DECISION

 

Holland & Hart LLP v. Daniel Diadul

Claim Number: FA2308002059134

 

PARTIES

Complainant is Holland & Hart LLP ("Complainant"), represented by Tara K. Hawkes of Holland & Hart LLP, Colorado, USA. Respondent is Daniel Diadul ("Respondent"), New Jersey, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <hollandlhart.com>, registered with Wild West Domains, 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.

 

James Bridgeman SC as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on August 25, 2023; Forum received payment on August 25, 2023.

 

On August 28, 2023, Wild West Domains, LLC confirmed by e-mail to Forum that the <hollandlhart.com> domain name is registered with Wild West Domains, LLC and that Respondent is the current registrant of the name. Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, 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 August 30, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 19, 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@hollandlhart.com. Also on August 30, 2023, 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 September 20, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed James Bridgeman SC 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.       Complainant

Complainant claims rights in the HOLLAND & HART LLP service mark established by its ownership of the portfolio of registrations described below and the goodwill established by its extensive use of the mark in its practice as a law firm.

 

Complainant has offices at 13 locations in the United States, including Las Vegas, Nevada.

 

Additionally, Complainant has received numerous awards and recognition for its excellent legal services, including being ranked in the 2023 U.S. News – Best Lawyers® "Best Law Firms" in 28 practice areas nationally and in 142 practice areas regionally. In addition, Complainant received 100 metropolitan Tier 1 rankings in ten locations.

 

Furthermore, 182 lawyers were recognized in the 2024 Edition of The Best Lawyers in America®, 73 lawyers were included in the 2024 edition of Best Lawyers: Ones to Watch in America™, and 18 were named Best Lawyers "Lawyer of the Year." 

 

Complainant has also been recognized as National Tier 1 in the practice areas of Environmental Law, Litigation – Environmental, and Technology Law for ten consecutive years and in Natural Resources Law since 2021.

 

Complainant alleges that the disputed domain name is confusingly similar to the HOLLAND & HART LLP mark in which Complainant has rights, arguing that the disputed domain name merely adds the letter "L" after "HOLLAND," deletes the ampersand and the letters "LLP" in the mark, adding the generic Top-Level Domain ("gTLD") extension <.com>.

 

Complainant submits that the minute modifications to Complainant's mark within the disputed domain name do not obviate the confusing similarity between the disputed domain name and the mark.

 

Complainant submits that the addition of the letter "l" fails to distinguish the domain name from Complainant's marks because the look, sound, and meaning of the mark remain the same. SPTC, Inc. and Sotheby's v. isaac Daniel, FA 1998223 (Forum June 29, 2022) (finding that "merely adding the letter 'r' between the letters 'b' and 'y', omitting the final letter 's' and/or the apostrophe, and adding the generic top-level domain ("gTLD") '.com'" insufficient to distinguish <sothebry.com> from the complainant's SOTHEBY'S and SOTHEBYS marks).

 

Similarly, it is contended that deleting the ampersand from Complainant's mark is insufficient to create a distinction between Complainant's marks and the disputed domain name. See Holland & Hart LLP v. Rob Keating, FA 2042077 (Forum May 25, 2023) ("The disputed domain name consists of a misspelling of Complainant's HOLLAND & HART mark … with the omission of the ampersand ('&') and the addition of the '.com' generic top-level domain ('gTLD')),

 

Likewise, removing generic wording, such as the "LLP" designation, is insufficient to distinguish the disputed domain name from Complainant's registered HOLLAND & HART LLP marks. Many panels have found confusing similarity where a respondent merely adds or deletes generic terms from a complainant's marks. See, e.g., Alston & Bird LLP v. Andrew Brooks, FA 1835337 (Forum Apr. 20, 2019) ("The Panel agrees that the addition of the generic indication 'LLP' does not distinguish the Domain Name from the Complainant's trademark pursuant to the Policy.").

 

Complainant next alleges that Respondent has no rights or legitimate interests in the disputed domain name arguing that Respondent is not affiliated with Complainant in any way, nor is Respondent authorized to use the HOLLAND & HART Marks or any formatives thereof.

