Baker & Hostetler LLP v. Accounts Receivable
Claim Number: FA2208002007306
Complainant is Baker & Hostetler LLP (“Complainant”), represented by Deborah Wilcox of Baker & Hostetler LLP, Ohio, USA. Respondent is Accounts Receivable (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bakarlaw.com>, (‘the Domain Name’) registered with NameCheap, Inc..
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 5, 2022; the Forum received payment on August 5, 2022.
On August 5, 2022, NameCheap, Inc. confirmed by e-mail to the Forum that the <bakarlaw.com> Domain Name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 August 8, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 29, 2022 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@bakarlaw.com. Also on August 8, 2022, 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 September 1, 2022 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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
The Complainant’s contentions can be summarised as follows:
The Complainant’s law firm was established in 1916. The Complainant is the owner of, inter alia, the mark BAKER HOSTETLER, registered, inter alia, in the USA for legal services since 2006 and other registered marks incorporating BAKER. It has used the domain name bakerlaw.com since 1996 including for all employee email addresses and its mark is often shortened to BAKER in use affording the Complainant common law rights in the same.
The Domain Name registered in 2022 is confusingly similar to the Complainant’s BAKER mark changing only one letter substituting a letter ‘a’ for the letter ‘e’ and adding the generic word ‘law’ and the gTLD ‘.com’ none of which prevents the said confusing similarity, and differs by only one letter from the Complainant’s domain name.
The Respondent does not have rights or legitimate interests in the Domain Name, is not commonly known by it and is not authorised by the Complainant.
The Domain Name does not resolve to an active site but has been used for a fraudulent e mail scheme using the Complainant’s marks and its domain name spelt correctly and the Complainant’s logo. This cannot be a bona fide offering of goods or services or a legitimate non commercial or fair use. It is registration and use in bad faith. Typosquatting is bad faith per se. The Respondent has used a privacy service seeking to hide its identity.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant’s law firm was established in 1916. The Complainant is the owner of, inter alia, the mark BAKER HOSTETLER, registered, inter alia, in the USA for legal services since 2006 and other registered marks including BAKER. It has used the domain name bakerlaw.com since 1996 including for all employee email addresses and its mark is often shortened to BAKER in use affording the Complainant common law rights in that version of its name.
The Domain Name registered in 2022 has been used for a fraudulent e mail scheme using the Complainant’s marks and domain name spelt correctly and the Complainant’s logo.
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 Complainant owns, inter alia, common law rights in the well known mark BAKER for legal services with first use going back to 1916. The Domain Name consist of a sign confusingly similar to the Complainant's BAKER mark, the generic word ‘law’ and the gTLD ‘.com’.
The Panel agrees that misspellings of a complainant’s mark in a domain name do not prevent confusing similarity between that domain name and the Complainant's trade mark pursuant to the Policy. See Coachella Music Festival LLC v. Domain Administrator/China Capital Investment Limited, FA 1734230 (Forum July 17, 2017). As such substituting a letter ‘a’ for a letter ‘e’ does not prevent the Domain Name being confusingly similar to the Complainant’s BAKER trade mark under the Policy.
Previous panels have found confusing similarity when a respondent merely adds a generic term to a complainant's mark. See PG&E Corp. v Anderson, D2000-1264 (WIPO Nov. 22, 2000) (finding that respondent does not by adding common descriptive or generic terms create new or different marks nor does it alter the underlying mark held by the Complainant). The Panel agrees that the addition of the generic word ‘law’ does not distinguish the Domain Name from the Complainant's BAKER trade mark pursuant to the Policy.
The gTLD ‘.com’ does not serve to distinguish a domain name from a complainant’s mark. See Red Hat Inc v. Haecke, FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Name is confusingly similar to the Complainant’s BAKER trade mark.
As such the Panel holds that Paragraph 4(a)(i) of the Policy has been satisfied.
Rights or Legitimate Interests
The Complainant has not authorised the use of its marks. There is no evidence or reason to suggest the Respondent is, in fact, commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
The Domain Name has been used in a fraudulent phishing attempt using the Complainant’s marks and its domain name spelt correctly and the Complainant’s logo in the body of fraudulent e mails. This is deceptive and confusing. As such it cannot amount to the bona fide offering of goods and services or a legitimate non commercial or fair use. See DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (finding that ‘Passing off in furtherance of a fraudulent scheme is not considered a bona fide offering of goods or services or legitimate non commercial or fair use’.).
The Domain Name is a typosquatting registration differing by only one letter from the Complainant’s domain name bakerlaw.com. Typosquatting is also an indication of a lack of rights or a legitimate interests. See Cubist Pharmaceuticals, Inc. v. Gregory Stea, FA1403001550388 (Forum May 5, 2014)
The Respondent has not responded to the Complaint or offered any explanation.
As such the Panelist finds that the Respondent does not have rights or legitimate interests in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
Impersonating a complainant by use of a complainant’s mark in a fraudulent phishing attempt is disruptive and evinces bad faith registration and use. See Microsoft Corporation v. Terrence Green/ Whois Agent/Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr. 4, 2016) (finding that respondent’s use of the disputed domain name to send fraudulent e mails constituted bad faith registration and use pursuant to Policy 4 (b)(iii).).
The Domain Name seeks to take advantage of the situation where Internet users may make a typographical error. Typosquatting itself is evidence of relevant bad faith registration and use and disruption of the Complainant’s business. See Diners Club int'l Ltd. v. Domain Admin ****** It's all in the name ******, FA 156839 (Forum June 23, 2003) Typosquatting also indicates the Respondent had knowledge of the Complainant and its rights. See InfoSpace, Inc. v. Greiner, FA 227653 (Forum Mar. 8, 2004).
As such, the Panelist believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under para 4(b)(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 <bakarlaw.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: September 1, 2022
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