Law Offices of Daniel J. Caplis, LLC, dba Dan Caplis Law v. Ed Couse
Claim Number: FA1806001794742
Complainant is Law Offices of Daniel J. Caplis, LLC, dba Dan Caplis Law (“Complainant”), represented by Pamela N. Hirschman of Sheridan Ross P.C., Colorado, USA. Respondent is Ed Couse (“Respondent”), Colorado, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dancaplisalw.com>, registered with GoDaddy.com, LLC.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 29, 2018; the Forum received payment on June 29, 2018.
On July 3, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <dancaplisalw.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 July 5, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 25, 2018 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@dancaplisalw.com. Also on July 5, 2018, 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 July 30, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions.
Complainant, Law Offices of Daniel J. Caplis, LLC, dba Dan Caplis Law, is a law firm in the business of providing legal and trial services, especially in the areas of personal injury, products liability, medical malpractice, and other types of negligence claims. Complainant uses the DAN CAPLIS LAW mark to provide and market and its legal services. Complainant has common law rights in the mark through its generated secondary meaning and has had such rights since at least 2013. Respondent’s <dancaplisalw.com> is identical or confusingly similar to Complainant’s DAN CAPLIS LAW mark as it incorporates the mark in its entirety, less the space, merely transposing the letters “l” and the letter “a” and the generic top-level domain (“gTLD”) “.com”.
Respondent does not have rights or legitimate interests in the <dancaplisalw.com> domain name. Respondent is not commonly known by the disputed domain name, as the WHOIS information lists Respondent as “Ed Couse.” See Compl. Ex. 5. Additionally, Respondent is not using the disputed domain name to make a bona fide offering of goods or services or for a legitimate non-commercial or fair use. Rather, Respondent uses the <dancaplisalw.com> domain name to pass off as Complainant in order to divert Internet users to Respondent’s website where Respondent hosts third-party links which compete directly with Complainant’s business. See Compl. Ex. 6. In addition, Respondent is a former employee who is using the disputed domain name to post defamatory content. Id.
Respondent has registered and used the <dancaplisalw.com> domain name in bad faith. Respondent offered to remove the content from the disputed domain name in exchange for an excessive amount of money. See Compl. Ex. 10. Further, Respondent attempts to disrupt Complainant’s business by using the disputed domain name to host links to third-party websites that compete with Complainant, and also by posting defamatory content about Complainant on the webpage. See Compl. Ex. 6. Finally, Respondent engages in typosquatting by transposing the letters “l” and “a” in the DAN CAPLIS LAW mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that conducts a prominent law firm providing legal and trial services.
2. Complainant has established its common law trademark rights to the DAN CAPLIS LAW mark since at least 2013 through its generated secondary meaning.
3. Respondent registered the <dancaplisalw.com> domain name on November 26, 2016.
4. Respondent uses the <dancaplisalw.com> domain name to pass itself off as Complainant in order to divert Internet users to Respondent’s website where Respondent hosts third-party links which compete directly with Complainant’s business.
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.”).
Since the <dancaplisalw.com> domain name was created before Complainant’s USPTO filing date, Complainant’s claims common law rights in the DAN CAPLIS LAW mark dating back to at least 2013 for the purposes of Policy ¶ 4(a)(i). Common law rights are typically found through a showing that a secondary meaning in the mark has been created in the minds of the public. See AOL LLC v. DiMarco, FA 1275978 (Forum Sept. 9, 2009) (“‘Secondary meaning’ is acquired when ‘in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product rather than the product itself.’”). Complainant submits that its legal services are well known throughout the United States. Complainant avers that its legal analysis has been quoted by many prominent media outlets and Complainant has also been a regular guest on national interview shows. See Compl. Ex. 8. Traditionally, a secondary meaning is also established by evidence of a complainant’s personal name. See Joel Pickford v. Frances Dunn, FA 1772362 (Forum Mar. 30, 2018) ("Personal names in connection with a showing of secondary meaning are sufficient to demonstrate common law rights in a mark per Policy ¶ 4(a)(i). Complainant’s mark has been used in commerce since 1977 and Complainant provides examples which include books, magazines, newspapers, events, and other sources. The Panel here finds Complainant has sufficiently demonstrated common law rights in the JOEL PICKFORD mark per Policy ¶ 4(a)(i).") Complainant points to the principal of Complainant, “Dan Caplis”, who has been practicing law under his own name “Dan Caplis” since 1983. As the Panel finds Complainant’s contentions to be persuasive, it concludes that Complainant has established common law rights since at least 2013 by showing the DAN CAPLIS LAW mark has taken on a secondary meaning in association with Complainant’s business.
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s DAN CAPLIS LAW mark. Complainant submits that the <dancaplisalw.com> domain name is confusingly similar to the DAN CAPLIS LAW mark as it contains the mark in its entirety, less the space and merely transposing the letters “l” and “a” and adds the gTLD “.com.” Panels have consistently found that slight differences between domain names and registered marks, such as slightly misspelling a mark, do not distinguish the domain name from the mark incorporated therein. See Am. Online, Inc. v. David, FA 104980 (Forum Apr. 10, 2002) (“The misspelling of a famous mark does not diminish the confusingly similar nature between the marks and the disputed domain names.”). Similarly, the addition of a gTLD is irrelevant in determining whether a disputed domain name is confusingly similar. See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel agrees with Complainant and finds that the <dancaplisalw.com> domain name is confusingly similar to the DAN CAPLIS LAW mark for the purposes of Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s DAN CAPLIS LAW mark and to use it in its domain name, making only a minor spelling alteration;
(b) Respondent registered the <dancaplisalw.com> domain name on November 26, 2016.
