NATIONAL ARBITRATION FORUM

DECISION

Razavi Law Group, APC v. Gabriella V

Claim Number: FA2404002092623

PARTIES

Complainant is Razavi Law Group, APC ("Complainant"), represented by Meredith Williams of Rutan & Tucker LLP, California, USA. Respondent is Gabriella V ("Respondent"), California, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <whohurtyou.co>, registered with GoDaddy.com, 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.

The Honorable Neil Anthony Brown KC as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on April 10, 2024; Forum received payment on April 10, 2024.

On April 10, 2024, GoDaddy.com, LLC confirmed by e-mail to Forum that the <whohurtyou.co> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 April 11, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 1, 2024 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@whohurtyou.co. Also on April 11, 2024, 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 May 2, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC 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 made the following contentions.

1. Complainant is a premier United States law firm in practice in Santa Ana, California in the field of personal and accident injury.

2. Complainant provides those services under the trademark for WHO HURT YOU? for legal services and has done so since at least March 2022. In particular, the evidence will establish that Complainant has acquired registered trademark rights in the WHO HURT YOU? trademark by virtue of its registration of that trademark with the United States Patent and Trademark Office, registration Number 6,991,715, registered on February 28, 2023 and which it has used since March 2022 to provide its services ("the WHO HURT YOU?" trademark).

3. The WHO HURT YOU? trademark is famous, has attracted substantial goodwill and is uniquely associated with the Complainant's goods and services.

4. Complainant has also applied to register the trademark WHO HURT YOU, but it has not yet been registered.

5. As well as its trademark, Complainant has registered the domain name <whohurtyou.com> that it uses in its practice and in particular to resolve to its website at "www.razavilawgroup.com".

6. Respondent registered the <whohurtyou.co> disputed domain name on March 14, 2024 ("the disputed domain name").

7. The disputed domain name embodies the WHO HURT YOU? trademark, deleting the question mark of the trademark and with the ".co" Top Level Domain instead of the ".com" Top Level Domain of the Complainant's domain name and without the consent of the Complainant.

8. The disputed domain name is confusingly similar to the WHO HURT YOU? trademark as the deletion of the question mark and the ".com" Top Level Domain and the substitution of the ".co" Top Level Domain do not negate the confusing similarity between the disputed domain name and the trademark.

9. The Respondent has no rights or legitimate interests in the disputed domain name. That is so because:

(a) the Respondent has caused the confusingly similar domain name to resolve to the website at "www.whohurtyou.co" which contains salacious, derogatory and false statements about the Complainant and its founding partner and tarnishes the WHO HURT YOU? trademark;

(b) the Respondent is not commonly known by the disputed domain name;

(c) the Respondent is not affiliated with, associated with nor licensed or authorized by the Complainant to use the WHO HURT YOU? trademark;

(d) the Respondent has no trademark rights in the phrase "who hurt you" that is embodied in the disputed domain name;

(e) those statements are made under the guise of the confusingly similar domain name created by the Respondent;

(f) the Respondent has not used the dispute domain name for a bona fide offering of goods or services within the meaning of Policy ¶4(c)(i);

(g) the Respondent has not used the disputed domain name for a legitimate non-commercial or fair use within the meaning of Policy ¶4 (c)(iii);

(h) the Respondent has engaged in conduct as aforesaid that has infringed the Complainant's WHO HURT YOU? trademark.

10. The Respondent has registered and used the domain name in bad faith. That is so because:

(a) in all the circumstances, the registration and use of the domain name were made in bad faith;

(b) the Respondent had actual knowledge of the Complainant and its trademark when it registered the disputed domain name;

(c) although the Complainant's WHO HURT YOU? trademark was registered on February 28, 2023, the Respondent did not register the disputed domain name until March 14, 2024;

(d) the Respondent has used the substance of the WHO HURT YOU? trademark to formulate the disputed domain name and has caused the domain name to resolve to its website with the heading WHO HURT YOU?, including the question mark, which contains salacious, derogatory and false statements about the Complainant and its founding partner and tarnishes the WHO HURT YOU? trademark;

(e) the aforesaid conduct of the Respondent shows that it registered the domain name to disrupt the business of the Complainant within the meaning of Policy ¶ 4(b)(iii);

(f) the aforesaid conduct of the Respondent shows that it has used the domain name to cause confusion with the WHO HURT YOU? trademark within the meaning of Policy ¶ 4(b)(iv);

11. The Complainant will cite numerous prior UDRP decisions to support its contentions.

12. It is submitted by the Complainant that it will show all of the elements that it must establish under the UDRP and that the domain name should therefore be transferred from the Respondent to the Complainant.

