Sheppard Mullin Richter & Hampton, LLP / Jill M. Pietrini / Paul A. Bost v. James Paul / XLI
Claim Number: FA1908001856047
Complainant is Sheppard Mullin Richter & Hampton, LLP / Jill M. Pietrini / Paul A. Bost (“Complainant”), represented by Jill M. Pietrini of Sheppard, Mullin, Richter, & Hampton, LLP, California, USA. Respondent is James Paul / XLI (“Respondent”), Nevada, USA.
REGISTRAR AND DISPUTED DOMAIN NAME S
The domain names at issue are <sheppardmullinjillmpietrini.com>, <sheppardmullinjillpietrini.com>, <sheppardmullinlaw.com>, <sheppardmullinlawfirm.com>, <sheppardmullinpaulabost.com>, <sheppardmullinpaulbost.com>, <jillpietrini.com>, <jillmpietrini.com>, <paulabost.com>, and <paulbost.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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 6, 2019; the Forum received payment on August 6, 2019.
On August 7, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <sheppardmullinjillmpietrini.com>, <sheppardmullinjillpietrini.com>, <sheppardmullinlaw.com>, <sheppardmullinlawfirm.com>, <sheppardmullinpaulabost.com>, <sheppardmullinpaulbost.com>, <jillpietrini.com>, <jillmpietrini.com>, <paulabost.com>, and <paulbost.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 August 20, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 9, 2019 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@sheppardmullinjillmpietrini.com, postmaster@sheppardmullinjillpietrini.com, postmaster@sheppardmullinlaw.com, postmaster@sheppardmullinlawfirm.com, postmaster@sheppardmullinpaulabost.com, postmaster@sheppardmullinpaulbost.com, postmaster@jillpietrini.com, postmaster@jillmpietrini.com, postmaster@paulabost.comandpaulbost.com. Also on August 20, 2019, 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 September 12, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, 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 names be transferred from Respondent to Complainant.
Preliminary Issue: Multiple Complainants
In the instant proceedings, there are three named Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
The three named Complainants which are claimed in this matter are 1) Sheppard Mullin Richter & Hampton, LLP, 2) Jill M. Pietrini, and 3) Paul A. Bost. Complainants argue that Complainants Jill M. Pietrini and Paul A. Bost are employees at the Complainant Sheppard Mullin law firm.
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple complainants to be consolidated and proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark. But also see AmeriSource Corp. v. Park, FA 99134 (Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).
In the present case, the Complaint states that “Ms. Jill M. Pietrini (partner) and Mr. Paul A. Bost (senior associate) are lawyers in the Intellectual Property Practice Group for the firm, working in the Century City office.” However, Complainant provides scant evidence to support this factual claim. It supplies images from the firm’s website at www.sheppardmullin.com which lists “Firm Facts” and “Key Personnel” but this exhibit does not mention either Ms. Pietrino or Mr. Bost. It further submits copies of certain documents from the United States District Court for the Central District of California relating to a law suit that Complainant’s law firm filed against the Respondent on behalf of one of the firm’s clients. However, these documents also make no mention of Ms. Pietrino or Mr. Bost. The only evidence that Ms. Pietrino is related to the Sheppard Mullins law firm appears from the fact that she is the target of certain comments made in one of the Respondent’s websites and she has signed the present UDRP Complaint as “Attorney for Complainants” in a signature block that mentions the Complainant law firm.
In light of the evidence before it, this Panel finds that Sheppard Mullin Richter & Hampton, LLP and Jill M. Pietrini have “demonstrate[d] a link between the two entities” such that there is a sufficient nexus for them to proceed as co-Complainants in this case. However, the Complainant has not submitted any evidence to support its claim of a relationship with Mr. Bost. As such, the Panel will consolidate this case with regard to Sheppard Mullin Richter & Hampton, LLP and Jill M. Pietrini only (hereinafter jointly referred to as “Complainant” unless otherwise specified).