 

Additionally, Respondent is not an authorized attorney or billing agent for Complainant's services. See DaimlerChrysler AG v. SAS P Parly, FA 280477 (Forum July 14, 2004) ("Complainant never gave Respondent permission to use Complainant's MERCEDES-BENZ mark. Thus, Respondent has not established rights or legitimate interests in the disputed domain name . . . .").

 

Furthermore, there is no evidence that Respondent is commonly known by the disputed domain name. As the WHOIS record for the disputed domain name shows, Respondent chose to remain hidden by keeping his identity private. 

 

Referring to a redacted copy of an email which has been exhibited in an annex to the Complaint, Complainant submits that the document shows that Respondent is clearly attempting to impersonate Complainant to fraudulently obtain payments from Complainant's clients.

 

The exhibited document shows that Respondent sent an email with bank account information for a money wire transfer that correctly spells "Holland & Hart LLP" in the signature block, lists Complainant's Billing Specialist, Ryan Heavener, and correctly lists the address for Complainant's Las Vegas, Nevada office.

 

Complainant argues that Respondent's use of the disputed domain name to fraudulently impersonate Complainant and gain commercially through a phishing scheme is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. See Holland & Hart LLP v. Rob Keating, FA 2042077 (Forum May 25, 2023) ("The use of emails to pass off as a complainant in furtherance of phishing is neither a bona fide offering of goods or services per Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).").

 

Complainant also refers to a screen capture of the message which is generated when searching for the disputed domain name, which is also exhibited in an annex to the Complaint. The screen capture shows that Respondent is passively holding the disputed domain name. Previous panels have found that inactive use of a domain is not a bona fide offering of goods or services under the Policy. See Trimble Inc. and Trimble Navigation Limited v. Arslan Bayazitov, FA 2052298 (Forum Aug. 11, 2023) (finding no rights or legitimate interest where the disputed domain name resolved to an inactive webpage).

 

Lastly Complainant contends that by registering the disputed domain name with a subtle misspelling of Complainant's marks and <hollandhart.com> domain name, Respondent is guilty of typosquatting.

 

Complainant argues that engaging in typosquatting is inconsistent with rights or legitimate interests in a domain name. See Trimble Inc. and Trimble Navigation Limited v. Arslan Bayazitov, FA 2052298 (Forum Aug. 11, 2023) (finding no rights or legitimate interest where the disputed domain name was used to typosquat on the complainant's trademark and official domain name).

 

Complainant next alleges that the disputed domain name was registered and is being used in bad faith because Respondent registered a confusingly similar domain name despite having actual knowledge of Complainant's HOLLAND & HART mark.

 

Here, Respondent's knowledge is evidenced by Respondent's choice to register a domain with a subtle misspelling of Complainant's marks and using the name of Complainant's Billing Specialist and, thereafter, send a phishing email that purports to be from Complainant.

 

As the exhibited copy redacted email message demonstrates, Respondent sent an email to Complainant's client with bank account information and that requested payment be transferred to the bank account.

 

The email from Respondent included a signature block containing the name of Complainant's Billing Specialist, the correct spelling of "Holland & Hart LLP," and the actual address for Complainant's Las Vegas, Nevada office. See Holland & Hart LLP v. Rob Keating, FA 2042077 (Forum May 25, 2023) ("Respondent registered the disputed domain name with actual knowledge of Complainant's mark: the signature block of the fraudulent emails displays the name of one of Complainant's Of Counsel, Complainant's mark, and the physical address of one of Complainant's offices."). 

 

Complainant submits that not only was Respondent fully aware of Complainant prior to registering the disputed domain name, but Respondent's mimicry of Complainant via a phishing email indicates that Respondent registered the disputed domain name with the intent to impersonate Complainant and capitalize on the goodwill associated with Complainant's HOLLAND & HART mark.

 

By sending emails from a domain name that is confusingly similar to Complainant's marks and that contain the name of Complainant's Billing Specialist and Complainant's legitimate Las Vegas address, Respondent's emails are likely to give recipients of the emails the impression that they have received Complainant's legitimate bank account information to wire money to.

