McGuireWoods LLP v. Bobby Jones / UTILITY BELLHOPS
Claim Number: FA1911001871096
Complainant is McGuireWoods LLP (“Complainant”), represented by Amanda L. DeFord of McGuireWoods LLP, United States. Respondent is Bobby Jones / UTILITY BELLHOPS (“Respondent”), United States.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <mcguirewoods-law.com>, <mcguirewoodslaw.com>, and <mcguirewoods.exposed> (collectively “Domain Names”), registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 13, 2019; the Forum received payment on November 13, 2019.
On November 14, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <mcguirewoods-law.com>, <mcguirewoodslaw.com>, and <mcguirewoods.exposed> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 November 18, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 9, 2019 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@mcguirewoods-law.com, postmaster@mcguirewoodslaw.com, postmaster@mcguirewoods.exposed. Also on November 18, 2019, 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 December 10, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith 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.
A. Complainant
Complainant, McGuireWoods LLP, is a law firm operating in the US and Europe. Complainant has rights in the MCGUIREWOODS mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,483,615, registered August 28, 2001). Respondent’s <mcguirewoodslaw.com>, <mcguirewoods-law.com>, and <mcguirewoods.exposed> domain names are identical and/or confusingly similar to Complainant’s MCGUIREWOODS mark because they wholly incorporate the mark, adding only generic terms and generic top level domains (“gTLDs”).
Respondent lacks rights or legitimate interests in the Domain Names. Respondent is not authorized to use Complainant’s mark and is not commonly known by the Domain Names. Additionally, Respondent fails to use the Domain Names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Instead, Respondent uses the <mcguirewoodslaw.com> and <mcguirewoods.exposed> domain names to redirect to webpages that contain advertisements and hyperlinks to other law firms. Respondent uses the <mcguirewoods-law.com> domain name to host a series of webpages that accuse Complainant of fraudulent business practices.
Respondent registered and uses the Domain Names in bad faith. Respondent attempts to attract users for commercial gain by redirecting to a page with pay-per-click hyperlinks to competing businesses. Additionally, Respondent’s use of the <mcguirewoods-law.com> domain name to host webpages containing business libel is a showing of bad faith. Finally, Respondent had actual knowledge of Complainant’s MCGUIREWOODS mark prior to registering the Domain Names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the MCGUIREWOODS mark. Each of the Domain Names is confusingly similar to Complainant’s MCGUIREWOODS mark. Complainant has established that Respondent lacks rights or legitimate interests in the Domain Names and that Respondent registered and has used the Domain Names in bad faith.
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 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”).
Complainant has rights in the MCGUIREWOODS mark based upon registration of the mark with the USPTO (e.g., Reg. No. 2,483,615, registered August 28, 2001). Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).”).
The Panel finds that each of the Domain Names is confusingly similar to the MCGUIREWOODS mark as they each incorporate the entire mark while adding a gTLD and in the case of <mcguirewoodslaw.com> and <mcguirewoods-law.com>, the generic terms “law” and “-law”). Such changes are insufficient to distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i) analysis. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain); see also 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).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Names. 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 Names 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 Names as Respondent is not commonly known by the Domain Names, nor has Complainant authorized Respondent to use the MCGUIREWOODS 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, FA1504001613011 (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, FA1505001621573 (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 “Bobby Jones / UTILITY BELLHOPS” as the registrants 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 Names in accordance with Policy ¶ 4(c)(ii).
The domain names <mcguirewoodslaw.com> and <mcguirewoods.exposed> resolve to parking pages maintained by the Registrar that feature pay-per-click advertisements for competing law firms. Using a disputed domain name to display links to competing third parties is not a bona fide offering or goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii). See McGuireWoods LLP v. Mykhailo Loginov / Loginov Enterprises d.o.o, FA1412001594837 (Forum Jan. 22, 2015) (“The Panel finds Respondent’s use of the disputed domain names to feature parked hyperlinks containing links in competition with Complainant’s legal services is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), and it is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
The domain name <mcguirewoods-law.com> is presently inactive but prior to the commencement of the proceeding resolved to a website which contained material accusing Complainant of fraudulent business practices. As the domain name <mcguirewoods-law.com> contains the Complainant’s mark in its entirety and a word that is descriptive of the services offered by Complainant, Respondent, by its use of the domain name <mcguirewoods-law.com> is impersonating the Complainant. The Panel finds that Respondent does not have the right to impersonate Complainant by wholly incorporating Complainant’s trademark in a disputed domain name without the inclusion other indicia (such as a derogatory term) to make it clear that the domain name is unconnected to Complainant. Therefore, the Panel finds that Respondent is not making a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Monty & Pat Roberts, Inc. v. Keith, D2000-0299 (WIPO June 9, 2000) (“[T]he Panel does not dispute Respondent’s right to establish and maintain a website critical of Complainant . . . However, the panel does not consider that this gives Respondent the right to identify itself as Complainant.”); see also Baker & Daniels v. DefaultData.com, FA 104579 (Forum Mar. 27, 2002) (finding that because the respondent’s <bakeranddaniels.com> domain name merely incorporates the complainant’s trademark, without more, it is not protected by the First Amendment); see also Name.Space Inc. v. Network Solutions, Inc., 202 F.3d 573, 585 (2d Cir. 2000) (finding that although the content of the respondent’s site may be entitled to First Amendment protection, the respondent’s use of the complainant’s trademark in the domain name of its site is not protected.).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds on the balance of probabilities that, at the time of registration of the Domain Names, October 24, 2019, Respondent had actual knowledge of Complainant’s MCGUIREWOODS mark. The domain name <mcguirewoods-law.com> has resolved to a website that criticizes Complainant. 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 Names in bad faith to create confusion with Complainant’s MCGUIREWOODS Mark for commercial gain by either (in the case of <mcguirewoodslaw.com> and <mcguirewoods.exposed>) using the confusingly similar Domain Names to resolve to websites containing advertisements and links to third party websites for commercial gain or (in the case of <mcguirewoods-law.com>) attempting to pass off as Complainant in order to disrupt Complainant’s business. 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, FA1408001575815 (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)). The use a domain name to trick internet users intending to visit the trademark owner’s site into visiting the registrant’s site can also be bad faith pursuant to Policy ¶ 4(b)(iii), see Diners Club Int’l, Ltd. v. Infotechnics Ltd., FA 169085 (Forum Aug. 20, 2003) “[the respondent’s] registration and use of a domain name nearly identical to [the complainant’s] mark to criticize [the complainant’s] business practices is evidence of registration and use of the <diners-club.net> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).”
The Panel finds Complainant has 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 <mcguirewoods-law.com>, <mcguirewoodslaw.com>, and <mcguirewoods.exposed> domain names be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: December 11, 2019
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