Lewis Roca Rothgerber Christie LLP v. Ryan Barbie
Claim Number: FA2208002008839
Complainant is Lewis Roca Rothgerber Christie LLP (“Complainant”), represented by Jennifer A. Van Kirk of Lewis Roca Rothgerber Christie LLP, Arizona, USA. Respondent is Ryan Barbie (“Respondent”), South Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <levvisroca.com>, registered with 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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 17, 2022; the Forum received payment on August 17, 2022.
On August 17, 2022, NameCheap, Inc. confirmed by e-mail to the Forum that the <levvisroca.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the 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 19, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 8, 2022 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@levvisroca.com. Also on August 19, 2022, 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 14, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a law firm formed in 1950 and currently operates under the name LEWIS ROCA with offices in Arizona, California, Colorado, and Nevada.
Complainant claims long standing rights in the LEWIS ROCA service mark established by its ownership of the portfolio of trademark registrations described below and at common law by the use of styles and titles for its practice and service marks that include the name “Lewis Roca” in the provision of legal services since 1950. These names include LEWIS & ROCA, LEWIS ROCA ROTHGERBER, and LEWIS ROCA ROTHGERBER CHRISTIE, and LEWIS ROCA.
Complainant submits that it has invested significant resources advertising its legal services under the LEWIS ROCA name and mark, including on its website to which its eponymous domain name <lewisroca.com> resolves.
Complainant submits that the disputed domain name <levvisroca.com> is confusingly similar to its LEWIS ROCA mark, as it is almost identical, merely replacing the letter “w” in LEWIS, with the letters “vv” in the disputed domain name. See Pet Plan Ltd. v. Paul Nash, WIPO Case D2019-1434 (“Where a domain name incorporates the entirety of a trade mark, it will normally be considered confusingly similar to the mark.”).
Complainant adds that it is well settled that the mere addition of the generic Top Level Domain (“gTLD”) extension <.com> to a famous trademark does not avoid a finding of confusing similarity.
Complainant next contends that Respondent has no rights or legitimate interests in the disputed domain name arguing that Respondent registered the disputed domain name on August 1, 2022 over seven decades after Complainant first used the LEWIS ROCA mark and therefore Complainant has priority of rights in the mark as against Respondent. See WordPress Fdn. v. Pham Dinh Nhut, Forum 1603156 (Mar. 12, 2015) (complainant’s extensive use of its mark warranted inference that respondent had knowledge of mark prior to registering the domain name).
Complainant adds that Respondent is not a licensee of Complainant and does not have authorization to use the LEWIS ROCA mark or to register a domain name containing the mark, or confusingly similar to the mark. This alone is sufficient to support a finding that Respondent has no rights or legitimate interests in the disputed domain name. See Compagnie de Saint Gobain v. Com-Union Corp., WIPO Case D2000-0020 (finding no rights or legitimate interests where the respondent was not commonly known by the mark and had never applied for a license or sought permission from the complainant to use the mark).
Complainant further submits that Respondent has not yet added any content to the website associated with the disputed domain name and the webpage is currently not accessible. Complainant argues that such use of the disputed domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Referring to copies of a series of emails exchanged on August 1, 2022, which have been exhibited in an annex to the Complaint, Complainant additionally contends that Respondent has sent phishing emails from an account associated with the disputed domain name in an attempt to masquerade as Complainant.
Specifically the exhibit shows that impersonating emails were sent from the address <(employee name supplied in the Complaint)@levvisroca.com> to a client of Complainant, The impersonating email contained an apparently legitimate signature line for an employee of Complainant. The email sought to divert payments from Complainant to Respondent by falsely stating that Complainant’s banking information has changed:
The author stated “I would like to get an update on all the invoices due, when we should be expecting the payment. I would like to let you know there has been a change in our banking information due to our end of the month auditing process and we would like this payment to be made to our new banking information. Kindly let me know how to proceed so we don't miss any payment.”
Complainant contends that such phishing activity shows that Respondent has no legitimate interest in the disputed domain name.
Complainant adds that it must therefore be inferred that Respondent had actual knowledge of Complainant and its rights in the LEWIS ROCA mark prior to registration of the disputed domain name and so cannot have rights or legitimate interests in the disputed domain name.
Complainant further argues that Respondent is not using the disputed domain name to identify or comment upon Complainant and thus, Respondent has no free speech rights or interests in the disputed domain name.
The Complaint contends that the evidence shows that Respondent’s registration and use of the disputed domain name is not bona fide use, but use that is contrary to the fundamental premise of good faith under Policy ¶ 4(a)(ii).
Complainant next alleges that the disputed domain name was registered and is being used in bad faith arguing that it was registered on August 1, 2022, over twenty years after Complainant registered its own eponymous domain name <lewisroca.com> on June 10, 1998.
Respondent’s use of the LEWIS ROCA mark within the disputed domain name is not authorized and indicates a connection between Respondent and Complainant that does not exist. The disputed domain name is intentionally identical or confusingly similar to Complainant’s mark which is in itself sufficient to find bad faith registration.
Complainant adds that the initial interest confusion caused by the similarity between the disputed domain name and Complainant’s mark is also sufficient for a finding of bad faith use and registration.