B. Respondent

Respondent failed to submit a Response in this proceeding.

FINDINGS

1. Complainant is a premier United States law firm in practice in Santa Ana, California in the field of personal and accident injury.

2. Complainant provides those services under the trademark for WHO HURT YOU? for legal services and has done so since at least March 2022. In particular, the evidence has established that Complainant has acquired registered trademark rights in the WHO HURT YOU? trademark by virtue of its registration of that trademark with the United States Patent and Trademark Office, registration Number 6,991,715, registered on February 28, 2023 and which it has used since March 2022 to provide its services ("the WHO HURT YOU?" trademark).

3. Respondent registered the <whohurtyou.co> disputed domain name on March 14, 2024 ("the disputed domain name").

4. The disputed domain name embodies the dominant portion of the WHO HURT YOU? trademark, deleting the question mark of the trademark and with the ".co" Top Level Domain instead of the ".com" Top Level Domain of the Complainant's domain name and without the consent of the Complainant.

5. Respondent has used the WHO HURT YOU? trademark to formulate the disputed domain name and has caused the domain name to resolve to its website with the heading WHO HURT YOU? which contains salacious, derogatory and false statements about the Complainant and its founding partner and tarnishes the WHO HURT YOU? trademark;

6. By reason of the matters aforesaid and as demonstrated by the evidence, the disputed domain name is confusingly similar to the Complainant's WHO HURT YOU? trademark, the Respondent has no rights or legitimate interests in the domain name and the domain name has been registered and used by the Respondent in bad faith.

7. Accordingly, the disputed domain name should be transferred to the Complainant.

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: 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

The first question that arises is whether the Complainant has rights in a trademark or service mark on which it may rely. The evidence is that the Complainant has acquired registered trademark rights in the WHO HURT YOU? trademark by virtue of its registration of that trademark with the United States Patent and Trademark Office, registration Number 6,991,715, registered on February 28, 2023 and which it has used since March 2022 to provide its services ("the WHO HURT YOU?" trademark).

The Complainant has thus established its rights in a trademark which give it standing to bring this proceeding.

The next question that arises is whether the disputed <whohurtyou.co> domain name is identical or confusingly similar to the Complainant's trademark. Strictly speaking, the domain name is identical to the trademark, as in making this comparison, panels usually do not give any weight to top level domains, as all domain names must have such an extension, or technical features such as question marks, hyphens and asterisks, as they are usually minor and inconsequential. But even if the domain name in not identical in the present case, it is confusingly similar to the trademark. The domain name is confusingly similar to the Complainant's WHO HURT YOU? trademark for the following reasons. The disputed domain name embodies the WHO HURT YOU? trademark, deleting the question mark of the trademark and with the ".co" Top Level Domain added to take the place of the ".com" Top Level Domain of the Complainant's domain name and without the consent of the Complainant. The Panel finds on the evidence that the disputed domain name is confusingly similar to the WHO HURT YOU? trademark as the deletion of the question mark and the ".com" Top Level Domain and the addition of the ".co" Top Level Domain do not negate the confusing similarity between the disputed domain name and the trademark. The domain name remains one that contains the dominant portion of the trademark, showing that it asks the same question, albeit without a question mark, and is clearly invoking the WHO HURT YOU? trademark. The deletion of the ".com" Top Level Domain and its replacement with the ".co" are so minor and inconsequential that they cannot negate a finding of confusing similarity which the Panel now makes.

The Panel therefore finds that the disputed domain name is confusingly similar to the Complainant's WHO HURT YOU? trademark under Policy ¶ 4(a)(i).

The Complainant has thus made out the first of the three elements that it must establish.

Rights or Legitimate Interests

It is now well established that the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) and that, if the prima facie case is made out, the burden then shifts to the Respondent to show that it does have such rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)).

