Holland & Hart LLP v. Randy Wadley / Harry L. Murphy, Inc.
Claim Number: FA2001001879287
Complainant is Holland & Hart LLP (“Complainant”), represented by Lian Ernette of Holland & Hart LLP, United States. Respondent is Randy Wadley / Harry L. Murphy, Inc. (“Respondent”), United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <holandhart.com>, registered with Google LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 16, 2020; the Forum received payment on January 16, 2020.
On January 17, 2020, Google LLC confirmed by e-mail to the Forum that the <holandhart.com> domain name is registered with Google LLC and that Respondent is the current registrant of the name. Google LLC has verified that Respondent is bound by the Google 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 January 21, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 10, 2020 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@holandhart.com. Also on January 21, 2020, 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 February 14, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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, Holland & Hart LLP, is a Colorado-based law firm.
Complainant holds a registration for the HOLLAND & HART service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 3,042,272, registered January 10, 2006, and renewed as of August 22, 2015.
Respondent registered the domain name <holandhart.com> on or about December 5, 2019.
The domain name is confusingly similar to Complainant’s HOLLAND & HART service mark.
Respondent has not been commonly known by the domain name.
Respondent is not and has never been associated or affiliated with Complainant.
Respondent is not authorized to use Complainant’s HOLLAND & HART mark in any fashion.
Respondent fails to use the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Rather, Respondent uses the domain name to send emails passing itself off as an employee of Complainant as part of a fraudulent scheme to persuade Complainant’s clients to wire funds to Respondent rather than to Complainant.
Respondent does not have rights to or legitimate interests in the domain name.
Respondent’s use of the domain name disrupts Complainant’s business.
The domain name is an instance of typo-squatting.
Respondent knew of Complainant’s rights in the HOLLAND & HART mark when it registered the domain name.
Respondent registered and uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept as true all reasonable claims and inferences set out in the Complaint unless the supporting evidence is manifestly contradictory. See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). But see 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 has rights in the HOLLAND & HART service mark sufficient for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See, for example, Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum August 4, 2015) (finding that a UDRP complainant’s USPTO registration for a mark sufficiently demonstrated its rights in that mark under Policy ¶ 4(a)(i)).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <holandhart.com> domain name is confusingly similar to Complainant’s HOLLAND & HART service mark. The domain name incorporates the mark in its entirety, with only the deletion of one letter “l” and the spaces between its terms as well as the ampersand, while adding the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See, for example, Morgan Stanley v. Domain Admin, FA 1783121 (Forum June 1, 2018:
Respondent’s … domain name is confusingly similar to Complainant’s … mark as it wholly incorporates the mark, but for the omission of the letter ‘y’ and spacing within the [terms of the] mark[ ] and appends the ‘.com’ gTLD.
Specifically as to Respondent’s deletion of the spaces between the terms of Complainant’s mark in creating the domain name, this alteration of the mark is irrelevant to our analysis because domain name syntax does not permit the use of blank spaces.
See also Russell & Bromley Limited v. KIM H. SUK, FA 1729773 (Forum June 12, 2017) finding a respondent’s domain name identical to a UDRP complainant’s mark, because:
The ampersand is a prohibited character in a domain name….
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent lacks rights to and legitimate interests in the <holandhart.com> domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c)(i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <holandhart.com> domain name, and that Complainant has not authorized Respondent to use the HOLLAND & HART service mark in any fashion. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Randy Wadley,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s mark in any manner). See also Navistar International Corporation v. N Rahmany, FA 620789 (Forum June 8, 2015) (finding, under Policy ¶ 4(c)(ii), that a respondent was not commonly known by a disputed domain name where a UDRP complainant had not authorized that respondent to incorporate its mark in a domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent employs the <holandhart.com> domain name to send emails passing itself off as an employee of Complainant as part of a fraudulent scheme to persuade Complainant’s clients to wire funds to Respondent rather than to Complainant. This employment is neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. See, for example, Cubist Pharmaceuticals, Inc. v. Gregory Stea, FA1550388 (Forum May 5, 2014):
Respondent is using the domain name in emails to various IT hardware suppliers in an attempt to impersonate Complainant and defraud its customers…. The Panel found that such actions precluded a bona fide offer or fair use [under Policy ¶ 4(c)(i)-(iii)].
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶4(a)(ii).
We are persuaded by the evidence that Respondent’s use of the challenged <holandhart.com> domain name, as alleged in the Complaint, disrupts Complainant’s business. Under Policy ¶ 4(b)(iii), this stands as proof of Respondent’s bad faith in registering and using the domain name. See, for example, Microsoft Corporation v. Terrence Green, FA 1661030 (Forum April 4, 2016) (finding that a respondent’s use of disputed domain names to send fraudulent emails supported a finding of bad faith registration and use of those domain names under Policy ¶ 4(b)(iii)).
We are also convinced by the evidence that Respondent knew of Complainant and its rights in the HOLLAND & HART mark when it registered the contested <holandhart.com> domain name. This further demonstrates Respondent’s bad faith in registering the domain name. See, for example, Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum January 5, 2018):
[T]he fact [that] Respondent registered a domain name that looked identical to the … [Complainant’s]… mark and used that as an email address to pass itself off as Complainant [in furtherance of a fraudulent scheme] shows that Respondent knew of Complainant and its trademark rights at the time of registration [,and, therefore, that it registered the domain name in bad faith].
The Panel thus finds that Complainant has met is obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <holandhart.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: February 17, 2020
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page