Hinshaw & Culbertson LLP v. JONATHAN BURWOOD / HINSHAW LAW LLP
Claim Number: FA1701001711803
Complainant is Hinshaw & Culbertson, LLP (“Complainant”), represented by Kourtney A. Mulcahy of Hinshaw & Culbertson LLP, Illinois, USA. Respondent is JONATHAN BURWOOD / HINSHAW LAW LLP (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hinshawlawyers.com>, (‘the Domain Name’) registered with ENOM, INC.
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 Panelist in this proceeding.
Dawn Osborne of Palmer Biggs IP as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 11, 2017; the Forum received payment on January 11, 2017.
On January 11, 2017, ENOM, INC. confirmed by e-mail to the Forum that the <hinshawlawyers.com> domain name is registered with ENOM, INC. and that Respondent is the current registrant of the name. ENOM, INC. has verified that Respondent is bound by the ENOM, 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 13, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 2, 2017 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@hinshawlawyers.com. Also on January 13, 2017, 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 10, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs IP 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.
A. Complainant
Complainant’s submissions can be summarized as follows:
Complainant was founded in 1934 and has become a national law firm in the USA providing a wide variety of legal services. It has obtained a trade mark registration in the USA for HINSHAW & CULBERTSON for its services and is commonly and widely recognized as HINSHAW.
There has never been any licence or other relationship between Complainant and Respondent.
Respondent has maintained a commercial website at the Domain Name featuring links to various types of lawyers and law practices. It will lead visitors to falsely conclude that the site is provided or sponsored by Complainant.
The Domain Name is confusingly similar to Complainant’s registered mark HINSHAW & CULBERTSON and its common law mark HINSHAW and it contains the dominant portion of Complainant’s mark. It is typical for law firms to be commonly known by the first name of the firm.
The use of additional generic words in the Domain Name do not dispel any customer confusion and the use of the words ‘lawyers’ is used, in fact, to suggest it is the web site of Complainant. The addition of the top level domain .com does not create any distinct characteristics because it is a required feature of every domain name.
Respondent has no rights or legitimate interests in the Domain Name. The use of a domain name to intentionally trade on the goodwill of another and link to competing services cannot constitute a bona fide offering of goods and services. Nor is it a legitimate non commercial or fair use.
Respondent has never been commonly known by the Domain Name.
The Domain Name was not registered until 2016, eight decades after Complainant began using its marks.
The Domain Name was registered and is being used in bad faith. Respondent has intentionally attempted to attract for commercial gain Internet users to its web site or other on line location by creating a likelihood of confusion with Complainant’s mark as to the source or endorsement of Respondent’s web site. It is providing links to sites offering competing services to divert Internet traffic.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant was founded in 1934 and has become a national law firm in the USA providing a wide variety of legal services. It has obtained a trade mark registration in the USA for HINSHAW & CULBERTSON for its services. It has produced some evidence that emphasis is put on its first name HINSHAW in use.
The Domain Name was registered in 2016 and has been used to point to links offering competing services to Complainant.
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 (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
The Domain Name is a sign similar to Complainant's registered mark (which is registered in USA for legal services and has been used since at least 1934), the generic term ‘lawyers’, which relates to the field Complainant’s operate in, and the gTLD .com. Previous panels have found confusing similarity when a respondent merely adds a generic term to a Complainant's mark. See PG&E Corp. v Anderson, D2000-1264 (WIPO Nov. 22, 2000)(finding that respondent does not by adding common descriptive or generic terms create new or different marks nor does it alter the underlying mark held by the Complainant). The Panel agrees that the addition of the generic term ‘lawyers’ to Complainant's mark does not distinguish the Domain Name from Complainant's trade mark pursuant to the Policy. In fact, it may add to confusion since it describes Complainant’s business.
The gTLD .com does not serve to distinguish the Domain Name from the HINSHAW sign similar to Complainant’s registered mark and HINSHAW is the distinctive component of the Domain Name. See Red Hat Inc. v Haecke FA 726010 (FORUM July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Name is confusingly similar for the purposes of the Policy to a mark in which Complainant has rights.
As such, the Panel holds that Paragraph 4 (a) (i) of the Policy has been satisfied.
Rights or Legitimate Interests
Complainant has not authorised the use of its mark. Respondent has not answered this Complaint and there is no evidence or reason to suggest Respondent is, in fact. commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (FORUM September 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
Respondent is using the site to link to sites in competition with those of Complainant. It does not make it clear that there is no commercial connection with Complainant. The Panel finds this use is confusing. As such, it cannot amount to the bona fide offering of goods and services. See CheapCaribbean.com, Inc. v Moniker Privacy Services, FA 1411001589962 (FORUM Jan. 1, 2015)(Respondent’s use of the disputed domain name to promote links in competition with the complainant was not a bona fide offering of goods or services).
As such, the Panel finds that Respondent does not have rights or a legitimate interest in the Domain Name and that Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
In the opinion of the Panel, the use made of the Domain Name in relation to the site is confusing and disruptive, in that visitors to the site might reasonably believe it is connected to or approved by Complainant, as it offers links to competing services without any explanation. The use on Respondent's web site linking to competing legal services suggests that Respondent is aware of Complainant. Accordingly, the Panel holds that Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the web site likely to disrupt the business of Complainant. (See Capital One Financial Corp. v DN Manager/Who is-Privacy.Net Ltd, FA 1504001615034 (FORUM June 4, 2015)(holding that the respondent’s use of the disputed domain name to display links to the complainant’s competitors constituted bad faith pursuant to Policy 4 (b)(iv).
As such, the Panel believes that Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under para 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hinshawlawyers.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: February 14, 2017
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