McGuireWoods LLP v. Wayne Malcolm / evil logz / Bell Nation
Claim Number: FA1908001856098
Complainant is McGuireWoods LLP (“Complainant”), represented by Stephanie Martinez of McGuireWoods LLP, Virginia, USA. Respondent is Wayne Malcolm / evil logz / Bell Nation (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <mcguireswoods.com> and <mcguirevvoods.com>, registered with Google LLC and NameCheap, 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 7, 2019; the Forum received payment on August 7, 2019.
On August 7, 2019, Google LLC and NameCheap, Inc. confirmed by e-mail to the Forum that the <mcguireswoods.com> and <mcguirevvoods.com> domain names are registered with Google LLC and NameCheap, Inc. and that Respondent is the current registrant of the names. Google LLC and NameCheap, Inc. has verified that Respondent is bound by the Google LLC and NameCheap, 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 August 14, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 3, 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@mcguireswoods.com, postmaster@mcguirevvoods.com. Also, on August 14, 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 4, 2019 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson 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.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant contends that while the disputed domain names were registered to different registrants, both domain names were used in the same fraudulent phishing scheme, were registered on the same day, are typosquatted versions of Complainant’s mark, and were registered with false contact information.
The Panel finds that Complainant has sufficiently presented evidence demonstrating that the listed entities are jointly controlled and hereafter refers to all listed entities as “Respondent” in this decision.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant is a well-respected international law firm. Complainant has rights in the MCGUIREWOODS mark through registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,483,615, registered Aug. 28, 2001). Respondent’s <mcguireswoods.com> and <mcguirevvoods.com> domain names are identical or confusingly similar to Complainant’s mark. The <mcguireswoods.com> domain name adds an additional “s” between the “e” and “w” of Complainant’s mark. The <mcguirevvoods.com> domain name replaces the “w” with “vv” in Complainant’s mark. Both disputed domain names add the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <mcguireswoods.com> and <mcguirevvoods.com> domain names. There is no evidence that Respondent is commonly known by the disputed domain names and Complainant has never granted Respondent license or other rights to use the mark. Respondent also does not use the domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. The <mcguireswoods.com> and <mcguirevvoods.com> domain names fail to resolve to active websites. Respondent uses the <mcguireswoods.com> and <mcguirevvoods.com> domain names to send emails mimicking Complainant’s employees in furtherance of a financial scam.
Respondent registered and uses the <mcguireswoods.com> and <mcguirevvoods.com> domain names in bad faith. Respondent uses the disputed domain names to conduct a financial scam targeting Complainant via email. Respondent registered the <mcguireswoods.com> and <mcguirevvoods.com> domain names with Complainant squarely in mind.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is McGuireWoods LLP (“Complainant”), of Richmond, VA, USA. Complainant is the owner of domestic and international registrations for the mark MCGUIREWOODS, which Complainant has continuously used since at least as early as 2000, in connection with its provision of legal and consulting services.
Respondent is Wayne Malcolm / Evil Logz / Bell Nation (“Respondent”), of New York, NY, USA and Alexandria, VA, USA. Respondent’s registrar’s address is listed as Mountain View, CA, USA and Los Angeles, CA, USA. The Panel notes that Respondent registered both the <mcguireswoods.com> and <mcguirevvoods.com> domain names on or about June 25, 2019.
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 MCGUIREWOODS mark 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 registrations with the USPTO (e.g. Reg. No. 2,483,615, registered Aug. 28, 2001). The Panel here finds that Complainant has established rights in the MCGUIREWOODS mark for the purposes of Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <mcguireswoods.com> and <mcguirevvoods.com> domain names are identical or confusingly similar to Complainant’s mark as the <mcguireswoods.com> domain name adds an additional “s” between the “e” and “w” of Complainant’s mark, the <mcguirevvoods.com> domain name replaces the “w” with “vv” in Complainant’s mark, and both disputed domain names add the “.com” gTLD. Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See Coachella Music Festival, LLC v. Domain Administrator / China Capital Investment Limited, FA 1734230 (Forum July 17, 2017) (“The addition of letters—particularly of those that create a common misspelling—fails to sufficiently distinguish a domain name from a registered mark.”); 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 Panel here finds that the disputed domain names are confusingly similar to the MCGUIREWOODS mark under Policy ¶ 4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel notes 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 here finds that Complainant has set forth the requisite prima facie case.