A. Complainant
Complainant Sheppard Mullin Richter & Hampton, LLP is an international law firm founded in 1927 that handles corporate and technology matters, high stakes litigation and complex financial transactions. Complainant has rights in the SHEPPARDMULLIN mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) dated March 20, 2012. Further, Complainant Jill M. Pietrini has common law rights in the JILL M. PIETRINI mark as this is the name of an attorney practicing at Complainant’s firm. Respondent’s <sheppardmullinjillmpietrini.com>, <sheppardmullinjillpietrini.com>, <sheppardmullinlaw.com>, <sheppardmullinlawfirm.com>, <sheppardmullinpaulabost.com>, <sheppardmullinpaulbost.com>, <jillpietrini.com>, and <jillmpietrini.com> domain names, all registered on July 3, 2019, are identical or confusingly similar to Complainant’s marks. The disputed domain names consist of a combination of Complainant’s SHEPPARDMULLIN and/or JILL M. PIETRINI marks and the added descriptive words “law”, “law firm”, or “Jill M Pietrini” and the “.com” generic top level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the disputed domain names. Respondent owns no trademark or service mark in the SHEPPARDMULLIN and JILL M. PIETRINI marks and has not been authorized by Complainant to use the marks. Respondent fails to use the disputed domain names in connection with a bona fide offering of goods or services. Instead, Respondent automatically redirected all of the disputed domain names to the <jillpietrini.com> domain name. Previously Respondent had, without authorization, displayed contact information for Complainant and images copied from Complainant’s own website on the resolving webpage. Currently, Respondent displays a misleading screenshot from the California State website for Complainant. Respondent also uses the disputed domain names to disparage Complainant and disrupt Complainant’s business.
Respondent registered and uses the disputed domain names in bad faith. The disputed domain names were registered during a lawsuit against Respondent that was filed by Complainant on behalf of one of its clients. Respondent attempts to use the goodwill and fame established by Complainant to confuse anyone searching for information about Complainant. The purposes of Respondent’s use are to make false and misleading statements, disrupt Complainant’s business, and malign, attack, and disparage Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
With regard to each of the disputed domain names <sheppardmullinjillmpietrini.com>, <sheppardmullinjillpietrini.com>, <sheppardmullinlaw.com>, <sheppardmullinlawfirm.com>, <sheppardmullinpaulabost.com>, and <sheppardmullinpaulbost.com>:
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the disputed domain name was registered and is being used by Respondent in bad faith.
With regard to each of the disputed domain names <jillpietrini.com> and <jillmpietrini.com>, the Complainant has not demonstrated that the domain is confusingly similar to a trademark in which Complainant has rights.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant asserts rights in the trademark SHEPPARDMULLIN based on registration with the USPTO. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”) Complainant provides copies of its USPTO trademark registration certificates claiming the SHEPPARDMULLIN mark. Accordingly, the Panel finds that Complainant has established rights in the SHEPPARDMULLIN mark for the purposes of Policy ¶ 4(a)(i).
Complainant also asserts common law trademark rights in the name JILL M. PIETRINI. To establish common law rights in a mark, a complainant generally must prove that the mark has generated a secondary meaning beyond merely describing a product or service or identifying the name of a particular individual. When considering the existence of common-law trademark rights in a personal name, resort has often been made to a UDRP case that addressed this issue and which set out a three-part guideline: [f]actors that a panel might consider include (a) whether the name is common (which reduces the possibility of acquiring secondary meaning) - see Gordon Sumner, p/k/a Sting v. Michael Urvan, WIPO Case No. D2000-0596; (b) whether the name was used in connection with goods or services in a commercial context; and (c) the time period over which the name was so used. Arthur Golden v. Galileo Asesores S.L., D2006-1215 (WIPO Dec. 15, 2006). Prior cases in which a complainant has successfully shown secondary meaning in a mark that is a personal name include a situation where an attorney had been in practice for 30 years, appeared on television broadcasts as a legal commentator, and was widely known for his representation of high-profile clients. Kendrick Moxon v Donald Myers, FA 1571591 (Forum Sep. 4, 2014). In another case, the claimed common-law trademark was found to not be a common name, the Complainant had been using his name in connection with the provision of legal and tax services for 25 years, the Complainant was a member of various associations, he was named as a leading tax lawyer in a legal publication, and he acted as a regular lecturer and speaker in various conferences, all of which showed that the Complainant had taken steps to market himself as a legal service provider and is likely well-known in his industry. Rob Havenga v. Privacy Protect.org/ James Tari Moduma, D2014-0101 (WIPO Mar. 13, 2014). However, even highly regarded and successful lawyers have not always been successful in proving that their personal names have acquired the secondary meaning necessary to function as a trademark. In Gregg M. Mashberg v. Crystal Cox, D2011-0677 (WIPO Jun. 30, 2011), the Panel found that:
[t]he evidence in this case falls short. The record before the Panel suggests that Complainant is a highly respected, prominent lawyer who is a partner with a major law firm. There is insufficient evidence here that Complainant markets or provides services independently of the Proskauer law firm. Rather, it appears that the Proskauer firm is the platform on which Complainant provides his legal services.
