McGuireWoods LLP v. Steve Gage
Claim Number: FA2106001951426
Complainant is McGuireWoods LLP (“Complainant”), represented by Amanda L. DeFord of McGuireWoods LLP, Virginia, USA. Respondent is Steve Gage (“Respondent”), New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mcguirewo0ds.com>, registered with Squarespace Domains 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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 17, 2021; the Forum received payment on June 17, 2021.
On June 21, 2021, Squarespace Domains LLC confirmed by e-mail to the Forum that the <mcguirewo0ds.com> domain name is registered with Squarespace Domains LLC and that Respondent is the current registrant of the name. Squarespace Domains LLC has verified that Respondent is bound by the Squarespace Domains 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 June 23, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 13, 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@mcguirewo0ds.com. Also, on June 23, 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 July 17, 2021 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the MCGUIREWOODS mark established through its ownership of the portfolio of trademark and service mark registrations described below. Complainant further claims rights in the mark and the goodwill that it has accrued as a well-respected, AmLaw 100 international law firm, created in 1966 through the merger of two prominent law firms which trace their roots back to the 1800s. Complainant submits that since 1966, it has continued to grow through mergers with other law firms, and now employs over 1000 lawyers in 21 offices in the United States and around the world, collaborating with colleagues and managing resources in 128 countries.
Since at least 2000, Complainant has continuously owned and used MCGUIREWOODS trademark in commerce throughout the United States and around the world and has an established Internet presence and owned a number of Internet domain names that incorporate the MCGUIREWOODS mark, including <mcguirewoods.com> and <one.mcguirewoods.com>.
Complainant submits that disputed domain name is virtually identical to its MCGUIREWOODS mark and mimics the domain name <mcguirewoods.com> that Complainant uses to host its legitimate website.
Complainant submits that the only difference between the disputed domain name and the MCGUIREWOODS mark is the substitution of the number zero in the place of the second letter ‘o’ in the mark together with the addition of the Top-level Domain extension <.com>. Complainant contends that these minor difference do not mitigate the risk of confusion. See Oracle Int’l Corp. v. Ferdinand Robert, FA1941372 (Forum May 12, 2021) (finding <oracies.com> confusingly similar to ORACLE despite the substitution of ‘i’ for ‘l’ and addition of ‘s’);
Complainant submits that Respondent has no rights or legitimate interests in disputed domain name arguing that Respondent is not commonly known by any name related to the MCGUIREWOODS mark as confirmed by the unmasked WHOIS information received from the Registrar providing his name. See Am. Express Co. v. (This Domain is for Sale) Joshuathan Invs., Inc., FA0154647 (Forum June 3, 2003) (finding that WHOIS registry information is a factor in determining that a registrant is not commonly known by a domain name).
Complainant asserts that it has used the MCGUIREWOODS mark in the United States for over two (2) decades, and that mark has been federally registered in the United States for almost twenty (20) years and as owner of these rights, has never granted Respondent any license or other rights to use the MCGUIREWOODS mark in commerce for any purposes.
Complainant contends that Respondent has made no effort to use the disputed domain name since it was registered in May 2021. Instead, the disputed domain name currently redirects to a website of a third party, via a different domain that itself appears to be typosquatting on third-party mark and hosts a blank webpage that claims the website is “under construction.” As a result, Respondent has never made a bona fide offering of goods and/or services in connection with the
disputed domain name. Design Ideas, Ltd. v. Carolina Rodrigues/Fundacion Comercio elecronico, FA1936979 (Forum Apr. 29, 2021); see also Oracle Int’l Corp. v. Ferdinand Robert, FA1941372 (Forum May 12, 2021) (no legitimate interests or bona fide use where, among other things, the “disputed domain name does not resolve to any website content”).
Complainant also contends that Respondent’s decision to register the disputed domain name that consists of a subtle misspelling of the MCGUIREWOODS mark and Complainant’s legitimate domain name <mcguirewoods.com> is a textbook example of typosquatting. As numerous panels of have explained, “[t]yposquatting is further evidence that a respondent lacks rights or legitimate interests in a disputed domain name per Policy ¶ 4(a)(ii).” See Solar Turbines Inc. v. Carl Strobel, FA2103001936332 (Forum Apr. 20, 2021) (“Typosquatting may act as independent evidence that a respondent lacks rights and legitimate interests in a disputed domain name under Policy ¶ 4(a)(ii).”)