Complainant also argues that most significantly, Respondent has used the disputed domain name to engage in attempted phishing activity as described above in an attempt to fraudulently divert funds, which constitutes bad faith use under the Policy.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a provider of legal services under the style and title LEWIS ROCA, for which it owns a portfolio of service mark registrations
· United States service mark LEWIS ROCA, registration number 2,611,953. Registered on the Principal Register on August 27, 2002 as LEWIS AND ROCA, and amended May 31, 2022, for services in international class 42;
· United States service mark LEWIS ROCA ROTHGERBER CHRISTIE, registration number 6,083,761, registered on the Principal Register on June 23, 2020 for services in international class 45.
Complainant has an established Internet presence and maintains a website to which its own eponymous domain name <lewisroca.com> resolves.
The disputed domain name was registered on August 1, 2022 and while it does not resolve to any active website it has been used to create an email account from which phishing messages have been sent to a third party purporting to come from Complainant in an attempt to fraudulently divert funds to Respondent.
There is no information available about Respondent except for that provided in the Complaint, the Registrar’s WhoIs and the information provided by the Registrar in response to the request from the Forum for verification of the registration details of the disputed domain name.
The Registrar confirmed that Respondent, who availed of a privacy service to conceal his identity on the published WhoIs, is the registrant of the disputed domain name.
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”).
Notwithstanding a number of changes of name and rebranding of its law practice, which has had the styles and titles LEWIS & ROCA, LEWIS ROCA ROTHGERBER, and LEWIS ROCA ROTHGERBER CHRISTIE, and LEWIS ROCA over the years, Complainant has provided uncontested evidence to prove that on the balance of probabilities it has rights in the LEWIS ROCA mark, established by its ownership of the United States service mark registrations described above and at common law by use of the name and mark including online on its website in branding and promoting its law practice.
Complainant’s LEWIS ROCA mark is clearly recognizable in the disputed domain name <levvisroca.com>, as it is almost identical save for the substitution of the letters “vv” in the disputed domain name for the letter “w” in Complainant’s mark. The double “v” is particularly similar to the letter “w”.
The generic Top Level Domain (“gTLD”) extension <.com> would be considered by Internet users to be a necessary technical requirement for a domain name and therefore does not prevent a finding of confusing similarity between the disputed domain name and Complainant’s almost identical mark.
This Panel finds therefore that the disputed domain name <levvisroca.com> is confusingly similar to the LEWIS ROCA mark in which Complainant has rights and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights legitimate interests in the disputed domain name arguing that
· Respondent registered the disputed domain name on August 1, 2022 over seven decades after Complainant first used the LEWIS ROCA mark and therefore Complainant has priority of rights in the mark as against Respondent;
· Respondent is not a licensee of Complainant and does not have authorization to use the LEWIS ROCA mark or to register a domain name containing the mark or confusingly similar to the mark. Respondent is not commonly known by the LEWIS ROCA mark;
· Respondent has not yet added any content to the website associated with the disputed domain name and the webpage is currently not accessible and such use of the disputed domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use;
· The copies of a series of emails exchanged on August 1, 2022, which have been exhibited in an annex to the Complaint, illustrate that Respondent has sent phishing emails from an account associated with the disputed domain name in an attempt to impersonate Complainant.
· the exhibit specifically shows that impersonating emails were sent from the address <(employee name supplied in the Complaint)@levvisroca.com> to a client of Complainant’s, showing an apparently legitimate signature line for an employee of Complainant; and the email sought to divert payments from Complainant to Respondent by falsely stating that Complainant’s banking information has changed:
· such phishing activity shows that Respondent has no legitimate interest in the disputed domain name;
· it must therefore be inferred that Respondent had actual knowledge of Complainant’s rights in the LEWIS ROCA mark prior to registration of the domain name and so cannot have rights or legitimate interests in the disputed domain name;
· Respondent is not using the disputed domain name to identify or comment upon Complainant and thus, Respondent has no free speech rights or interests in the disputed domain name.
It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests.
Respondent has failed to discharge that burden and therefore this Panel must find that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
The disputed domain name was registered on August 1, 2022, over twenty years after Complainant registered its own eponymous domain name <lewisroca.com> on June 10, 1998.
The similarity between the disputed domain name and Complainant’s own <lewisroca.com> is such that it is most improbable that the disputed domain name was chosen and registered without knowledge of Complainant and its legal services practice.
The disputed domain name <levvisroca.com> has no obvious meaning, however when the double letter “v” is mistakenly read as the letter “w”, it becomes Complainant’s name and mark.
On the balance of probabilities, the registration of the disputed domain name with such similarity to Complainant’s name, mark and website address, was intentional and done in bad faith in an act of typosquatting.
There is no plausible reason for choosing and registering the disputed domain name except to take predatory advantage of Complainant’s goodwill and reputation.
The uncontested evidence is that Respondent has used the disputed domain name to engage in phishing activity as described above in an attempt to fraudulently divert funds. Complainant’s submissions in that regard are strongly supported by the copy email correspondence exhibited in the annex to the Complaint. Such use of the disputed domain name constitutes bad faith.
These findings of typosquatting, bad faith registration and use, are further supported by the fact that the phishing email was sent on the very day that the disputed domain name was registered so in all probabilities Respondent was the registrant of the disputed domain name.
As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has therefore succeeded in the third element of the test in Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <levvisroca.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: September 15, 2022
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