Nor is there any evidence of record that Complainant has spent money advertising his name apart from the Proskauer firm, or billed clients in his own name. Further, there is no evidence in the record that the legal community regards Complainant as the driving force behind, or alter ego of, the Proskauer firm.
Id.
In the present case, the Complaint claims that Complainant has used the JILL M. PIETRINI mark for many years to identify and distinguish its legal services. Further, Ms. Pietrini is the attorney who signed the present UDRP Complaint. However, this is the full extent of Complainant’s evidence with regard to its claimed common law trademark or service mark rights. Complainant provides a screenshot of the Sheppard Mullin website at which Ms. Pietrini works but the screenshot makes no mention of Ms. Pietrini. No other evidence submitted in this case addresses such matters as the length of time Ms. Pietrini has practiced law, any publicity she has received, her speaking or writing activities, the extent of her reputation, or whether her reputation exists independently of the Sheppard Mullin law firm. As such, the Panel has insufficient evidence upon which to conclude that Complainant has demonstrated secondary meaning in the name JILL M. PIETRINI so as to establish common law trademark or service mark rights.
Further, Complainant argues that the disputed domain names have violated the right of publicity in Ms. Pietrini’s name and asserted that it may apply to the rights in a mark under Policy ¶ 4(a)(i). The Panel notes that the instant dispute is governed by the UDRP and not substantive intellectual property law and so the Panel must decide if these arguments are applicable in this forum. While Policy ¶ 4(k) allows the parties to litigate these points in court, the Panel finds that these arguments are not applicable to this arbitration proceeding not are they within the scope of the UDRP and its limited and well-defined elements. See e.g., The Estate of Cheri Blum v. k, j, D2006-0103 (WIPO Mar. 8, 2006). Under the trademark law of the United States of America, the jurisdiction in which Complainant lists its address, “a distinction is made between trademark protection and the right of publicity. The difference, as noted in J. Thomas McCarthy’s well-known treatise, largely stems from the historical fact that the right of publicity had its origins in the law of ‘privacy,’ whereas the law of trademarks had its origins in the tort of fraud. While the key to the right of publicity is the commercial value of a human identity, the key to the law of trademarks is the use of a word or symbol in such a way that it identifies and distinguishes a commercial source. Thus, while a trademark identifies and distinguishes a commercial source of goods and services, the ‘persona’ protected by right of publicity law identifies a human being. (See McCarthy, The Rights of Publicity and Privacy at paragraph 5:6 et seq. (2d ed. 2000 as revised).” Id. Accordingly, as the language of Policy ¶ 4(a)(i) is limited to “a trademark or service mark in which the complainant has rights”, the Panel’s analysis must be strictly confined to these enumerated legal rights and it may not address any arguments made with respect to other legal concepts such as the right of publicity.
Complainant next argues that Respondent’s <sheppardmullinjillmpietrini.com>, <sheppardmullinjillpietrini.com>, <sheppardmullinlaw.com>, <sheppardmullinlawfirm.com>, <sheppardmullinpaulabost.com>, <sheppardmullinpaulbost.com>, <jillpietrini.com>, and <jillmpietrini.com> domain names are identical or confusingly similar to Complainant’s marks as the disputed domain names consist of a combination of Complainant’s marks and one of the added descriptive terms “law”, “law firm”, “Jill M Pietrini”, or “Paul Bost”, and the “.com” gTLD. The addition of descriptive terms and/or a gTLD fails to distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Bloomberg Finance L.P. v. Sunny Bhadauria, FA 1786429 (Forum June 7, 2018) (finding the <bloombergquint.org> domain name to be confusingly similar to the complainant’s BLOOMBERG mark, as the name consists of the mark, the added term “quint” (which refers to the complainant’s Indian business partner “Quintillian Media”) and the gTLD “.org”); see also MTD Products Inc v. Mike Kernea / Skyline, FA 1775278 (Forum Apr. 19, 2018) (“The mere addition of a gTLD is inconsequential and does not avoid a finding of identity.”) The <sheppardmullinjillmpietrini.com>, <sheppardmullinjillpietrini.com>, <sheppardmullinpaulabost.com>, and <sheppardmullinpaulbost.com> domain names each consist of Complainant’s SHEPPARDMULLIN mark or a combination of Complainant’s mark with descriptive terms and the “.com” gTLD added. Therefore, the Panel finds that these disputed domain names are confusingly similar to Complainant’s SHEPPARDMULLIN mark per Policy ¶ 4(a)(i).
