Grant A. Wright v. Robert Thompson / w& w / Richard Lanham / No Company
Claim Number: FA1809001805540
Complainant is Grant A. Wright (“Complainant”), represented by Shannon V. McCue of Baker & Hostetler LLP, Ohio, USA. Respondent is Robert Thompson / w& w / Richard Lanham / No Company (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <wrightandwrightlawoffice.com> and <lawofficeofwrightandwright.com>, registered with Neubox Internet S.A. de C.V.
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.
David A. Einhorn as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 12, 2018; the Forum received payment on September 11, 2018.
On September 17, 2018, Neubox Internet S.A. de C.V. confirmed by e-mail to the Forum that the <wrightandwrightlawoffice.com> and <lawofficeofwrightandwright.com> domain names are registered with Neubox Internet S.A. de C.V. and that Respondent is the current registrant of the names. Neubox Internet S.A. de C.V. has verified that Respondent is bound by the Neubox Internet S.A. de C.V. 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 25, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 15, 2018 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 email@example.com, and firstname.lastname@example.org. Also on September 25, 2018, 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, the Forum transmitted to the parties a Notification of Respondent Default.
On October 22, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David A. Einhorn as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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, the 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 names be transferred from Respondent to Complainant.
Complainant is an individual who owns and operates a law firm under the WRIGHT mark. Complainant has common law rights in the WRIGHT mark, as Complainant owns the domain name <wrightlawohio.com> used to advertise his law firm “Grant A. Wright, LLC” and its legal services. Complainant has offered legal services at the <wrightlawohio.com> domain name and in connection with his law office since at least as early as 2011. Further, Complainant is registered to practice law in Ohio and Nevada. Respondent’s <wrightandwrightlawoffice.com> and <lawofficeofwrightandwright.com> domain names are confusingly similar to Complainant’s WRIGHT mark, which is Complainant’s personal name, as each of the domain names merely add the non-distinctive terms “law office” and a “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <wrightandwrightlawoffice.com> and <lawofficeofwrightandwright.com> domain names. Respondent is not commonly known by the disputed domain names and registered them with false information. Further, Respondent fails to use the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain names to pass off as Complainant, presumably to mislead or defraud others.
Respondent registered and uses the <wrightandwrightlawoffice.com> and <lawofficeofwrightandwright.com> domain names in bad faith. Respondent attempts to use the disputed domain name to impersonate Complainant as part of a phishing scheme intended to defraud Internet users. Further, Respondent had actual knowledge of Complainant’s rights in the WRIGHT mark prior to registering the disputed domain names.
Respondent failed to submit a response. The Panel notes that the <wrightandwrightlawoffice.com> and <lawofficeofwrightandwright.com> domain names were registered on May 21, 2018 and June 25, 2018, respectively.
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 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 (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.”).
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant contends that although the WHOIS information identifies two different Respondents, the registration information is false and both disputed domain names resolve to the same website.
The Panel finds that Complainant has sufficiently presented evidence demonstrating that the listed entities are jointly controlled.
Preliminary Issue: Language of Proceeding
The Panel notes that the Registration Agreement is written in Spanish, thereby making the language of the proceedings in Spanish.
Complainant has alleged that because Respondent is conversant and proficient in English, the proceeding should be conducted in English. The Panel has the discretion under UDRP Rule 11(a) it has the discretion to determine the appropriate language of the proceedings taking into consideration the particular circumstances of the administrative proceeding. See FilmNet Inc. v. Onetz, FA 96196 (Forum Feb. 12, 2001) (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English). Complainant contends Respondent’s website available at the disputed domain name uses English characters and words therein, suggesting that Respondent is proficient in the English language. Further, Complainant is neither conversant nor proficient in the Spanish language and it would require delay and unnecessary costs to translate the document.
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.
Complainant claims common law rights in the WRIGHT mark since as early as 2011. Common law rights are typically found through a showing that a secondary meaning in the mark has been created in the minds of the public. See AOL LLC v. DiMarco, FA 1275978 (Forum Sept. 9, 2009) (“‘Secondary meaning’ is acquired when ‘in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product rather than the product itself.’”). Complainant claims it owns the domain name <wrightlawohio.com> used to advertise his law firm “Grant A. Wright, LLC” and its legal services. Complainant avers it has offered legal services at the <wrightlawohio.com> domain name and in connection with his law office since at least as early as 2011. Further, Complainant argues he is registered to practice law in Ohio and Nevada, where the disputed domain names are used.
Mere allegations of the existence and use of a domain name do not establish secondary meaning. Raptor Technologies, LLC v. sajima tan, FA 1693640 (Forum Oct. 25, 2016). (“A domain name registration alone establishes no protectable trademark rights. Secondary meaning requires establishing that the public primarily associates the mark in question with certain goods or services originating from the purported mark holder.”) Nor does the Policy protect trade names, only trademarks. See The Woodlands Dermatology Associates, P.A. v. Anthony Pevi, FA 1410742 (Nov. 28, 2011).
Complainant does not provide any proof of continuous use and acquired secondary meaning, such as amount of sales under the mark, or the nature and extent of advertising, consumer surveys, or the like. See, e.g. The Lincoln Electoral Company v. Assistant Mailroom Clerk Trainee/ EXISTech Corporation, FA 1704079 (Forum Jan. 8, 2017). The Panel therefore finds that Complainant has not established common law rights in the mark WRIGHT.
Thus, Complainant has not proven this element.
Because the Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(i), the Panel declines to analyze the other two elements of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Forum Sept. 20, 2002) (Finding that because the complainant must prove all three elements under the Policy, the Complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); See also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Forum Dec. 28, 2006) (deciding not to inquire into the respondents’ rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <wrightandwrightlawoffice.com> and <lawofficeofwrightandwright.com> domain names REMAIN WITH Respondent.
David A. Einhorn, Panelist
Dated: November 5, 2018
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