 

Complainant submits that it is well-established that use of a disputed domain name to pass oneself off as a complainant constitutes bad faith use and registration of a domain name. Funding Circle Limited v. james dunlap / oakwood, FA 2038824 (Forum Apr. 28, 2023) ("Respondent used the disputed domain name to pass off as Complainant and send fraudulent phishing emails. This can evince bad faith registration and use under the Policy.").

 

Moreover it is argued that Respondent's use of the disputed domain name to send phishing emails for Respondent's own commercial gain and to defraud Complainant's clients is clear evidence of Respondent's bad faith. See Holland & Hart LLP v. Mike Brad, FA 2033304 (Forum Mar. 24, 2023) ("Respondent uses email from <holandhart.org> to impersonate Complainant so that Respondent may pass itself off as Complainant and thereby fraudulently invoice parties that believe they are dealing with Complainant. Such activity indicates Respondent's bad faith under the Policy ¶ 4(b)(iv) and otherwise.").

 

Finally, it is contended that Respondent's registration of a domain that typosquats on Complainant's marks and legitimate domain name is further evidence of bad faith. See, Trimble Inc. and Trimble Navigation Limited v. Arslan Bayazitov, FA 2052298 (Forum Aug. 11, 2023) ("Respondent's decision to typosquat on Complainant's mark and official domain name is also evidence of Respondent's registration and use of the domain name in bad faith.").

 

In sum, Complainant submits that Respondent's actions serve to significantly damage the goodwill and reputation Complainant has built in its HOLLAND & HART mark and are likely to cause immeasurable harm if allowed to continue. Respondent's use and registration of the disputed domain name are clearly intended to fraudulently obtain payment from Complainant's clients, which constitutes bad faith under the Policy.

 

Complainant therefore requests the Panel to find in favor of Complainant and transfer the disputed domain name to Complainant to protect the interests of both Complainant and the general public.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant is a law firm using the style and title HOLLAND & HART LLP and is the owner of the eponymous service mark HOLLAND & HART LLP or which it holds a portfolio of United States service mark registrations being:

·       United States registered service mark HOLLAND & HART registration number 3,042,272, registered on the Principal Register on January 10, 2006 for services in international class 42;

·       United States registered service mark HOLLAND & HART LLP and Design, registration number 3,042,272 registered on the Principal Register on January 10, 2006 for services in international class 42;

·       United States registered service mark HOLLAND & HART LLP THE LAW OUT WEST and Design, registration number 2,942,669 registered on the Principal Register on April 19, 2005 for services in international class 42;

·       United States registered service mark HOLLAND & HART LLP THE LAW OUT WEST and Design, registration number, 2,942,669, registered on the Principal Register on April 19, 2005 for services in international class 42.

 

Complainant has an established Internet presence and maintains a website at <www.hollandhart.com>, and has owned the domain name <www.hollandhart.com> domain name registration since 1995.

 

The disputed domain name <hollandlhart.com> was registered on August 8, 2023 and while it resolves to an inactive webpage, it has been used to establish an email account from which emails messages are being sent to fraudulently impersonate Complainant and obtain payment from clients.

 

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 by Forum for details of the registration of the disputed domain name for the purposes of this proceeding. The Registrar has confirmed that Respondent, who has chosen to keep his name private on the published WhoIs, is the registrant of the disputed domain name.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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").

 

Identical and/or Confusingly Similar

A.       Complainant's Rights

Complainant has provided convincing, uncontested evidence that it has rights in the HOLLAND & HART LLP mark, established by the ownership of the portfolio of service mark registrations described above and the reputation and goodwill that it has established in the mark by extensive use in its law practice.

 

B.       Confusing Similarity

The disputed domain name <hollandlhart.com> consists of the principal elements of Complainant's HOLLAND & HART LLP mark albeit with the inclusion of a letter "L", and the omission of the ampersand and the generic designation "LLP", together with the generic Top Level Domain ("gTLD") extension <.com>.

 

The dominant words "HOLLAND" and "HART" of Complainant's mark are also the dominant elements of the disputed domain name.

 

The addition of the letter "L" after the word "HOLLAND" and the deletion of the ampersand and the letters "LLP" do not prevent a finding of confusing similarity between the disputed domain name and Complainant's mark.

 

Similarly, the gTLD extension <.com> does not prevent a finding of confusing similarity as the circumstances of this proceeding, it would be considered a necessary technical requirement for a domain name registration.