With respect to the domain names <jillpietrini.com>, and <jillmpietrini.com>, it is unnecessary to reach the confusing similarity portion of the Policy ¶ 4(a)(i) analysis as Complainant has not demonstrated trademark or service mark rights in the claimed JILL M. PIETRINI mark.
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). Should it succeed in this effort, the burden then shifts to Respondent to show that 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”).
Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain names as Respondent is not commonly known by any of the disputed domain names. It asserts that Respondent owns no trademark or service mark in the SHEPPARDMULLIN mark and has not been authorized by Complainant to use the mark. A lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name and lacks rights or legitimate interest 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)”); see also Navistar International Corporation v. N Rahmany, FA 1620789 (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). Also, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). The Panel notes that the WHOIS information for the disputed domain names identifies the registrant as “James Paul” or “XLI” and there is no evidence to suggest that Respondent is known otherwise or that it is authorized to use Complainant’s mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names and thus lacks rights or legitimate interest per Policy ¶ 4(c)(ii).
Next, Complainant contends that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services. Instead, Respondent redirects all disputed domain names to a website at the <jillpietrini.com> domain name. At this site, Respondent displayed contact information for Complainant and images copied from Complainant’s own website without authorization on the resolving webpage. Using a disputed domain name to divert Internet users to a respondent’s own website and confusing users into believing affiliation exists between a respondent and complainant is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Complainant submitted a screenshot of Respondent’s website and noted that, before Complainant sent cease-and-desist letters to Respondent, the disputed domain names all redirected to the <jillpietrini.com> domain name which displayed a copyrighted photo from Complainant’s own website and contact information for Complainant’s law firm. Currently, Complainant claims that Respondent’s website displays “a misleading screenshot from the California State Bar website for Ms. Pietrini” although it does not elaborate on how this site or its contents are misleading. Nevertheless, the Respondent has not provided a Response or any other submission in this case or otherwise sought to refute Complainant’s assertions. As such, the Panel finds that Respondent fails to make a bona fide offering of goods or services per Policy ¶ 4(c)(i).
The Complaint makes no mention of Policy ¶ 4(c)(iii) nor does it address the question of whether Respondent makes a legitimate noncommercial or fair use of any of the disputed domain names. It does, however, claim that Respondent uses the disputed domain names to misleadingly disparage Complainant and disrupt Complainant’s business. The use of a disputed domain name to display a site that contains false or misleading information calculated to interfere with a complainant’s business does not convey rights or legitimate interest in such domain name per Policy ¶ 4(a)(iii). See Lloyd Irvin v. [Registrant], FA 1677800 (Forum July 1, 2016) (finding the respondent’s use of the disputed domain name was not legitimate noncommercial or fair where the resolving website contained false, misleading information calculated to interfere with the complainant’s business).
The Panel also notes that, while Respondent’s website does display content that may be considered critical of Complainant, each of the disputed domain names consists of the entirety of Complainant’s SHEPPARDMULLIN mark plus descriptive terms that fail to convey any such critical message. The disputed domains thus create an impersonation of the Complainant’s mark regardless of their website content or use. See Dover Downs Gaming & Entertainment, Inc. v. Domains By Proxy, LLC / Harold Carter Jr, Purlin Pal LLC, Case No. D2019-0633 (WIPO May 22, 2019) (even where a domain name is used in relation to genuine noncommercial free speech, panels tend to find that an “impermissible risk of user confusion through impersonation” exists where the respondent’s claimed fair use is not apparent from the meaning of the disputed domain name itself). At issue was the domain name <doverdownsnews.com> and the Panel held that:
under the impersonation test, the Disputed Domain Name would be perceived by the public as being affiliated with or authorized by Complainant. The Disputed Domain Name consists of Complainant’s mark, DOVER DOWNS, and the word “news”. The addition of “news” provides no indication that Respondent’s site is not affiliated with Complainant or that it hosts a website critical of Complainant. Indeed, the addition of the word “news” is likely to create an impression that the website to which the domain name resolves is published by Complainant to provide information or reports of recent events concerning Complainant.
Id. See also Cantor’s Driving School, Inc. v. Ronit Tehrani, FA 1683258 (Forum Aug. 18, 2016) (finding that the domain name <cantorsdrivingschoolsucks.com> is not itself sufficient to indicate a bona fide complaint site, without additional evidence from the respondent).
