Haynes and Boone, LLP v. Colleen Migl
Claim Number: FA2103001935273
Complainant is Haynes and Boone, LLP (“Complainant”), represented by Jeffrey M Becker of Haynes and Boone, LLP, Texas, USA. Respondent is Colleen Migl (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <haynesboone.info> and <haynesboone.org>, registered with GoDaddy.com, LLC.
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 Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 3, 2021; the Forum received payment on March 3, 2021.
On March 4, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <haynesboone.info> and <haynesboone.org> 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 March 8, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 29, 2021 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@haynesboone.info, postmaster@haynesboone.org. Also on March 8, 2021, 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 March 31, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions.
Complainant, Haynes and Boone, LLP, is a full-service law firm. Complainant has offered legal services under its trade name, Haynes and Boone, LLP, since 1970. Complainant registered the HAYNESBOONE mark with the United States Patent and Trade Office (USPTO) (e.g. Reg. No. 4,551,768, registered on June 17, 2014). Complainant also has an existing online presence using its <haynesboone.com> domain name. The Disputed Doman Names, <haynesboone.info> and <haynesboone.org>, are identical or confusingly similar because they wholly incorporate Complainant’s mark and add a generic top-level domain (gTLD), “.info” and “.org”, to form a domain name.
Respondent has no rights or legitimate interests in the Disputed Domain Names. Respondent is not commonly known by the Disputed Domain Names. Respondent also does not make a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Disputed Domain Names because the resulting websites from the Disputed Domain Names resolve to links that direct users to complainant’s competitors. Respondent’s further lack of rights or legitimate interests can be found with Respondent’s offer to sell the Disputed Domain Names.
Respondent has registered and is using the Disputed Domain Names in bad faith because Respondent is using the Disputed Domain Names to divert internet users for personal commercial gain. Respondent is also offering the Disputed Domain Names for sale. Respondent also had actual knowledge of Complainant’s rights in the HAYNESBOONE mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is a prominent full-service law firm that has offered legal services under its trade name, Haynes and Boone, LLP, since 1970.
2. Complainant has established its trademark rights in the HAYNESBOONE mark by virtue of its registration with the United States Patent and Trade Office (USPTO) (e.g. Reg. No. 4,551,768, registered on June 17, 2014).
3. Respondent registered the <haynesboone.org> and <haynesboone.info> domain names on February 14, 2021.
4. Respondent has caused the Disputed Domain Names to resolve to websites that direct users to Complainant’s competitors and has offered the domain names for sale.
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”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the HAYNESBOONE mark through registration with the USPTO. Registration of a mark with the USPTO is sufficient to show that Complainant has rights in that mark under Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Complainant provides evidence that it has registered its HAYNESBOONE mark with the USPTO (e.g. Reg. No. 4,551,768, registered on June 17, 2014). See Compl. Ex. 4. Thus, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s HAYNESBOONE mark. Complainant argues that the Disputed Domain Names, <haynesboone.info> and <haynesboone.org>, are identical or confusingly similar because they wholly incorporate Complainant’s HAYNESBOONE mark while adding a gTLD to form the domain names. Under Policy ¶ 4(a)(i), the addition of a gTLD to a mark does not differentiate the domain name from a complainant’s mark. See Roche Therapeutics Inc. v. Williams Shorell, FA 1684961 (Forum Aug. 30, 2016) (“Complainant asserts Respondent’s <boniva.top> domain name is identical to the BONIVA mark. The addition of a generic top level domain to a mark does not differentiate the domain from said mark under Policy ¶ 4(a)(i).”); see also Gagemaker, LP v. Pavel B Novoselov, FA 1714411 (Forum Mar. 20, 2017) (“Therefore, because Respondent only added “.info” to an otherwise unchanged mark, the Panel agrees that Respondent has not distinguished the domain name from Complainant’s mark under Policy ¶ 4(a)(i).”). Here, the gTLDs used to form these Disputed Domain Names are “.info” and “.org.”. Therefore, the Panel finds that the Disputed Domain Names are identical to the HAYNESBOONE trademark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have 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)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s HAYNESBOONE trademark and to use it in its domain names;
(b) Respondent registered the <haynesboone.org> domain name on February 14, 2021 and the <haynesboone.info> domain name on February 14, 2021;
(c) Respondent has caused the Disputed Domain Names to resolve to websites that direct users to complainant’s competitors and has offered the domain names for sale;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent has no rights or legitimate interests in the <haynesboone.info> and <haynesboone.org> domain names because Respondent is not commonly known by the Disputed Domain Names. Under Policy ¶ 4(c)(ii), a respondent may not have rights or legitimate interests in a disputed domain name where the identifying information obtained in the WHOIS data is unrelated to the domain name. See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel notes that the WHOIS information merely lists a privacy service as registrant. In light of Respondent’s failure to provide any evidence to the contrary, the Panel finds there is no basis to find Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).”). Respondent provides WHOIS information for the Disputed Domain Names. Here, the registrant name for the Disputed Domain Name is listed as “Colleen Migl”. Complainant further submits that it has not authorized Respondent to use any of Complainant’s marks. With this showing, the Panel finds that Respondent is not commonly known by the Disputed Domain Names under Policy ¶ 4(c)(ii);
