Mayer, Brown, Rowe & Maw LLP v. Domaincar
Claim Number: FA0602000646073
Complainant is Mayer, Brown, Rowe & Maw LLP (“Complainant”), represented by Aric S. Jacover of Mayer, Brown, Rowe & Maw LLP, 71 South Wacker Drive, Chicago, IL, 60606. Respondent is Domaincar (“Respondent”), Galerias 3, Zona 5, Panama 5235, Panama.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <mayerbrownerowe.com>, registered with Domaindoorman, Llc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically February 16, 2006; the National Arbitration Forum received a hard copy of the Complaint February 21, 2006.
On February 24, 2006, Domaindoorman, Llc confirmed by e-mail to the National Arbitration Forum that the <mayerbrownerowe.com> domain name is registered with Domaindoorman, Llc and that Respondent is the current registrant of the name. Domaindoorman, Llc verified that Respondent is bound by the Domaindoorman, Llc registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On February 28, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 20, 2006, by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@mayerbrownerowe.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 27, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. The domain name that Respondent registered, <mayerbrownerowe.com>, is confusingly similar to Complainant’s MAYER, BROWN, ROWE & MAW mark.
2. Respondent has no rights to or legitimate interests in the <mayerbrownerowe.com> domain name.
3. Respondent registered and used the <mayerbrownerowe.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Mayer, Brown, Rowe & Maw LLP, is currently among the ten largest law firms in the world, with some 1,350 lawyers in seven different countries. The predecessor law firm to Complainant was founded in 1881, and has included the name “Mayer” in the law firm since 1905. In 1970, Complainant’s predecessor adopted the name “Mayer, Brown & Platt,” which was used consistently until 2002. In 2002, Complainant’s predecessor merged with the U.K.-based firm “Rowe & Maw” and Complainant subsequently changed its name to “Mayer, Brown, Rowe & Maw.” Since the 2002 merger, Complainant has consistently and continuously used the MAYER, BROWN, ROWE & MAW mark in providing global legal services.
Complainant provides legal services in a variety of practice areas, including litigation, corporate, government, mergers and acquisitions, finance, estate, tax and intellectual property. As a result of its legal work, Complainant has become well-known worldwide. Complainant’s lawyers regularly have argued before the United States Supreme Court and currently serve some sixty-five of the Fortune 100 companies. Moreover, Complainant and its lawyers frequently are mentioned in national publications, including The Wall Street Journal, Legal Times and American Lawyer. Additionally, Complainant operates a website located at the <mayerbrownrowe.com> domain name, providing Internet users with information about the law firm, its lawyers, its practice groups, and publications written by Complainant’s lawyers.
Respondent registered the <mayerbrownerowe.com> domain name October 19, 2005. Respondent is using the disputed domain name to operate a search engine website featuring links to third-party websites offering a variety of goods and services, some of which compete with Complainant’s legal services.
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."
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(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires Complainant to 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.
Based upon the facts asserted and extrinsic evidence produced by Complainant, the Panel finds that through its use of the MAYER, BROWN, ROWE & MAW mark in connection with its offering of legal services, Complainant’s mark has acquired sufficient secondary meaning to establish Complainant’s common law rights in the mark. Complainant has provided legal services under the MAYER, BROWN, ROWE & MAW mark since the merger between Mayer, Brown & Platt and the Rowe & Maw firm in 2002. The 2002 merger that created the MAYER, BROWN, ROWE & MAW mark also formed one of the ten largest law practices in the world. Complainant’s lawyers regularly appear before the United States Supreme Court, and serve some 65 of the Fortune 100 companies. Additionally, Complainant’s lawyers and Complainant’s mark have been publicized in numerous well-known publications. Consequently, Complainant’s use of the MAYER, BROWN, ROWE & MAW mark in the circumstances alleged is sufficient to establish common law rights in the mark. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (holding that a complainant established rights in the descriptive RESTORATION GLASS mark through proof of secondary meaning associated with the mark).
Complainant has sufficiently demonstrated that the disputed domain name that Respondent registered, <mayerbrownerowe.com>, is confusingly similar to Complainant’s MAYER, BROWN, ROWE & MAW mark. Respondent’s <mayerbrownerowe.com> domain name incorporates a misspelled portion of Complainant’s mark, adding the letter “e” to the word “brown,” omitting commas and the words “& MAW,” and adding the generic top-level domain “.com.” Prior panels have found that such minor alterations to a complainant’s well-known mark do not negate the confusingly similar aspects of a respondent’s domain name pursuant to Policy ¶ 4(a)(i). In Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000), the panel found that the respondent’s <asprey.com> domain name was confusingly similar to the complainant’s ASPREY & GARRARD and MISS ASPREY marks. Moreover, in Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000), the panel held that by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the disputed domain name confusingly similar to the complainant’s marks. In the present case, the slight deviations in the Respondent’s <mayerbrownerowe.com> domain name from Complainant’s MAYER, BROWN, ROWE & MAW mark do not avoid confusing similarity between the disputed domain name and the mark. Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Under the Policy at ¶ 4(a)(ii), Complainant must initially prove that Complainant has rights to and legitimate interests in the mark in issue and that Respondent does not have rights to or legitimate interests in connection with the mark contained within the disputed domain name. Once Complainant demonstrates this prima facie case, the burden of proof shifts to Respondent to establish that it has rights or legitimate interests in the disputed domain name. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel finds that Complainant established a prima facie case and the Panel now determines whether the evidence on record demonstrates rights or legitimate interests for the Respondent under Policy ¶ 4(c).
The evidence on record does not suggest that Respondent is commonly known by the <mayerbrownerowe.com> domain name. The WHOIS information indicates that Respondent is known as “Domaincar,” and no other evidence in the record suggests that Respondent is commonly known by the disputed domain name. Thus, Respondent fails to demonstrate rights or legitimate interests with respect to the disputed domain name under Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
Furthermore, Respondent is using the <mayerbrownerowe.com> domain name to operate a generic search engine website that offers links to third-party commercial websites. The Panel infers that Respondent receives click-through fees through the operation of its website. However, such use by Respondent does not constitute either a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate or fair use of the domain name under Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names); see also WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Complainant also
alleged that Respondent acted in bad faith in registering a domain name that
contains in its entirety Complainant’s protected mark. The disputed domain name, <mayerbrownerowe.com>,
uses Complainant’s well-known MAYER, BROWN, ROWE & MAW mark to divert
Internet users to a website lacking any affiliation with Complainant’s
business. The disputed domain name resolves
to a search engine website that features links to a variety of third-party
commercial websites. Consequently, the
Panel finds that Respondent is using the <mayerbrownerowe.com>
domain name, which is confusingly similar to Complainant’s mark, to attract
Internet users for commercial gain by creating a likelihood of confusion
between the disputed domain name and Complainant’s mark. Therefore, Respondent’s <mayerbrownerowe.com>
domain name was registered and is being used in bad faith pursuant to Policy ¶
4(b)(iv). See Bank of Am.
Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003)
(stating that “[s]ince the disputed domain names contain entire versions of
Complainant’s marks and are used for something completely unrelated to their
descriptive quality, a consumer searching for Complainant would become confused
as to Complainant’s affiliation with the resulting search engine website” in
holding that the domain names were registered and used in bad faith pursuant to
Policy ¶ 4(b)(iv)); see also G.D.
Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21,
2002) (finding that the respondent registered and used the domain name in bad
faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the
confusingly similar domain name to attract Internet users to its commercial
website).
The Panel finds that Complainant satisfied 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 <mayerbrownerowe.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: April 10, 2006
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