Complainant submits that the disputed domain name was registered and is being used in bad faith alleges MCGUIREWOODS mark has no meaning other than as an identifier of Complainant and its services. Accordingly, there can be little doubt that Respondent registered the disputed domain name with Complainant in mind. See Black Hills Ammunition, Inc. v. Wall, FA1541570 (Forum Mar. 17, 2014) (finding actual knowledge because there was no legitimate reason for Respondent “to register a domain name containing ‘Black Hills Amo’ other than to trade on Complainant’s trademark rights and that ‘Black Hills Am’ means nothing other than Complainant’s trademark”).
Furthermore, Complainant submits that the subtle substitution of a zero in the place of the second letter ‘o’ in Complainant’s mark, confirms that Respondent registered the disputed domain name with full knowledge of Complainant’s rights in order to exploit Complainant’s goodwill for Respondent’s financial gain. See, Oracle Int’l Corp. v. Ferdinand Robert, FA1941372 (Forum May 12, 2021) (finding it “implausible that the disputed name [<oracies.com>] was registered for any reason other than to take predatory advantage of Complainant’s name, mark, reputation, and goodwill [in ORACLE]”).
Complainant adds that the substitution of the number in the disputed domain name for the letter in Complainant’s trademark, demonstrates that Respondent is engaging in typosquatting which also evidences bad faith registration and use. See Oracle Int’l Corp. v. Ferdinand Robert, FA1941372 (Forum May 12, 2021) (finding bad faith established in a similar typosquatting scam where the disputed domain was a “typographical variation of Complainant’s legitimate <oracle.com> domain name”).
Furthermore, Complainant argues that the screen capture exhibited as an annex to the Complaint shows that Respondent is using of the disputed domain to redirect to an inactive website which displays only another domain name domain name in banner form together with a “under construction” notice. Complainant argues that therefore Respondent has failed use the disputed domain name for any legitimate purpose. Taken together these factors show that Respondent appears to be using the disputed domain name in bad faith as part of a typosquatting scheme. Numerous panels have held similar uses of a domain to be bad faith registration and use, and Respondent’s use is no different. See Guiding Stars Licensing Co. v. Crystal Waddell, FA2105001944462 (Forum May 20, 2021) (“Failing to make active use of a disputed domain name can demonstrate bad faith per Policy ¶ 4(a)(iii).”)
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is an international law firm and carries on its profession under the style and title MCGUIREWOODS for which it owns the following portfolio of registered trademarks and service marks:
United States registered service mark MCGUIREWOODS, registration number 2483615, registered on the Principal Register on August 28, 2001 services in international class 42;
· Benelux registered trademark and service mark MCGUIREWOODS, registration number 0900590, registered on August 10, 2011 for goods and services in international classes 16 and 45;
· EUTM MCGUIREWOODS registration number 005738083, registered on March 28, 2008 goods and services in classes16 and 45;
· PCR registered trademark, MCGUIREWOODS registration number 19191102. registered on April 7, 2017 services in class 35;
· Kazakhstan registered service mark MCGUIREWOODS 33197 registered on August 19, 2009 services in class 42;
· United Kingdom registered trade mark and service mark MCGUIREWOODS, registration number 2565626, registered on February 25, 2011 of goods and services in classes 16 and 45;
· United Kingdom registered trade mark and service mark MCGUIREWOODS, registration number 905738083, registered on March 28, 2008 of goods and services in classes 16 and 45.
The disputed domain name was registered on May 24, 2021 and resolves to an webpage that prominently displays a quite different domain name in form together with a notice that the website is “under construction”.
There is no information available about Respondent except for that which is provided in the Complaint together with its annexes, the Registrar’s WHOIS, and the information provided by the Registrar in the course of this proceeding. The Registrar has confirmed that Respondent, who availed of privacy service to conceal his identity on the published WHOIS, is the registrant of the disputed domain name.
