McGuireWoods LLP v. JESSICA KARASCO
Claim Number: FA1708001743965
Complainant is McGuire Woods LLP (“Complainant”), represented by Claire Hagan Eller of McGuire Woods LLP, Virginia, USA. Respondent is JESSICA KARASCO (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mcguirewood.net> (‘the Domain Name’), registered with eNom, LLC.
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.
Dawn Osborne of Palmer Biggs IP as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 10, 2017; the Forum received payment on August 10, 2017.
On August 14, 2017, eNom, LLC confirmed by e-mail to the Forum that the <mcguirewood.net> domain name is registered with eNom, LLC and that Respondent is the current registrant of the name. eNom, LLC has verified that Respondent is bound by the eNom, 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 August 16, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 5, 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@mcguirewood.net. Also on August 16, 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 8 September, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs IP 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’s contentions can be summarised as follows:
Complainant owns the registered trade mark MCGUIRE WOODS, inter alia, in the USA for legal services. It has used MCGUIRE WOODS as part of its name since the 1960s and has been known simply as this name since 2000. It also owns many domain names containing this mark including mcguirewoods.com.
The Domain Name registered in 2017 is virtually identical and confusingly similar to Complainant’s MCGUIRE WOODS mark. The only difference is the deletion of the ‘s’ from Complainant’s MCGUIRE WOODS mark and the addition of the .net gTLD, both minor differences that do not mitigate the risk of confusion.
Respondent is not known by McGuire Woods and does not offer services under this name. Complainant has not granted Respondent any rights to use Complainant’s mark.
Initially Respondent used a privacy service. The Domain Name resolves to an error message on the Internet. The Domain Name has not been used for a bona fide purpose.
As the indication MCGUIRE WOODS has no other meaning except for an identifier of Complainant there can be little doubt Respondent has registered the Domain Name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the registered trade mark MCGUIRE WOODS, inter alia, in the USA for legal services. It has used MCGUIRE WOODS since 2000.
The Domain Name has not been used.
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 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 Domain Name consists of Complainant’s MCGUIRE WOODS mark (registered around the world, inter alia in the USA for legal services and used since at least 2000), misspelled without the ‘s’ and the gTLD.net. Panels have found that omitting one letter to the end of a registered mark does not distinguish a domain name from that mark. See Lockheed Martin Corporation v toyosei maruyama, FA 1620489 (Forum July 7, 2015)(simply removing the letter ‘s’ from a mark in the creation of a domain name still creates a confusingly similar domain name).
The gTLD .net does not serve to distinguish the Domain Name from the mark, the dominant portion of which is the distinctive component of the Domain Name. See Trip Network Inc. v Alviera, FA 9149943 (Forum Mar 27, 2007) (concluding that the adding of a generic TLD to a domain name is irrelevant to a Policy 4(c)(i) analysis.)
Accordingly, the Panel holds that the Domain Name is confusingly similar for the purpose to a mark in which Complainant has rights.
Rights or Legitimate Interests
Complainant has not authorised the use of its mark. Respondent has not answered this Complaint and there is no evidence or reason to suggest Respondent is, in fact. commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (holding that Respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that Complainant had not licensed or authorized Respondent to use its ALASKA AIRLINES mark).
There has been no use of the mark. See Hewlett-Packard Co. v Shemesh, FA 434145 (Forum April 20, 2005)(Where the panel found inactive use is not a bona fide offering of goods or services pursuant to Policy 4(c)(i)).
As such the Panel finds that Respondent does not have rights or a legitimate interest in the Domain Name and that Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
Respondent has not answered this Complaint or explained why it should be allowed to register a domain name containing Complainant’s well known mark in what appears on the face of it to be a typosquatting registration.
Typosquatting itself is evidence of relevant bad faith registration and use. See Diners Club int'l Ltd. v Domain Admin ****** It's all in the name ******, FA 156839 (Forum June 23, 2003) (for the proposition that registering a domain name which entirely incorporates a well known mark in the hope that Internet users will mistype Complainant’s mark and be taken to Respondent’s site is registration and use in bad faith).
As such, the Panel holds that Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mcguirewood.net> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: September 21, 2017
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