The Panel finds on the evidence that the Complainant has made out a strong prima facie case that arises from the following considerations, taking them in the order in which they are articulated by the Complainant:

(a) the Respondent has caused the confusingly similar domain name to resolve to a website at "www.whohurtyou.co" which contains salacious, derogatory and clearly false statements about the Complainant and its founding partner and tarnishes the WHO HURT YOU? trademark; the basic point emerging from this case is that the Respondent has obviously set about creating and using a domain name that will give the impression that it is invoking the trademark and its owner;

(b) not to make too fine a point about it, the Respondent has clearly thought that by changing the top level domain from ".com" to ".co", it could get away with pretending that it has created something new, namely a domain name completely different from the trademark, whereas in fact all that it has done is to create a domain name that is virtually the same as the trademark and which clearly invokes it and draws attention to it; indeed, when the Respondent came to use its domain name to set up its website, it returned to the use of the question mark for the heading or title to the website, namely WHO HURT YOU?, showing that it really intended to copy the trademark; moreover, it made things worse by including on the offending website an invitation to go to Telegram for more details of the same allegations;

(c) all of the foregoing shows that by using a domain name in the manner it has, for disseminating salacious, derogatory and clearly false statements about the trademark owner, cannot give a right to the domain name or a legitimate interest in it;

(d) the evidence shows that the Respondent is not commonly known by the disputed domain name;

(e) the evidence is that the Respondent is not affiliated with, associated with nor licensed or authorized by the Complainant to use the WHO HURT YOU? trademark in any way;

(f) the evidence is that the Respondent has no trademark rights in the term WHO HURT YOU that is embodied in the disputed domain name or, for that matter, the term WHO HURT YOU? which it chose as the heading or title to its website;

(g) those statements are made under the guise of the confusingly similar domain name created by the Respondent;

(h) the evidence is that the Respondent has not used the disputed domain name for a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i); there is nothing bona fide in taking a trademark and using it to denigrate the trademark owner;

(i) the evidence shows that the Respondent has not used the dispute domain name for a legitimate non-commercial or fair use of the domain name within the meaning of Policy ¶ 4(c)(iii); the use of the domain name has already been shown to be illegitimate and it cannot be fair to take a trademark and use it to denigrate the trademark owner; and

(j) the evidence shows that the Respondent has engaged in conduct as aforesaid that has infringed the Complainant's WHO HURT YOU? trademark.

The Complainant has therefore made out all of the grounds it relies on to show that the Respondent does not have a right or legitimate interest in the disputed domain name.

All of these matters make out the prima facie case against Respondent.

The Complainant has thus made out the second of the three elements that it must establish.

Registration and Use in Bad Faith

It is clear that to establish bad faith for the purposes of the Policy, the Complainant must show that the disputed domain name was registered and used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) are not exclusive but that UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.

The Complainant has submitted that the Respondent has registered and used the disputed domain name in bad faith on several grounds set out above. It is not necessary to repeat them here as they are equally applicable to bad faith as they are to rights and legitimate interests.

In view of the evidence also discussed above, it is clear that the Complainant has made out all of the grounds relied on, as the the Respondent has clearly been motivated by bad faith in both the registration and the use of the domain name. In particular, it is clear from the evidence that:

(a) in all the circumstances, there is no conceivable circumstance relating to the registration and use of the domain name that was not in bad faith;

(b) the evidence shows that the Respondent had actual knowledge of the Complainant and its trademark when it registered the disputed domain name; it did not register the domain name on a whim or by accident as it specifies the Complainant's firm and its founder, even going to the extent of including a photograph of him on the website; it knew exactly what its target was and set about aiming at it with its salacious, derogatory and clearly false statements that were designed to denigrate the Complainant;

(c) although the Complainant's WHO HURT YOU? trademark was registered on February 28, 2023, the Respondent did not register the disputed domain name until March 14, 2024;

(e) the evidence of the aforesaid conduct of the Respondent shows that it registered the domain name to disrupt the business of the Complainant within the meaning of Policy ¶ 4(b)(iii) by denigrating it ; and

(f) the evidence of the aforesaid conduct of the Respondent shows that it has used the domain name to cause confusion with the WHO HURT YOU? trademark within the meaning of Policy ¶ 4(b)(iv); the conduct shows that the Respondent has made assertions such that it clearly wanted internet users to be confused as to whether the alleged conduct could be attributed to the Complainant.

In all the circumstances, the registration and use of the domain name were in bad faith.

Finally, in addition to the specific provisions of the Policy and having regard to the totality of the evidence, the Panel finds that, in view of the Respondent's registration of the disputed domain name using the WHO HURT YOU? trademark and in view of the conduct that the Respondent has engaged in when using it, the Respondent registered and used the domain name in bad faith within the generally accepted meaning of that expression.

The Complainant has thus made out the third of the three elements that it must establish.

The Complainant has correctly cited several prior UDRP decisions that support its contentions on all of the elements required to be proved.

The Complainant has established all of the elements that it must show under the Policy and it is therefore entitled to the relief it seeks.

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 <whohurtyou.co> domain name be TRANSFERRED from Respondent to Complainant.

The Honorable Neil Anthony Brown KC, Panelist

Dated: May 5, 2024