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 provided uncontested convincing evidence that it has rights in the MCGUIREWOODS mark established by its ownership of the trademark and service mark registrations in a number of international jurisdictions as set out above as well as its rights at common law by its long established and continuous use of the mark since at least 2000 in its international law practice that now employs over 1000 lawyers in 21 offices in the United States and around the world, collaborating with colleagues and managing resources in 128 countries.
Visually the disputed domain name is almost identical to Complainant’s MCGUIREWOODS mark, and it is clearly intended to create confusion with Complainant’s name and mark as well as the domain name <mcguirewoods.com> that Complainant uses to host its own legitimate website.
The only difference between the disputed domain name and Complainant’s MCGUIREWOODS mark is the substitution of the number zero in the disputed domain name in the place of the second letter ‘o’ in Complainant’s mark.
This substitution of characters does not diminish the confusing similarity between both. Furthermore, the addition of the generic Top-Level Domain extension <.com> adds no distinguishing character as it would be considered by Internet users be a technical necessity.
This Panel finds therefore that the disputed domain name is confusingly similar to the mark in which Complainant has rights. Complainant has therefore satisfied first element in the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in disputed domain name arguing that
· Respondent is not commonly known by any name related to the MCGUIREWOODS mark as confirmed by the unmasked WHOIS information providing his name.;
· Complainant as owner of, and holding rights in, the MCGUIREWOODS mark in the United States for over two (2) decades, has never granted Respondent any license or other rights to use the MCGUIREWOODS mark in commerce for any purpose.
· Respondent has made no effort to use the disputed domain name since it was registered in May 2021, but instead, the disputed domain name currently redirects to an inactive website which prominently displays a different domain name that itself appears to be composed of a third-party mark and otherwise only contains a notice that Respondent’s website is “under construction”;
· Respondent has never made a bona fide offering of goods and/or services in connection with the disputed domain name;
· Respondent’s decision to register the disputed domain name that consists of a subtle misspelling of Complainant’s MCGUIREWOODS mark and Complainant’s legitimate <mcguirewoods.com> domain name is a textbook example of typosquatting.
It is well established that when a complainant makes out a prima facie case that the respondent has no rights legitimate interests in the domain name in dispute, the burden of production shifts to the respondent to prove such rights.
Respondent has failed to file a Response and has therefore failed to discharge the burden of production it follows therefore that this Panel must find that Respondent has no right or legitimate interests in the disputed domain name.
Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
Complainant’s MCGUIREWOODS mark is distinctive, being a coined word that is the combination of elements of the names in merged entities. It has no meaning other than as Complainant’s name and mark. It is improbable that the registrant chose and registered the almost identical disputed domain name without intending to reference and take predatory advantage of Complainant’s name, mark, and Internet domain name.
This Panel is confirmed in reaching this conclusion by the fact that the registrant intentionally chose to substitute of the number zero in the disputed domain name to replace the letter ‘o’ in Complainant’s mark. This choice of substituted characters clearly illustrates knowledge and intention on the part of the registrant.
This Panel finds therefore that the disputed domain name was registered in bad faith.
The screen capture of the website which the disputed domain name resolves which was exhibited in an annex to the Complaint shows that the disputed domain name is being used to redirect Internet users to an inactive website which displays only another domain name domain name in banner form together with a “under construction” notice.
Complainant has implied, but has not provided any evidence, that the third party domain name posted on Respondent’s website is actively linked to a third party web location.
This Panel finds the evidence adduced shows that on the balance of probabilities, the disputed domain name resolves to an inactive web page and is being passively held by Respondent.
In the circumstances of this case, including Respondent’s lack of rights or legitimate interests in the disputed domain name, the distinctive character of the MCGUIREWOODS mark, the conscious substitution of the number zero in the disputed domain name for the letter “o” in Complainant’s mark, and the absence of any Response, this Panel finds that such passive holding amounts to bad faith use of the disputed domain name.
As this Panel is found that the disputed domain name was registered and is being used in bad faith, Complainant has succeeded in the third and final element in the test in Policy ¶ 4(a)(iii), and is entitled to succeed in this application.
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 <mcguirewo0ds.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: July 19, 2021
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