Complainant contends Respondent has no rights or legitimate interests in the <mcguireswoods.com> and <mcguirevvoods.com> domain names as there is no evidence that Respondent is commonly known by the disputed domain names and Complainant has never granted Respondent license or other rights to use the mark. 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). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. 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)”). The WHOIS information for the <mcguireswoods.com> domain name lists the registrant as “evil logz/Bell Nation,” and The WHOIS information for the <mcguirevvoods.com> domain name lists the registrant as “Wayne Malcolm.” Furthermore, there is no other evidence to suggest that Respondent was authorized to use the MCGUIREWOODS mark. The Panel here finds that Respondent is not commonly known by the disputed domain names per Policy ¶ 4(c)(ii).
Complainant argues Respondent does not use the <mcguireswoods.com> and <mcguirevvoods.com> domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as the disputed domain names fail to resolve to active websites. The failure to actively use a disputed domain name may indicate lack of a bona fide offering of goods or services under Policy ¶ 4(c)(i) or legitimate noncommercial or fair user per Policy ¶ 4(c)(iii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name). Complainant contends that the <mcguireswoods.com> domain name does not resolve to an active webpage and the <mcguirevvoods.com> domain name resolves to a parked webpage. The Panel here finds that Respondent fails to use the disputed domain names in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or legitimate noncommercial or fair user per Policy ¶ 4(c)(iii).
Complainant further argues that Respondent uses the <mcguireswoods.com> and <mcguirevvoods.com> domain names to send emails mimicking Complainant’s employees in furtherance of a financial scam. Passing off as an employee of a complainant in furtherance of an email phishing scheme does not reflect a bona fide offering of goods or services under Policy ¶ 4(c)(i) or legitimate noncommercial or fair user per Policy ¶ 4(c)(iii). See Emerson Electric Co. v. Adilcon Rocha, FA 1735949 (Forum July 11, 2017) (finding that respondent’s attempt to pass off as complainant through emails does not constitute a bona fide offering of goods or services and, as such, respondent lacked rights or legitimate interests in the disputed domain name); see also DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (”Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”). Complainant provides copies of emails in which Respondent purportedly uses email addresses associated with both disputed domain names in furtherance of a phishing scheme. The Panel here finds that Respondent does not make a bona fide offering of goods or services under Policy ¶ 4(c)(i) or legitimate noncommercial or fair user per Policy ¶ 4(c)(iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
The Complainant has proven this element.
Complainant asserts that Respondent registered and uses the <mcguireswoods.com> and <mcguirevvoods.com> domain names in bad faith as Respondent uses the disputed domain names to conduct a financial scam targeting Complainant via email. Passing off as a complainant via email in furtherance of fraud can evince bad faith registration and use per Policy ¶¶ 4(b)(iii) and (iv). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the <abbuie.com> domain name to impersonate Complainant’s CEO. Such use is undeniably disruptive to Complainant’s business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii), and/or Policy ¶ 4(b)(iv)”); see also 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 per Policy ¶ 4(b)(iv)). The Panel again notes that Complainant provides copies of emails in which Respondent purportedly uses email addresses associated with both disputed domain names in furtherance of a phishing scheme. The Panel here finds that Respondent registered and uses the disputed domain names in bad faith per Policy ¶¶ 4(b)(iii) and (iv).
Finally, Complainant argues Respondent registered the <mcguireswoods.com> and <mcguirevvoods.com> domain names with Complainant squarely in mind. Although panels have generally not regarded constructive notice as sufficient for a finding of bad faith, actual knowledge of Complainant’s mark prior to registering is adequate to find bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Passing off as a complainant via email can demonstrate actual knowledge of the trademark rights of a complainant prior to registration, thus constituting bad faith registration per Policy ¶ 4(a)(iii). See Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum Jan. 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”). Complainant argues that based on Respondent’s targeting of Complainant, Respondent had knowledge of Complainant’s rights in the mark. The Panel here finds that Respondent had actual knowledge of Complainant’s rights in the MCGUIREWOODS mark prior to registration and registered the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <mcguireswoods.com> and <mcguirevvoods.com> domain names be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: September 18, 2019
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