(f) Complainant argues that the Respondent is not making a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Disputed Domain Names because the Disputed Domain Names redirect users to a webpage that displays hyperlinks to Complainant’s competitors. It is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use, under Policy ¶¶ 4(c)(i) and (iii), where the resulting website of a disputed domain names displays links to competing third parties. See The Toronto-Dominion Bank v. GEORGE WASHERE, FA 1785311 (Forum June 7, 2018) (“Respondent’s confusingly similar <esecuretdbank.com> domain name references a website displaying links to competing third parties as well as links to Complainant and various unrelated third parties. Using the domain name in this manner shows neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Here, Complainant provides screenshots of the resulting websites that display links that direct users to law firms that compete with Complainant. When a user clicks on these links, the user is redirected to competing third parties in real estate and bankruptcy law and for trial attorneys. Because of the use of the Disputed Domain Names to host links to competing firms, the Panel finds that Respondent is not making a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Disputed Domain Names under Policy ¶¶ 4(c)(i) and (iii);
(g) Complainant argues that Respondent has no rights or legitimate interests in the domain names because Respondent is offering to sell them. A respondent lacks rights or legitimate interests in a disputed domain name where respondent is making a general offer for sale. See 3M Company v. Kabir S Rawat, FA 1725052 (Forum May 9, 2017) (holding that “a general offer for sale… provides additional evidence that Respondent lacks rights and legitimate interests” in a disputed domain name). In the screenshots provided by Complainant, a message is displayed on the webpages of the Disputed Domain Names that says, “get this domain” or “interest in [domain name]? Our Domain Broker Service may be able to get it for you. Find out how”. Here, when the link to get the domain or obtain access to information is clicked, a user is redirected to a webpage that advertises services whereby a user may be able to purchase these domain names from Respondent. The Panel therefore finds a lack of rights or legitimate interests due to this general offer for sale.
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent has registered or is using the Disputed Domain Names, <haynesboone.info> and <haynesboone.org>, in bad faith because Respondent is offering the Disputed Domain Names for sale or lease. A general offer of a domain name for sale constitutes bad faith under Policy ¶ 4(b)(i). See Airbnb, Inc. v. Super Privacy Service LTD c/o Dynadot, FA 1821386 (Forum Jan. 10, 2019) (“Complainant argues that Respondent registered and uses the <airbnbb.com> domain name in bad faith by offering it for sale. The Panel agrees and finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(i).”). Here, as stated above, the screenshots to the resulting webpages allow users to find out how to obtain the Disputed Domain Names. When clicking on the hyperlinks to find out how, users are taken to webpages that display that users can obtain a broker, for a fee, to get the Disputed Domain Names. Id. With this general offer, the Panel finds bad faith registration or use under Policy ¶ 4(b)(i).
Secondly, Complainant argues that Respondent is using the Disputed Domain Names as disruption to Complainant for Respondent’s own commercial gain. A respondent is using a disputed domain name as a disruption and attraction for commercial gain, under Policy ¶¶ 4(b)(iii) and (iv), where a respondent is using the domain name to link to competitors of a complainant that is presumably generating pay-per-click fees for respondent. See Transamerica Corporation v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1798316 (Forum Aug. 20, 2018) (“Respondent's use of the domain name to link to competitors of Complainant, presumably generating pay-per-click or referral fees for Respondent, is indicative of bad faith under paragraphs 4(b)(iii) and 4(b)(iv).”). Here, Respondent is using the Disputed Domain Names to host hyperlinks. When users click on these hyperlinks, users are directed to websites that compete with legal services that Complainant provides. Complainant claims this causes users to seek legal services from competing firms even though users were looking for Complainant’s services. Based upon this, the Panel finds that Respondent is using the domain names as a disruption and attraction for commercial gain, under Policy ¶¶ 4(b)(iii) and (iv)
Thirdly, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the HAYNESBOONE mark because Respondent uses its resolving website to advertise legal services, the same area Complainant offers services. Actual knowledge can be found where a respondent uses a complainant’s mark to promote links related to complainant’s services. See University of Rochester v. Park HyungJin, FA1410001587458 (Forum Dec. 9, 2014) (“. . .the Panel infers Respondent’s actual knowledge here based on Respondent’s complete use of the PERIFACTS mark in the <perifacts.com> domain name to promote links related to the field of obstetrics, where Complainant’s mark is used.”). Here, Respondent uses the complete HAYNESBOONE mark to create the Disputed Domain Names. The resulting websites display links to legal services similar to the legal services that Complainant provides. As the Panel agrees that actual knowledge is evident, the Panel finds bad faith per Policy ¶ 4(a)(iii).
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <haynesboone.info> and <haynesboone.org> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: April 5, 2021
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