(c) Respondent uses the <dancaplisalw.com> domain name to pass itself off as Complainant in order to divert Internet users to Respondent’s website where Respondent hosts third-party links which compete directly with Complainant’s business;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant submits that Respondent has no rights or legitimate interests in the <dancaplisalw.com> domain name as Respondent is not commonly known by the disputed domain name. Where a response is lacking WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Complainant provides relevant WHOIS information which identifies Respondent as “Ed Couse”. See Compl. Ex. 5. The Panel therefore finds, under Policy ¶ 4(c)(ii), that Respondent is not commonly known by the <dancaplisalw.com> domain name;
(f) Complainant contends Respondent’s lack of rights or legitimate interests in the <dancaplisalw.com> domain name is demonstrated by its failure to use the name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainant argues that, instead, Respondent attempts to pass itself off as Complainant to host links of competing services at the disputed domain name’s resolving website. Attempting to pass off as a complainant in order to host links to competing goods or services is generally not considered to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”); see also Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business). Here, Complainant provides screenshots of the disputed domain name which shows that the domain name resolves to a website that prominently displays Complainant’s mark, emulates the design elements of an alleged prior version of Complainant's website, and uses the identical pop-up live chat window as Complainant's website. See Compl. Ex. 6. In addition, Respondent appears to host links to third-parties that compete directly with Complainant’s business. Id. The Panel therefore determines that Respondent does not have rights or legitimate interests in the <dancaplisalw.com> domain name per Policy ¶¶ 4(c)(i) and (iii);
(g) Complainant contends that Respondent is a former employee of Complainant, who was terminated for cause on September 9, 2016. Former employees of a company no longer hold any rights or legitimate interests in a company’s mark. See Sci., Eng’g & Tech. Assocs. Corp. v. Freeman, FA 637300 (Forum Mar. 14, 2006) (holding that the respondent, the Chief Financial Officer of the complainant, was not authorized or licensed to register or use domain names that incorporate Complainant’s mark and therefore did not have rights or legitimate interests in the domain name containing the complainant’s mark). Here, Complainant contends that after Respondent was terminated on September 9, 2016, Respondent began using the disputed domain name to defame and disparage Complainant’s business and reputation. See Compl. Ex. 6. The Panel therefore determines that Respondent does not have rights or legitimate interests in the <dancaplisalw.com> domain name per Policy ¶ 4(a)(ii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and uses the <dancaplisalw.com> domain name in bad faith because Respondent has attempted to coerce Complainant into paying a sum in excess of out-of-pocket costs to cease posting the negative comments on the website associated with the <dancaplisalw.com> domain name. Such an offer to extort a complainant by using a disputed domain name can evidence bad faith under Policy ¶ 4(b)(i). See Theresa Weiss v. FREE SPIRIT/FREE SPIRIT (LEGAL NAME), FA 1612808 (Forum May 27, 2015) (finding registration and use in bad faith where the respondent requested payment of $30,000 from the complainant as the price for the respondent to remove “every single video, review, and blog” that the respondent had posted that had harmed the complainant’s business). Here, Complainant contends that Respondent registered the <dancaplisalw.com> domain name for the purposes of disparaging Complainant, to publish negative and defamatory information regarding Complainant and to extort money from Complainant in exchange for ceasing the negative activities on the resolving webpage. See Compl. Ex. 10. Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith pursuant Policy ¶ 4(b)(i).
Secondly, Complainant submits that Respondent disrupts Complainant’s business and is intentionally attempting to attract for commercial gain Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant’s DAN CAPLIS LAW mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Using a confusingly similar domain name to disrupt a complainant’s business and mislead users can evince bad faith registration and use per Policy ¶¶ 4(b)(iii) and (iv). See PopSockets LLC v. san mao, FA 1740903 (Forum Aug. 27, 2017) (finding disruption of a complainant’s business which was not directly commercial competitive behavior was nonetheless sufficient to establish bad faith registration and use per Policy ¶ 4(b)(iii)); see also AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also Zuccarini, WIPO Case No. D2002-1011 (finding respondent’s intentional registration of domain name <minorleaugebaseball.com> for the express purpose of misdirecting unaware persons mistyping or misspelling the trademark was “clear evidence of exactly the bad faith conduct that the framers of the ICANN UDRP rules had in mind.”). Here, Complainant contends that Respondent’s typo squatting of the disputed domain name is intended to mislead Internet users and disrupt Complainant’s business by diverting Internet traffic away from Complainant’s site, and provides a screenshot of Respondent’s use of the domain name’s resolving webpage. See Compl. Ex. 6. The screenshots show that Respondent appropriates Complainant’s content from its own website and posts critical commentary on the webpage, along with links to Complainant’s competitors. Id. Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith pursuant Policy ¶¶ 4(b)(iii) and/or (iv).
Thirdly, Complainant contends that by transposing the letters “l” and “a” in the DAN CAPLIS LAW mark, Respondent engages in typosquatting. A finding of typosquatting can evince bad faith under Policy ¶ 4(a)(iii). See Adorama, Inc. v. Moniker Privacy Services, FA1503001610020 (Forum May 1, 2015) (“Respondent has also engaged in typosquatting, which is additional evidence of bad faith registration and use under Policy ¶ 4(a)(iii). Respondents who capitalize on common typing errors engage in bad faith registration under Policy ¶ 4(a)(iii).”). Thus the Panel holds that Respondent’s transposing of two letters in Complainant’s mark constitutes typosquatting, further evincing bad faith by Respondent.
Fourthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the DAN CAPLIS LAW mark and in view of the conduct that Respondent has engaged in when using the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dancaplisalw.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: July 31, 2018
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