McGuireWoods LLP v. Geoffry Cole
Claim Number: FA1705001732725
Complainant is McGuireWoods LLP (“Complainant”), represented by Amanda L. DeFord of McGuireWoods LLP, Virginia, USA. Respondent is Geoffry Cole
(“Respondent”), Virginia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mcguirewoodsllp.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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 22, 2017; the Forum received payment on May 22, 2017.
On May 23, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <mcguirewoodsllp.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 May 25, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 14, 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@mcguirewoodsllp.com. Also on May 25, 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 21, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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
i) Complainant has rights in the MCGUIREWOODS mark based upon the registration with United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,483,615, registered Aug. 28, 2001). Respondent’s <mcguirewoodsllp.com> is confusingly similar to Complainant’s mark as it contains Complainant’s mark in its entirety only adding the acronym “LLP” which stands for “Limited Liability Partnership” and relates to Complainant’s business, and the most common generic top level domain name (“gTLD”), “.com.”
ii) Respondent does not have rights or legitimate interests in the <mcguirewoodsllp.com> domain name. Respondent is not commonly known by the disputed domain name and Complainant has not granted Respondent permission or license to the MCGUIREWOODS mark for any purpose. Respondent does not use the disputed domain name for any bona fide offering of goods or services or for a legitimate non-commercial or fair use. Rather, Respondent uses the domain name as a parked webpage that contains no content other than pay-per-click links to other law firms’ websites.
iii) Respondent registered and uses the disputed domain name in bad faith. Respondent uses the domain name with actual knowledge of Complainant’s mark and business.
B. Respondent
Respondent failed to submit a Response in this proceeding. The Panel notes that the disputed domain names were created on April 19, 2017.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed 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.”).
Complainant, McGuireWoods LLP is an international law firm that provides a wide variety of legal services. Complainant claims rights to the MCGUIREWOODS mark based upon registration with the USPTO (Reg. No. 2,483,615, registered Aug. 28, 2001). Registration with USPTO sufficiently establishes rights in a mark under Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Therefore, the Panel finds that Complainant has rights in the MCGUIREWOODS mark per Policy ¶ 4(a)(i).
Complainant next claims that Respondent’s <mcguirewoodsllp.com> domain name is confusingly similar to the MCGUIREWOODS mark as it contains the mark in its entirety only adding the acronym “LLP” which stands for “Limited Liability Partnership” and relates to Complainant’s business, and the most common gTLD, “.com.” The omission of spacing and a mark and the addition of a gTLD are insufficient to distinguish a domain name from a mark per Policy ¶ 4(a)(i). See Health Republic Insurance Company v. Gustavo Winchester, FA 1622089 (Forum July 7, 2015) (finding, “Domain name syntax requires TLDs. Domain name syntax prohibits spaces. Therefore, omitted spacing and adding a TLD must be ignored when performing a Policy ¶4(a)(i) analysis.”). Adding a term that relates to a complainant’s business may also fail to provide distinction. See Kohler Co. v. Curley, FA 890812 (Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”). Accordingly, the Panel finds that <mcguirewoodsllp.com> is confusingly similar to the MCGUIREWOODS mark under Policy ¶ 4(a)(i).
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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006)
(“Complainant must first 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, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain
names.”).
Complainant argues that Respondent has no rights or legitimate interests in <mcguirewoodsllp.com> > as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the MCGUIREWOODS mark in any way. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by the disputed 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.). The WHOIS information of record identifies Respondent as “Geoffry Cole”. Additionally, lack of evidence in the record to indicate that the respondent had been authorized to register a domain name using a complainant’s mark supports a finding that Respondent does not have rights or legitimate interests in the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain name.
Complainant further argues Respondent’s lack of rights or legitimate interests in the disputed domain name is evinced by their failure to use the name for bona fide offering of goods or services or legitimate noncommercial or fair use. Complainant contends that Respondent has made no effort to use the domain name since it was registered. Instead, the domain currently resolves to a parked webpage that contains no content other than pay-per-click links to other law firms websites. The registrant of a domain name is responsible for the content of the material appearing on the webpage associated with the domain name in dispute. See Trulia, Inc. v. Armen A, FA1586491 (Forum Dec. 2, 2014) (finding that a parked page containing pay-per-click advertising links that resolve to the websites of Complainant’s competitors did “not constitute a Policy ¶ 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) legitimate noncommercial fair use”). Therefore, while Exhibit G demonstrates use of a parking service, the Panel agrees that Respondent does not have any rights or legitimate interest in the disputed domain name.
Complainant argues Respondent must have had actual knowledge of Complainant’s MCGUIREWOODS mark and business because Respondent registered the disputed domain name using an added acronym coupled with Complainant’s MCGUIREWOODS mark, which has been in use by Complainant around the world for nearly two decades. Actual knowledge may be proven through a totality of circumstances. See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to an in competition with Complainant.). The Panel agrees that actual knowledge exists—which supports a finding of bad faith under Policy ¶ 4(a)(iii).
Further, Complainant argues that Respondent parked the domain name in bad faith. A respondent using an identical or confusingly similar domain name to merely park it and presumably net click through fees has been considered bad faith. See Vivint, Inc. v. GreenLeaf Solar, FA1585796 (Forum Nov. 25, 2014) (“Respondent’s failure to use the <deanwitter.mobi> domain name, which is identical to Complainant’s DEAN WITTER mark, for any purpose besides the ‘parked’ page that currently resolves from the disputed domain name indicates that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ (a)(iii)). Therefore the Panel finds that Respondent is using the domain name in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mcguirewoodsllp.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: June 26, 2017
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