Morice Law Firm, LLC v. Natchez Morice
Claim Number: FA1810001811774
Complainant is Morice Law Firm, LLC (“Complainant”), represented by Adriano Pacifici of Tobler Law Firm, 1500 Sugar Bowl Drive, Mercedes-Benz, Louisiana, USA. Respondent is Natchez Morice (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <moricelawfirm.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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 15, 2018; the Forum received payment on October 15, 2018.
On October 18, 2018, Tucows Domains Inc. confirmed by e-mail to the Forum that the <moricelawfirm.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 November 2, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 23, 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@moricelawfirm.com. Also on November 2, 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 November 27, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown Q 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, Morice Law Firm, LLC, is a Louisiana limited liability company that provides services under the MORICE LAW FIRM mark. Complainant has common law rights in the mark based upon the consumer and media recognition of the mark. Respondent’s <moricelawfirm.com> domain name is confusingly similar to Complainant’s mark because Respondent includes the entire mark in the disputed domain, deletes the spaces between the words, and adds the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <moricelawfirm.com> domain name because Respondent is not commonly known by the disputed domain name and is not authorized by Complainant to use the mark. Respondent’s affiliation with Complainant arises because Respondent is the brother of Complainant. Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Instead, Respondent is offering the disputed domain name for sale back to Complainant in excess of out-of-pocket costs.
Respondent registered and uses the <moricelawfirm.com> domain name in bad faith because Respondent fails to make an active use of the disputed domain name. Furthermore, Respondent was hired by Complainant to register the Domain Name under Complainant’s name and now refuses to transfer the disputed domain name to Complainant unless he is paid to do so. Finally, Respondent had actual knowledge of Complainant’s rights in the mark prior to registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a Louisiana limited liability company that provides law services under the MORICE LAW FIRM mark.
2. Complainant has established its common law trademark rights to the MORICE LAW FIRM mark due to establishing secondary meaning in that name and community recognition of the mark as identifying Complainant’s services.
3. Respondent registered the <moricelawfirm.com> domain name on August 30, 2008 on behalf of Complainant and having been hired by Complainant to do so. Respondent had and has no right to register or retain the domain name other than as an agent for Complainant or on trust for Complainant.
4. Respondent has not established a right or legitimate interest in the domain name, but has offered to sell it to Complainant, which also establishes that Respondent has registered and used the domain name 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:
(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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has common law rights in the MORICE LAW FIRM mark due to its continuous and exclusive use of the mark and the substantial goodwill associated with Complainant and its mark. A complainant may have common law rights in a mark where the mark has acquired a secondary meaning under Policy ¶ 4(a)(i). See Marquette Golf Club v. Al Perkins, 1738263 (Forum July 27, 2017) (finding that Complainant had established its common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including “longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising.”). Complainant provides a screenshot of its website as well as multiple newspaper advertisements for its business. See Compl. Annexes B and C. The Panel has examined this evidence and finds that at least since 1998 Complainant has used the name Morice Law Firm in its business, has practiced in law under that name, advertised that fact and acquired community acceptance of the name as being the source of its law services. Therefore, the Panel finds as per Policy ¶ 4(a)(i) that Complainant has established its common law rights in the MORICE LAW FIRM by establishing secondary meaning in that name and acquiring community recognition of the mark as identifying Complainant’s services
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s MORICE LAW FIRM mark. Complainant argues that Respondent’s <moricelawfirm.com> domain name is confusingly similar to Complainant’s mark because Respondent includes the entire mark in the disputed domain name, deletes the spaces and adds a gTLD. The deletion of a space and the addition of a gTLD to a mark may not be sufficient to distinguish a domain name from a mark under Policy ¶ 4(a)(i). See Christmas Place, Inc. v. Pham Dinh Nhut, FA 1597046 (Forum Feb. 16, 2015) (finding that removal of a spac[e], and removal of an article and preposition, are without legal significance so as to mitigate the confusingly similarity); see also Longo Brothers Fruit Markets Inc. v. John Obeye / DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM, FA 1734634 (Forum July 17, 2017) (“[O]f course it is well established in prior UDRP cases that the addition of a ‘.com’ suffix is irrelevant when determining if a disputed domain name is identical or confusingly similar to a trademark.”). Here, Respondent includes the entire mark in the disputed domain name, eliminates the spaces, and adds the “.com” gTLD. Accordingly, while conducting a Policy ¶ 4(a)(i) analysis the Panel finds that Respondent’s disputed domain name is virtually identical and thus confusingly similar to Complainant’s mark.