Complainant submits screenshots of Respondent’s website, including its metatags, and points out that it displays messages such as “Sheppard Mullin Scumbag attorney, lawyer”, refers to Complainant as “the devil” and describes it as “disgusting”, “greedy” and claims that it “lies to judges”. Complainant also argues that the website displays a misleading screenshot from the California State website for Complainant although it does not specify what portion of the site is from the State website or exactly how it is misleading. In any event, the disputed domain names consist of Complainant’s SHEPPARDMULLIN mark and the addition of the terms “law”, “law firm”, “Jill M Pietrini”, or “Paul Bost”, provides no indication that Respondent’s site is not affiliated with Complainant or that it hosts a website critical of Complainant. Thus, this Panel concludes that Respondent’s disputed domain names seek to impersonate Complainant and this impression may be corrected, if at all, only after a user takes the time to carefully review the content of Respondent’s website.
As such, by a preponderance of the evidence and in the absence of any counter arguments or evidence from the Respondent, the Panel finds that Respondent does not gain any rights or legitimate interests in the disputed domain names per Policy ¶ 4(c)(iii).
A threshold question in the bad faith analysis of Policy ¶ 4(a)(iii) is whether the Respondent had knowledge of the Complainant’s trademark rights at the time it registered the disputed domain names. That Respondent was aware of and on notice of Complainant’s rights in its SHEPPARDMULLIN trademark is evident from the content of Respondent’s website and its being named in a law suit that was filed by Complainant in the District Court for the Central District of California at attorney for one of Complainant’s clients.
Next, Complainant contends that Respondent registered and uses the disputed domain names in bad faith as Respondent attempts to create a likelihood of confusion with Complainant’s mark for the purpose of disrupting Complainant’s business and falsely maligning Complainant and also to prevent Complainant from reflecting its name in a domain name. The Panel notes that Policy ¶ 4(b)(iii) mentions “disruption” but only as it relates to “the business of a competitor”. However, there have been cases which hold that diverting internet users to a website hosting negative commentary can disrupt a complainant’s business and evince bad faith registration and use per Policy ¶ 4(b)(iii). See The Finest Golf Clubs of the World, LTD d/b/a The Eden Club v. Neil Krauter, FA 1537779 (Forum Feb. 14, 2014) (finding bad faith per Policy ¶ 4(b)(iii) where the respondent was diverting users to a website hosting negative commentary because “Respondent uses the <theedenclubfraud.com> domain name to interfere with Complainant’s business.”) Further, Complainant correctly points out that “It is well-established that the four bad faith factors listed in Policy ¶ 4(b) are not exclusive, and that ‘the Panel may consider the totality of the circumstances when determining whether a domain name has been registered and used in bad faith.’” Citing Diners Club International, Ltd. v Infotechnics Limited, FA 169085 (Forum Jun. 21, 2003).” As some of the content of Respondent’s website is claimed to be false and misleading, the Panel will consider the disruption of Complainant’s business to support a finding of bad faith taking into consideration all of the circumstances of this case.
Using a disputed domain name to divert Internet users searching for a complainant’s website for commercial gain can also demonstrate bad faith registration and use. Policy ¶ 4(b)(iv). See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). Complainant argues that Respondent registered the disputed domain names during the pendency of a lawsuit that Complainant had filed against Respondent as attorneys for one of Complainant’s clients. It asserts that Respondent registered the disputed domain names for the purpose of attacking and falsely disparaging Complainant. The content of Respondent’s website is discussed above and it is clear that Respondent registered and used the disputed domain names to disparage Complainant’s business, perhaps with the aim of obtaining some advantage in the pending lawsuit. While mere critical comment alone may not indicate bad faith, it is asserted that Respondent’s website contains false and misleading content and the Respondent has not appeared in this case to claim otherwise. Thus, the Panel is left with the evidence and arguments before it and finds, on a preponderance of such evidence, that Respondent registered and uses the disputed domain names in bad faith.
Having established all three elements required under the ICANN Policy for some of the disputed domain names, the Panel concludes that relief shall be GRANTED in part and DENIED in part.
Accordingly, it is Ordered that the <sheppardmullinjillmpietrini.com>, <sheppardmullinjillpietrini.com>, <sheppardmullinlaw.com>, <sheppardmullinlawfirm.com>, <sheppardmullinpaulabost.com>, and <sheppardmullinpaulbost.com> domain names be TRANSFERRED from Respondent to Complainant and that the, <jillpietrini.com>, <jillmpietrini.com>, <paulabost.com>, and <paulbost.com> domain names REMAIN WITH Respondent.
Steven M. Levy, Esq., Panelist
Dated: September 17, 2019
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