Global Name Services LLP v. Ronald Tanguay
Claim Number: FA2212002023895
Complainant is Global Name Services LLP (“Complainant”), represented by Thomas E. Zutic of DLA Piper LLP, District of Columbia. Respondent is Ronald Tanguay (“Respondent”), Georgia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dlapippen.com>, registered with Google LLC.
PANEL
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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to Forum electronically on December 13, 2022. Forum received payment on December 13, 2022.
On December 14, 2022, Google LLC confirmed by e-mail to Forum that the <dlapippen.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 December 19, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 9, 2023 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@dlapippen.com. Also on December 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, Forum transmitted to the parties a Notification of Respondent Default.
On January 12, 2023, pursuant to request to have the dispute decided by a single-member Panel, Forum appointed Alan L. Limbury as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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 is the intellectual property holding company for the global law firm DLA PIPER that is located in more than forty countries throughout the Americas, Europe, the Middle East, Africa and Asia Pacific. Complainant operates its official Internet website at “www.dlapiper.com”.
Complainant has rights in the DLA PIPER mark based upon numerous registrations around the world, including with the United States Patent and Trademark Office. The <dlapippen.com> domain name is confusingly similar to Complainant’s DLA PIPER mark.
Respondent has no rights or legitimate interests in the <dlapippen.com> domain name. Respondent is not commonly known by the domain name and is not using it in connection with any bona fide offering of goods and services nor for any legitimate or fair use. The domain name does not resolve to an active website. Respondent is using the domain name to send fraudulent email communications that target Complainant’s clients and seek payment for allegedly unpaid invoices. In these email messages, Respondent impersonates a real attorney at Complainant’s law firm in an apparent attempt to collect on fraudulent invoices.
Respondent registered the <dlapippen.com> domain name in bad faith with actual knowledge of Complainant’s rights in the DLA PIPER mark and is using the domain name to disrupt Complainant’s business and engage in a phishing scheme for commercial gain. Respondent is using the domain name in fraudulent email communications with the aim of deriving illicit financial gain, obtaining personal and confidential information from unsuspecting victims, and deliberately impersonating a real DLA Piper employee and attorney with a similar name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has established all the elements entitling it to relief.
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 has shown that it has rights in the DLA PIPER mark based upon numerous registrations, including with the USPTO (e.g. Reg. No. 3,214,009, registered February 27, 2007). The Panel finds Respondent’s <dlapippen.com> domain name to be confusingly similar to Complainant’s DLA PIPER mark because it is nearly identical to the mark, simply misspelling “piper” as “pippen”, which is insufficient to distinguish the domain name from the mark. The inconsequential top-level domain (“gTLD”) “.com”. may be ignored.
Complainant has established this element.
Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by Respondent, shall demonstrate rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The <dlapippen.com> domain name was registered on November 10, 2022, many years after Complainant has shown that its DLA PIPER mark had become very well-known. It does not resolve to an active website. Complainant asserts that Respondent has used the domain name to send fraudulent emails in the name of one of Complainant’s attorneys, seeking payments and personal information from Complainant’s clients.
These circumstances, together with Complainant’s assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the <dlapippen.com> domain name. See JUUL Labs, Inc. v. Dryx Emerson / KMF Events LTD, FA1906001849706 (Forum July 17, 2019).
Respondent has made no attempt to do so.
The Panel finds that Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has established this element.
Registration and Use in Bad Faith
The four illustrative circumstances set out in paragraph 4(b) of the Policy as evidence of the registration and use of a domain name in bad faith for purposes of paragraph 4(a)(iii) are not exclusive.
The typosquatted nature of the domain name is itself evidence of bad faith registration on the part of Respondent.
The circumstances set out above in relation to the second element and Respondent’s failure to deny Complainant’s assertions satisfy the Panel that Respondent was fully aware of Complainants’ DLA PIPER mark when Respondent registered the <dlapippen.com> domain name and that Respondent has registered and is using the domain name in bad faith for financial gain by impersonating Complainants’ real attorney.
Complainant has established this element.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dlapippen.com> domain name be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: January 13, 2023.
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