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 MORICE LAW FIRM trademark and to use it in his virtually identical domain name;
(b) Respondent registered the <moricelawfirm.com> domain name on August 30, 2008 on behalf of and at the request of Complainant;
(c) Respondent registered the domain name consequent to his being the brother of the principal of Complainant and having been hired by Complainant to register the domain name, but being no longer engaged by Complainant has refused to transfer the domain name to Complainant other than by selling it to Complainant;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent lacks rights and legitimate interests in the <moricelawfirm.com> domain name because Respondent is not commonly known by the disputed domain name and is not authorized to use Complainant’s mark. Where a response is lacking relevant WHOIS information may be used to identify respondent under Policy ¶ 4(c)(ii). See Bittrex, Inc. v. Caroline Alves Maia, FA 1796113 (Forum Aug. 6, 2018) (“UDRP panels have consistently held that evidence of a registrant name that is materially different from the domain name at issue is competent evidence that the respondent is not commonly known by the domain name.”). Additionally, lack of authorization from complainant to use its mark may be evidence that respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). Complainant provides the WHOIS information which identifies the registrant of the disputed domain name as “Natchez Morice” and Complainant contends that Respondent and Complainant share a last name because they are brothers and Respondent has no other association with Complainant or Complainant’s business. In any event, the evidence, which Respondent has not denied, is that he is known by the name Trey Morice and not by the name Morice Law Firm. Nor could he lawfully be known by the name Morice Law Firm. Accordingly, the Panel finds that Respondent is not commonly known by the disputed domain name and thus lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii);
(f) Complainant submits that Respondent fails to use the <moricelawfirm.com> domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Instead, Respondent attempts to exploit Complainant by offering the domain name for sale to Complainant. Use of a domain name to sell it to complainant may not be considered a bona fide offering of goods and services or a legitimate noncommercial or fair use under Policy ¶ 4(a)(ii). See Enterprise Holdings, Inc. v. Huang Jia Lin, FA1504001614086 (Forum May 25, 2015) (“Accordingly, the Panel finds that Respondent’s general attempt to sell the disputed domain name is further evidence of Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii).”). Complainant provides emails sent between it and Respondent which show Respondent offering to sell the disputed domain name to Complainant. See Compl. Annex. E. That is hardly bona fide or legitimate conduct as it is clear from the evidence that Respondent at no time had the right to register the domain name on his own behalf and did so only as an agent of Complainant or on trust for it. Consequently, the Panel finds that Respondent has failed to use the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use under Policy ¶ 4(a)(ii);
(g) Moreover it should be pointed out and as Complainant submits, Respondent is not a qualified legal practitioner and under Louisiana law he is not permitted to provide legal services under the MORICE LAW FIRM mark. As such he could only have registered the domain name as an agent of Complainant or on trust for Complainant. The evidence makes it clear that such an agency or trust has now been brought to an end and there is no other basis on which Respondent could legitimately claim that he has a right or a legitimate interest in the domain name.
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 contends that Respondent registered and uses the disputed domain name in bad faith because Respondent has offered to sell the disputed domain name to Complainant. Use of a domain name to sell it to a complainant for profit may be evidence of bad faith under Policy ¶ 4(b)(i). See Regions Bank v. Darla atkins, FA 1786409 (Forum June 20, 2018) (finding that the respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs). Complainant provides emails sent between it and Respondent which show Respondent offering to sell the disputed domain name to Complainant. See Compl. Annex. E. Accordingly, the Panel finds that Respondent’s offer to sell the disputed domain name to Complainant colours his motivation from the time he registered the domain name, and is evidence of both bad faith registration and use per Policy ¶ 4(b)(i). It should also be added that if Respondent disputed this interpretation of the facts and the conclusion drawn from them, he could have filed a Response and explained his position but has not done so.
Secondly, Complainant argues that Respondent registered and uses the <moricelawfirm.com> domain name in bad faith because Respondent fails to make an active use of the disputed domain name. Failure to use a domain name actively may be evidence of bad faith per Policy ¶ 4(a)(iii). See Marsh Supermarkets Company, LLC, formerly known as Marsh Supermarkets, Inc. v. Choi Sungyeon, FA1312001532854 (Forum Feb. 25, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <marshsupermarkets.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii) because Respondent has failed to make an active use of the disputed domain name.”). Complainant provides a screenshot of the webpage associated with the disputed domain name and contends the webpage has not been used or updated since 2008. See Compl. Annex. F. Accordingly, the Panel finds that Respondent fails to make an active use of the disputed domain name under Policy ¶ 4(a)(iii). In any event it is clear that Respondent could not lawfully use the domain name as he is not a lawyer or a law firm and any permission he may have been given by Complainant to use the domain name on its behalf must have been revoked.
Thirdly, Complainant submits that Respondent was formerly hired by Complainant to register the <moricelawfirm.com> domain name, and Respondent refuses to transfer the disputed domain name back to Complainant other than by selling it to Complainant. Where a respondent was previously employed by complainant, respondent may be presumed to have actual knowledge of complainant’s rights in the mark per Policy ¶ 4(a)(iii). See Holding Company of The Villages, Inc. v. Jaime Goldsmith, FA 1673212 (Forum Jun. 16, 2016) (finding the respondent’s status as a former employee of complainant’s dispositive in holding the respondent had actual knowledge of the complainant’s mark and rights and thus registered the disputed domain name in bad faith). Complainant contends bad faith exists because Respondent was hired to register the disputed domain name in Complainant’s name. See Compl. p.7. Therefore, while conducting a Policy ¶ 4(a)(iii) analysis the Panel finds that Respondent registered and uses the disputed domain name in bad faith.
Finally, 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 MORICE LAW FIRM 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 <moricelawfirm.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: November 28, 2018
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