Goodwin Procter LLP v. Eric Fishman
Claim Number: FA1705001733496
Complainant is Goodwin Procter LLP (“Complainant”), represented by Brenda R. Sharton of Goodwin Procter LLP, Massachusetts, USA. Respondent is Eric Fishman (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is<gooodwinlaw.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 26, 2017; the Forum received payment on May 26, 2017.
On May 31, 2017, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <gooodwinlaw.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 June 1, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 21, 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@gooodwinlaw.com. Also on June 1, 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 June 23, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant uses the GOODWIN and GOODWIN PROCTER marks in connection with the operation and marketing of its practice as a leading international law firm consisting of more than 1,000 lawyers.
Complainant holds a registration for the GOODWIN PROCTER trademark and service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 2,734,312, registered July 8, 2003.
Complainant also holds common law rights in the GOODWIN mark based on its continuous use in commerce for over 100 years, along with its use on the Internet under the <goodwinlaw.com> domain name since 2001.
Respondent registered the domain name <gooodwinlaw.com> on May 9, 2017.
The domain name is confusingly similar to Complainant’s GOODWIN mark.
Respondent does not have rights to or legitimate interests in the domain name.
Respondent has not been commonly known by the domain name.
Complainant has not granted Respondent a license or other permission to use the GOODWIN mark for any purpose.
Respondent is not using the domain name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use.
Respondent employs the domain name as an email address to pass itself off as Complainant in order to phish for Internet users’ personal information.
Respondent knew of Complainant and its GOODWIN mark when Respondent registered the domain name.
Respondent registered and uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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 that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules draw such inferences as it deems appropriate. The Panel is entitled to accept all reasonable allegations and inferences set out 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) (finding that respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). See also Talk City, Inc. v. Robertson, D2000-0009 (WIPO February 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
Registration of a mark with the USPTO is enough to establish rights in a mark under Policy ¶ 4(a)(i), but such registration is not necessary for that purpose. This is because common law rights in a mark are also sufficient to establish such rights. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum March 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a UDRP complainant can establish common law rights in its mark). In the instant case, Complainant has demonstrated rights in the GOODWIN mark under the common law from its long and continuous use in commerce, including its employment in the <goodwinlaw.com> domain name, as detailed in the Complaint.
Turning to the core question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <gooodwinlaw.com> domain name is confusingly similar to Complainant’s GOODWIN mark. The domain name contains the mark in its entirety, only adding an extra letter “o,” plus the generic term “law,” which is descriptive of complainant’s business, and the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See Google, Inc. v. DktBot.org, FA 286993 (Forum August 4, 2004):
The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).
See also Trip Network Inc. v. Alviera, FA 914943 (Forum March 27, 2007) (concluding that adding a gTLD to the mark of another in creating a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). This is because every domain name requires a gTLD.
Further, see Gillette Co. v. RFK Assocs., FA 492867 (Forum July 28, 2005) (finding that adding to a UDRP complainant’s DURACELL mark of the term “batteries,” which described certain of that complainant’s products, was insufficient to distinguish a respondent’s <duracellbatteries.com> domain name from that mark under Policy ¶ 4(a)(i)).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny,
that Respondent has not been commonly known by the <gooodwinlaw.com> domain name, and that Complainant has not authorized Respondent to use the GOODWIN mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Eric Fishman,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the contested domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).
See Alaska Air Group, Inc. v. Song Bin, FA1408001574905 (Forum September 17, 2014) (finding that a respondent was not commonly known by a disputed domain name based on the relevant WHOIS information and the fact that a UDRP complainant had not licensed or otherwise authorized that respondent to use its mark.). See also Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that a respondent was not commonly known by a disputed domain name, and so failed to show that it had rights to or legitimate interests in it as provided in Policy ¶ 4(c)(ii), where a UDRP complainant had not authorized that respondent to incorporate its mark in a domain name registration).
We next observe that Complainant asserts, without objection from Respondent, that Respondent uses the <gooodwinlaw.com> domain name in an email address in order to pass itself off as being associated with Complainant with the objective of phishing for the personal information of unsuspecting Internet users. This employment of the domain name is neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that a respondent’s attempt to pass itself off as a UDRP complainant online, by means of a domain name that was confusingly similar to that complainant’s mark, was a blatantly unauthorized use of that complainant’s mark which stood as evidence that that respondent had no rights to or legitimate interests in the domain name within the meaning of Policy ¶¶ 4(c)(i) or (iii)). See also Morgan Stanley v. Zhange Sheng Xu / Zhang Sheng Xu, FA1501001600534 (Forum February 26, 2015):
The Panel agrees that the respondent’s apparent phishing attempt provides further indication that the respondent lacks any rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
Therefore, the Panel finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
The examples of bad faith registration and use of a disputed domain name set out in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances in which bad faith may be found. See, for example, Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO February 18, 2000). The overriding objective of the Policy is to curb the abusive registration and use of domain names in circumstances in which the registrant seeks to exploit and profit from the trademark of another. See, for example, Match.com, LP v. BillZag and NWLAWS.ORG, D2004-0230 (WIPO June 2, 2004). We therefore look beyond the strict bounds of Policy ¶ 4(b) in search of an answer to the question: Has Respondent registered and is it now using the contested domain name in bad faith within the ambit of Policy ¶ 4(a)(iii)?
In this connection, we are persuaded by the evidence that Respondent uses the <gooodwinlaw.com> domain name to phish for Internet users’ personal information by impersonating Complainant. This undeniably demonstrates Respondent’s bad faith in the registration and use of the domain name. See Zoetis Inc. and Zoetis Svcs. LLC v. VistaPrint Tech. Ltd, FA1506001623601 (Forum July 14, 2015):
Respondent’s attempt to use the … domain name to phish for personal information in fraudulent emails also constitutes bad faith pursuant to Policy ¶ 4(a)(iii).
We are also convinced by the evidence that Respondent knew of Complainant and of its rights in the GOODWIN mark when Respondent registered the <gooodwinlaw.com> domain name. This further demonstrates Respondent’s bad faith in registering the domain name so as to satisfy the proof requirements of Policy ¶ 4(a)(iii). See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (ForumApril 10, 2006) (finding that, where the circumstances indicate that a respondent had actual knowledge of a UDRP complainant's mark when it registered a challenged domain name, a panel may find that the domain name was registered in bad faith). See also Yahoo! Inc. v. Butler, FA 744444 (Forum August 17, 2006) (finding bad faith registration of a domain name where a respondent was "well-aware of the complainant's … mark at the time of [its domain name] registration").
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <gooodwinlaw.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: June 29, 2017
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