Global Name Services LLP v. WhoisGuard, Inc. et al.
Claim Number: FA2005001896684
Complainant: Global Name Services LLP of Washington, District of Columbia, United States of America
Complainant’s Representative: DLA Piper LLP (US) of Washington, District of Columbia, United States of America
Respondent: WhoisGuard Protected / WhoisGuard, Inc. of Panama, Panama, International, PA
REGISTRIES and REGISTRARS
Registries: Binky Moon, LLC; DotSite Inc.; Uniregistry, Corp.
Registrars: 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 Examiner in this proceeding.
Mr. Peter Müller, as Examiner.
Complainant submitted: May 18, 2020
Commencement: May 19, 2020
Default Date: June 3, 2020
Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules").
Complainant requests that the domain names be suspended for the life of the registration.
Clear and convincing evidence.
No multiple Complainants or Respondents and no multiple disputed domain names require dismissal.
Findings of Fact:
Even though the Respondent has defaulted, URS Procedure 1.2.6. requires the Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended.
[URS 1.2.6.1.] The registered domain names are identical or confusingly similar to a word mark:
(i) for which the Complainant holds a valid national or regional registration and that is in current use; or
(ii) that has been validated through court proceedings; or
(iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.
The Complainant provided documentary evidence that it is inter alia registered owner of the United States trademark registration no. 3214009 “DLA PIPER”, which was registered on February 27, 2007 for services in class 42 (hereinafter referred to as the “DLA PIPER Mark”), as well as documents to show that the trademark is in current use.
The disputed domain names fully incorporate the Complainant’s DLA PIPER Mark and are identical to such mark. It is well established that the specific top level domain name is generally not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between the complainant’s trademark and the disputed domain name.
The Examiner finds that the disputed domain names are identical to the DLA PIPER Mark and that the Complainant satisfied the elements of URS Procedure 1.2.6.1.
[1.2.6.2.] The Registrant has no legitimate right or interest to the disputed domain names.
The Complainant contends that the Respondent has no legitimate right or interest to the disputed domain names as the Complainant has no business relationship whatsoever with the Respondent and as the Complainant has not licensed or otherwise permitted the Respondent to use the DLA PIPER Mark or to apply for any domain names incorporating the DLA PIPER Mark.
The Respondent did not deny these assertions in any way and therefore failed to prove any rights or legitimate interests in the disputed domain names.
Based on the evidence before the Examiner, the Examiner cannot find any rights or legitimate interests of the Respondent either. In fact, the disputed domain names are not used in connection with active websites.
The Examiner finds that the Respondent has no rights to or legitimate interests in the disputed domain names and that the Complainant satisfied the elements of URS Procedure 1.2.6.2.
[1.2.6.3.] The disputed domain names were registered and are being used in bad faith.
The Complainant asserts that the DLA PIPER Mark is well-known and that the Respondent was aware of such mark when it chose and registered the disputed domain names. With regard to bad faith use, the Complainant argues that the Respondent is attempting to disrupt the business of a competitor and that Respondent “likely registered the Domain Names to impersonate DLA Piper and as a vehicle to potentially commit fraud against unsuspecting customers, DLA Piper employees, and others through a variety of vehicles facilitated by the Domain Names, including email addresses at the Domain Names and future web sites at the Domain Name. Were this illegal scheme and bad faith use of the Domain Names be allowed to materialize, unsuspecting victims will be defrauded by Respondent and DLA Piper’s reputation will suffer irreparable harm.”
Given that the DLA PIPER Mark is highly distinctive the Examiner accepts that the Respondent was most likely aware of the DLA PIPER Mark at the time of the registration of the disputed domain names and therefore registered the disputed domain names in bad faith.
However, the Complainant has not provided sufficient evidence that the disputed domain names are being used in bad faith as well. At present, the disputed domain names are inactive. The Complainant stated that the disputed domain names were registered to disrupt the business of a competitor and to commit fraud. The Complainant failed to provide any evidence in support to its allegations. Previous URS decisions have held that the passive holding of a domain name could support, by clear and convincing evidence, that a domain name is being used in bad faith. However, passive holding does not per se lead in a finding of bad faith use. See Central Florida Educational Foundation, Inc. v. Domain Administrator / NameFind LLC et al., FA 1887839 (Forum, March 25, 2020); Netflix, Inc. v. Masterclass Media et al., FA 1639527 (Forum Oct. 2, 2015); Allianz SE v. Registrant of xn--49s296f.xn--3ds443g / Rich Premium Limited / Domain Administrator, FA 1579170 (Forum Oct. 1, 2014). On the contrary, passive holding is equal to active use in bad faith only under specific circumstances. See Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000).
The Complainant has not established that the Respondent is a competitor. Furthermore, the Complainant has not provided evidence that the Respondent used the disputed domain names in bad faith and that the conditions expressly set out in Telstra Corporation Limited v. Nuclear Marshmallows are met. Rather, the Complainant merely expressed the fear that the disputed domain names could be used in connection with fraudulent acts. This possibility always exists and is as such not sufficient to prove bad faith use. In sum, after carefully considering the evidence, the Examiner finds that the evidence is not clear and convincing that the domain names are being used in bad faith. Given that the URS is not intended for use in any proceedings with open questions of fact, but only clear cases of trademark abuse, the Examiner finds that the Complainant has not satisfied the elements of URS Procedure 1.2.6.3.
No abuse or material falsehood.
After reviewing the Complainant’s submissions, the Examiner determines that the Complainant has NOT demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain names be RETURNED to the control of Respondent.
<dlapiper.link>
<dlapiper.site>
<dlapiper.support>
Mr. Peter Müller, Examiner
Dated: June 6, 2020
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