DECISION

 

Wilson Sonsini Goodrich & Rosati Professional Corporation v. peter jonans

Claim Number: FA2309002062865

 

PARTIES

Complainant is Wilson Sonsini Goodrich & Rosati Professional Corporation ("Complainant"), represented by John L. Slafsky of Wilson Sonsini Goodrich & Rosati, California, USA. Respondent is peter jonans ("Respondent"), New York, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <us-wsgrllp.com> ("Domain Name"), registered with Hosting Concepts B.V. d/b/a Registrar.eu.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Nicholas J.T. Smith as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on September 21, 2023; Forum received payment on September 21, 2023.

 

On September 27, 2023, Hosting Concepts B.V. d/b/a Registrar.eu confirmed by e-mail to Forum that the <us-wsgrllp.com> domain name is registered with Hosting Concepts B.V. d/b/a Registrar.eu and that Respondent is the current registrant of the name.  Hosting Concepts B.V. d/b/a Registrar.eu has verified that Respondent is bound by the Hosting Concepts B.V. d/b/a Registrar.eu 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 September 29, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 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@us-wsgrllp.com. Also on September 29, 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 October 20, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Nicholas J.T. Smith 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, Wilson Sonsini Goodrich & Rosati Professional Corporation, is a law firm headquartered in Palo Alto, that employs over 1,000 attorneys and in 2022 was the 42nd highest grossing law firm in the world. Complainant has common law rights in the WSGR mark (the abbreviation of its name) based upon its use of the mark in connection with its business dating back to 1978, including use on its website, as its e-mail address and in marketing and advertising. Respondent's <us-wsgrllp.com> domain name is confusingly similar to Complainant's mark since it incorporates Complainant's mark in its entirety, adding only the generic abbreviations "us" and "llp" and the generic top-level domain ("gTLD") ".com."

 

Respondent lacks rights and legitimate interests in the <us-wsgrllp.com> domain name. Respondent is not commonly known by the Domain Name, nor has Complainant authorized or licensed Respondent to use the WSGR mark. Additionally, Respondent does not use the Domain Name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use because Respondent has made no demonstrable preparations to use the Domain Name for a legitimate purpose, except to a website that displays pay-per-click advertising.

 

Respondent registered and uses the <us-wsgrllp.com> domain name in bad faith because the Domain Name fully incorporates Complainant's well-known WSGR mark and is used to generate revenue using pay-per-click advertising for law firms, being competitors of Complainant. Moreover, Respondent had constructive and/or actual knowledge of Complainant's rights in the WSGR mark based on the uniqueness of the mark, the Complainant's use of the mark which long predated Respondent's registration of the Domain Name and its use to advertise competitors of Complainant.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant holds trademark rights for the WSGR mark.  The Domain Name is confusingly similar to Complainant's WSGR mark.  Complainant has established that Respondent lacks rights or legitimate interests in the use of the Domain Name and that Respondent registered and has used the Domain Name in bad faith.

 

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

Complainant does not have any registered trade mark rights in the WSGR mark. It is therefore necessary to consider whether Complainant holds common law rights in the WSGR mark as Policy ¶ 4(a)(i) does not require a complainant to hold a registered trademark if it can demonstrate established common law rights in the mark.  See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017).  To establish common law rights in a mark, a complainant generally must prove that the mark has generated a secondary meaning.  See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of "long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark's having acquired secondary meaning."). 

 

Complainant provides legal services at a significant scale. Complainant states that it has been using WSGR as an abbreviation since 1978. It has provided evidence that, while it appears to be primarily referred to by its corporate name, it also is commonly referred to by the abbreviation WSGR and promotes its services under the WSGR mark on its website at www.wsgr.com, as part of its e-mail address, in marketing and advertising such as on stationary and business cards and through its social media, including its YouTube channel, LinkedIn and Twitter.  Previous panels have acknowledged rights in an acronym after long use and wide recognition. See Soc'y of St. Vincent de Paul v. Yip, D2004-0121 (WIPO May 25, 2004) (finding that the complainant acquired distinctive common law rights in the SVDP acronym because it had been used for many years to identify the complainant and the charitable services it provided). In addition, numerous panels have found common law trademarks established by reason of use as a domain name to offer and promote a party's services; see TD Ameritrade IP Company, Inc. v. Domain Admin / Whois Privacy Corp. Claim Number: FA 1814302 (Forum Nov. 28, 2018) and Lucifer Lighting Company v. guorong / guo rong Claim Number: FA 1882510 (Forum Mar. 18, 2020).

