Phelan Hallinan Diamond & Jones, LLP v. ORLANDO RODRIGUEZ
Claim Number: FA1609001692280
Complainant is Phelan Hallinan Diamond & Jones, LLP (“Complainant”), represented by Alexis Arena of Flaster/Greenberg, P.C., Pennsylvania, United States. Respondent is ORLANDO RODRIGUEZ (“Respondent”), California, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <phellanhallinan.com>, 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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 2, 2016; the Forum received payment on September 2, 2016.
On September 7, 2016, eNom, Inc. confirmed by e-mail to the Forum that the <phellanhallinan.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 September 8, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 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@phellanhallinan.com. Also on September 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 October 4, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 states that it is a law firm whose founding partners include Larry Phelan, Esq. and Frank Hallinan, Esq. Complainant owns common law rights in the PHELAN HALLINAN mark by virtue of its use of the mark in connection with its law firm for over a decade.
According to Complainant, the disputed domain name is confusingly similar to Complainant’s mark, save for the addition of the extra “l” in “Phelan,” a common misspelling of the PHELAN HALLINAN mark.
Complainant alleges that Respondent has no rights or legitimate interests in the domain name. Respondent does not use the domain name in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use. The disputed domain name does not resolve to a web site, but it is used to send fraudulent e-mails.
According to Complainant, Respondent registered and is using the domain name in bad faith. Complainant became aware of Respondent’s purchase of the domain name because Respondent used it in a sophisticated e-mail scam. On August 22, 2016, Respondent sent an e-mail from a PhellanHallinan.com e-mail address using the name “Mary McCleskey.” See Amended Complaint Annex, “E”. Mary McCleskey is the name of an individual who works for Complainant. Respondent’s e-mail attempted to misdirect a large wire transfer of funds related to a real estate transaction involving Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns rights in the mark PHELAN HALLINAN dating back to at least 2008.
The disputed domain name was registered in 2016.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
Respondent has used the disputed domain name to send a fraudulent e-mail impersonating one of Complainant’s employees.
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.”).
Complainant owns common law rights in the PHELAN HALLINAN mark by virtue of its use of the mark in connection with its law firm for over a decade, and because the PHELAN HALLINAN mark has become distinct through Complainant’s use and exposure of the mark. A complainant’s claim of common law rights in a mark is permitted when the complainant can show a secondary meaning in the mark. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
Complainant references a 2008 newsletter prominently displaying the PHELAN HALLINAN mark, the display of the mark in legal and business directories like Super Lawyer, Martindale, and FindLaw, and Complainant’s registration of the PhelanHallinan.com domain name in 2010, which it uses in connection with offering professional legal services. Panels have held that a long association of a name with a business, such that the name and the business become synonymous in the public mind, can establish a complainant’s secondary meaning in a mark. Panels have also held that a complainant’s continuous use and advertising of a mark can establish common law rights. See Surecom Corp. NV v. Rossi, FA 1352722 (Forum Nov. 29, 2010) (holding that complainant had acquired secondary meaning in the mark, thereby establishing common law rights in the mark for purposes of Policy ¶ 4(a)(i), as a result of complainant’s continuous use of the CAM4 mark since 1999); see also AOL LLC v. DiMarco, FA 1275978 (Forum Sept. 9, 2009) (finding that the manner and amount of advertising done to promote a mark may suggest secondary meaning). The Panel finds that Complainant has provided sufficient evidence to establish a secondary meaning in the PHELAN HALLINAN mark, and it finds that Complainant has established common law rights in the mark under Policy ¶ 4(a)(i).
The disputed domain name is confusingly similar to Complainant’s mark, because it is identical to the mark save for the addition of the extra “l” in “Phelan,” a common misspelling of the PHELAN HALLINAN mark. Panels have decided that these changes do not serve to adequately distinguish a respondent’s domain from a complainant’s mark under Policy ¶ 4(a)(i). See Google, Inc. v. DktBot.org, FA 286993 (Forum Aug. 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 Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). Thus, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Respondent has no rights or legitimate interests in the domain name. Respondent is not commonly known by the terms of the domain, and Respondent’s use of Complainant’s mark was not authorized by Complainant. See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (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). Here, the Panel notes that the WHOIS information for the domain name merely lists “ORLANDO RODRIGUEZ” as registrant and that Respondent has failed to provide any evidence for the Panel’s consideration. Thus the Panel finds no basis in the available record to find Respondent commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Rather, Respondent is using the disputed domain name to send fraudulent e-mails, see below. This is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See Microsoft Corporation v. Terrence Green, FA 1661030 (Forum, Apr. 4, 2016) (finding Respondent’s use of <microsoftcorps.com> to impersonate an executive of Complainant was not within the uses allowable under Policy ¶ 4(c)(i) and 4(c)(iii)).
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Complainant became aware of Respondent’s purchase of the domain name because Respondent used it in a sophisticated e-mail scam. On August 22, 2016, Respondent sent an e-mail from a PhellanHallinan.com e-mail address using the name “Mary McCleskey.” Mary McCleskey is the name of an individual who works for Complainant. Respondent’s e-mail attempted to misdirect a large wire transfer of funds related to a real estate transaction involving Complainant. Panels have determined that a respondent’s use of a domain name as an e-mail address to pass itself off as a complainant in a fraudulent scheme is evidence of bad faith registration and use per Policy ¶ 4(a)(iii). See Qatalyst Partners LP v. Devimore, FA 1393436 (Forum July 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use); see also Smiths Group plc v. Snooks, FA 1372112 (Forum Mar. 18, 2011) (finding that the respondent’s attempt to impersonate an employee of the complainant was evidence of bad faith registration and use under Policy ¶ 4(a)(iii)); Microsoft Corporation v. Terrence Green, FA 1661030 (Forum Apr. 4, 2016)(finding the Respondent’s use of the disputed domain names to send fraudulent emails supported a finding of bad faith registration and use under Policy ¶ 4(b)(iii)); Chevron Intellectual Property, LLC v. Jack Brooks, FA 1635967 (Forum Oct. 6, 2015)(finding that Respondent’s use of <chevron-corps.com> to impersonate an executive of Complainant in emails is in opposition to Complainant and is therefore in bad faith under Policy ¶ 4(b)(iii); Brownell Travel, Inc. v. Troy Haas, FA 1589137 (Forum Dec. 20, 2014)(finding the use of the domain name to send emails impersonating the CEO to the Complainant’s Account Manager to attempt to commit fraud on the Complainant constituted bad faith registration and use under Policy ¶ 4(b)(iii)); The Hackett Group, Inc. v. Brian Herns/The Hackett Group, FA 1597465 (Forum Feb. 6, 2015)(finding that the use of emails associated with the domain name to send fraudulent emails contains the requisite competitive nature under Policy ¶ 4(b)(iii) and this is evidence of bad faith disruption); National Oilwell Varco, L.P. v. Craig Wood/NOV, FA 1575951 (Forum Sept. 22, 2014) (“We are persuaded by the evidence that Respondent’s use of the <nov-inc.com> domain name to commit a commercial fraud while purporting to act in the name of the Complainant, all as alleged in the Complaint, demonstrates bad faith in the registration and use of the domain name”). Thus the Panel finds that Respondent registered and is using the domain name in bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <phellanhallinan.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: October 5, 2016
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