHOIS information lists “ICS INC.” as registrant. Respondent has failed to submit any evidence for its consideration. Accordingly, the Panel finds there is no basis in the available record to find Respondent commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant contends that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). Specifically, Complainant asserts that Respondent has engaged parking services offered by a third-party, which provides links to other websites, presumably in order to generate pay-per-click link revenue for Respondent. Panels have found that engaging parking services is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii), especially where a respondent presumably commercially gains through the use of competing links. See Charles Letts & Co Ltd. v. Citipublications, FA 692150 (Nat. Arb. Forum July 17, 2006) (finding that the respondent’s parking of a domain name containing the complainant’s mark for the respondent’s commercial gain did not satisfy Policy ¶ 4(c)(i) or ¶ 4(c)(iii)); See also 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). Therefore, the Panel finds that Respondent has failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively.
Complainant claims that Respondent has offered the disputed domain name for sale on the resolving website, which is additional evidence of Respondent’s lack of rights or legitimate interests in the disputed domain name. The Panel finds that such an offer indicates a further lack of rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)).
Complainant has proved this element.
Complainant believes that Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii). Complainant notes that Respondent offered to sell the disputed domain name on the resolving webpage. The Panel finds this is evidence of bad faith under Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”).
Complainant alleges that Respondent has registered the domain name to disrupt Complainant’s business per Policy ¶ 4(b)(iii). Specifically, Complainant argues that Respondent used the disputed domain name for a website that features sponsored-link advertisements for websites advertising and promoting services that directly compete with Complainant’s business. Past panels have found bad faith pursuant to Policy 4(b)(iii) where a respondent’s disputed domain name resolves to websites that list links to competitors of the complainant. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”). Therefore, the Panel finds that Respondent has acted in bad faith under Policy ¶ 4(b)(iii).
Complainant argues that Respondent had actual and/or constructive knowledge of Complainant's rights in the PERKINS COIE mark. Complainant argues that Respondent's offering of competing legal services at the resolving website indicates that Respondent had actual knowledge of Complainant's mark and rights. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Complainant further alleges that Respondent has engaged in the practice of typosquatting by misspelling Complainant’s mark with the intent to intercept internet traffic from its intended destination. Past panels have found bad faith registration and use pursuant to Policy ¶ 4(a)(iii) where a respondent’s disputed domain name merely misspelled the complainant’s mark. See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (finding bad faith registration and use of the <microssoft.com> domain name as it merely misspelled the complainant’s MICROSOFT mark). Accordingly, the Panel finds that, as the letter “i” has been replaced with an “l” in the mark in the disputed domain name, Respondent has exhibited typosquatting behavior and thereby registered and is using the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Complainant states that Respondent uses the disputed domain name to redirect Internet users to a website that attempts to download malware on the computers of these Internet users. Specifically, Complainant alleges that security software denies access to the resolving website, listing the resolving website as “suspicious.” The Panel agrees with Complainant’s evidence and argument, and therefore finds that Respondent has engaged in bad faith under Policy ¶ 4(a)(iii). See Victoria’s Secret Stores Brand Mgmt., Inc. v. PrivacyProtect.org, FA 1357512 (Nat. Arb. Forum December 17, 2010) (finding that a domain name attracting Internet users to a resolving website that attempts to download malicious software onto their computers to steal personal information “indicates bad faith registration and use according to Policy ¶ 4(a)(iii)”).
Complainant has proved this element.
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 <perkinscole.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: February 4, 2016
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