 

The Panel is satisfied from Complainant's evidence as to length and manner of use that Complainant's use of the WSGR mark to promote its legal services on its website at www.wsgr.com and through other media is sufficient to establish secondary meaning in that mark and hence Complainant has common law rights in the WSGR mark for the purposes of Policy ¶ 4(a)(i).

 

The Panel finds that the <us-wsgrllp.com> Domain Name is confusingly similar to the WSGR mark as it fully incorporates the WSGR mark adding only the generic abbreviations "us-" (short for United States) and "llp" (short for Limited Liability Partnership) and the ".com" gTLD.  The addition of a generic term and a gTLD are not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis.  See Morgan Stanley v. Eugene Sykorsky / private person, FA 1651901 (Forum Jan. 19, 2016) (concluding that the addition of a generic term and top level domain to a trademark is inconsequential under a Policy ¶ 4(a)(i) analysis); see also Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) ("A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.").

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name.  In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) ("Complainant must first 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, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.").  The Panel holds that Complainant has made out a prima facie case.

 

Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the WSGR mark.  Respondent has no relationship, affiliation, connection, endorsement or association with Complainant.  WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged.  See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA 1613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists "Dale Anderson" as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA 1621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where "Privacy Service" was listed as the registrant of the disputed domain name).  The WHOIS lists "peter jonans" as registrant of record.  Coupled with Complainant's unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).

 

The Domain Name presently resolves to a website featuring pay-per-click advertisements, including advertisements that refer to services offered by Complainant (legal services), unrelated to any descriptive meaning of the Domain Name, for which the Respondent is likely to receive revenue. This is not a bona fide offering or a legitimate noncommercial or fair use.  See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA 1613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant's business); see also Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) ("Respondent's use of <edcorlando.xyz> also does not qualify as a bona fide offering… the <edcorlando.xyz> domain name resolves to a site containing pay-per-click hyperlinks and advertisements… Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering.").  

 

Registration and Use in Bad Faith

The Panel finds on the balance of probabilities that, at the time of registration of the Domain Name, March 23, 2023, Respondent had actual knowledge of Complainant's WSGR mark.  Complainant has used this mark since 1978 and has put on evidence of its global reputation; moreover it would be unlikely for a party to register a domain name that wholly incorporates the WSGR mark and redirect it to a pay-per-click website with links directly describing Complainant's services absent any awareness of Complainant and its WSGR mark (and intention to capitalize on Complainant's reputation in its WSGR mark).  In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).

 

The Panel finds that Respondent registered and uses the Domain Name in bad faith in order to resolve to a website that provides a series of pay-per-click links for which Respondent would be expected to receive revenue.  Use of a confusingly similar domain name to redirect Internet users to a website containing advertisements and links to third party websites for commercial gain is indicative of bad faith registration and use per Policy ¶ 4(b)(iv).  See 3M Company v. Nguyen Hoang Son / Bussiness and Marketing, FA 1575815 (Forum Sept. 18, 2014) (finding that the respondent's use of the disputed domain name to host sponsored advertisements for Amazon, through which the respondent presumably profited, indicated that the respondent had used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Tumblr, Inc. v. Ailing Liu, FA 1543807 (Forum Mar. 24, 2014) ("Bad faith use and registration exists under Policy ¶ 4(b)(iv) where a respondent uses a confusingly similar domain name to resolve to a website featuring links and advertisements unrelated to complainant's business and respondent is likely collecting fees."). 

 

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 <us-wsgrllp.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Nicholas J.T. Smith, Panelist

Dated: October 20, 2023