 

This Panel finds therefore that the disputed domain name is confusingly similar to the HOLLAND & HART LLP mark, and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant has made out a prima facie case that Respondent has no rights legitimate interests in the disputed domain name arguing that

·       Respondent is not affiliated with Complainant in any way, nor is Respondent authorized to use the HOLLAND & HART LLP mark or any formatives thereof;

·       Respondent is not an authorized attorney or billing agent for Complainant's services;

·       Respondent cannot have acquired any rights or legitimate interests in the disputed domain name because there is no evidence that Respondent is commonly known by the disputed domain name;

·       the WHOIS record for the disputed domain name shows, Respondent chose to remain hidden;

·       Respondent is clearly attempting to impersonate Complainant to fraudulently obtain payments from Complainant's clients. As shown in the copy redacted email message which has been exhibited in an annex to the Complaint, Respondent sent an email with bank account information for a money wire transfer that correctly spells "Holland & Hart LLP" in the signature block, lists Complainant's named Billing Specialist as the purported sender, and correctly lists the address for Complainant's Las Vegas, Nevada office;

·       Respondent's use of the disputed domain name to fraudulently impersonate Complainant and gain commercially through a phishing scheme is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use;

·       additionally, as shown in the screen capture of the message which is generated by the disputed domain name which has been exhibited in an annex to the Complaint, Respondent is passively holding the disputed domain name, and previous panels have found that inactive use of a domain name is not a bona fide offering of goods or services under the Policy; and

·       lastly, by registering the disputed domain name with a subtle misspelling of Complainant's marks and Complainant's own <hollandhart.com> domain name, Respondent is guilty of typosquatting which is inconsistent with rights or legitimate interests in a 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).

 

Registration and Use in Bad Faith

Complainant has adduced clear and convincing, uncontested evidence that it has trademark and service mark rights in the HOLLAND & HART LLP mark which predate the registration and first use of the disputed domain name on April 29, 2023

 

The HOLLAND & HART LLP mark is distinctive, and it is most improbable that the disputed domain name which is composed of the principal and distinctive elements of Complainant's mark was chosen and registered without knowledge of Complainant.

 

Furthermore the registrant of the disputed domain name clearly chose and omitted selected elements of Complainant's mark to create the disputed domain name, to increase the possibility that Internet users would accept the disputed domain name as being associated with Complainant. These changes to Complainant's mark within the disputed domain name constitute typosquatting by the registrant.

 

This Panel finds therefore that on the balance of probabilities the disputed domain name was registered in bad faith with Complainant in mind to target and take predatory advantage of Complainant's goodwill and reputation in the mark.

 

The screen capture which has been exhibited in evidence in an annex to the Complaint, shows that the disputed domain name does not resolve to an active web page, merely generating a message: "This site can't be reached hollandlhart.com's server IP address could not be found."

 

However the evidence shows that the disputed domain name has been used to establish an email account which Respondent has used to impersonate Complainant to send a phishing email to a customer.

 

Complainant has exhibited in an annex to the Complaint a copy of a redacted email message which shows that an email purporting to have been authored by Complainant's named Billing Specialist, was sent to one of Complainant's clients using the disputed domain name as an address: <name redacted@hollandlhart.com>.

 

The sender purports to be the named employee of Complainant's firm and the phishing message states:"[w]e are currently experiencing problems with our current account, which is preventing us from receiving any incoming payments or checks. As a result, we kindly request that the payment be made through either Wire Transfer or ACH Payment, as our old company account is currently experiencing difficulties." The message includes details of a bank account which purports have been established by Complainant to receive payments.

 

The uncontested, convincing evidence adduced by Complainant proves that Respondent is using the disputed domain name with an email address to impersonate Complainant while intending to confuse and defraud Complainant's client by diverting payments to Respondent in a phishing scheme.

 

Such use of the disputed domain name constitutes bad faith for the purposes of the Policy.

 

As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has succeeded in the third element of the test in Policy paragraph 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED

 

Accordingly, it is Ordered that the <hollandlhart.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

_______________________________________

James Bridgeman SC, Panelist

Dated: September 20, 2023