Cramer Rosenthal McGlynn, LLC v. Bratu StefanClaim Number: FA1010001351742
Complainant is Cramer Rosenthal McGlynn, LLC ("Complainant"), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Bratu Stefan ("Respondent"), Romania.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <crm-law.org>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies that he or she 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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 12, 2010; the National Arbitration Forum received payment on October 12, 2010«DateHardCopy».
On October 14, 2010, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <crm-law.org> domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com 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 October 14, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 3, 2010 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@crm-law.org. Also on October 14, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 12, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 makes the following assertions:
1. Respondent’s <crm-law.org> domain name is confusingly similar to Complainant’s CRM mark.
2. Respondent does not have any rights or legitimate interests in the <crm-law.org> domain name.
3. Respondent registered and used the <crm-law.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Cramer Rosenthal McGlynn, LLC, is a privately owned investment management firm that was founded in 1973 and currently has approximately $11 billion in assets under its management. Complainant does not own a trademark registration for the CRAMER ROSENTHAL MCGLYNN and CRM marks. Complainant has devoted considerable time and expense in developing its investment business over the last forty years and has developed significant good will and public recognition in the common law marks of CRAMER ROSENTHAL MCGLYNN and CRM.
Respondent, Bratu Stefan, registered the <crm-law.org> domain name on September 12, 2010. Respondent’s disputed domain name resolves to a website that appears to be that of a law firm under the name CRAMER ROSENTHAL MCGLYNN which displays a contact address that is the same as that of Complainant and information about legal services.
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."
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(e), 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 (Nat. Arb. 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.”).
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.
Complainant contends that it does not own a trademark registration for either the CRAMER ROSENTHAL MCGLYNN or CRM marks. However, Complainant argues that it does not need to own a trademark registration where it can establish common law rights in its marks. The Panel agrees and finds that previous panels have determined that a trademark registration is unnecessary where the respective complainant can establish common law rights in its mark under Policy ¶ 4(a)(i). See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
Complainant argues and submits evidence to show that it has developed extensive common law rights in its CRM mark under Policy ¶ 4(a)(i). Complainant argues that its investment firm began to operate in 1973 and has since grown into a major investment firm with over $11 billion in assets currently being managed. Further, Complainant notes that it has been doing business continuously and extensively since 1973 and that it has developed consumer recognition and good will in its marks through advertising and promoting its business in the public. Complainant argues that it has developed its business and advertised under both its full name of CRAMER ROSENTHAL MCGLYNN and the acronym CRM. Complainant submits evidence to show that searches conducted through third-party <google.com> returned almost 2,000 results, and other news database searches through third-party <lexisnexis.com> yielded over 130 articles that directly cite to Complainant and the acronym CRM. Therefore, the Panel finds that Complainant has submitted sufficient evidence to show that it has common law rights in its CRM mark under Policy ¶ 4(a)(i) through its continuous use and promotion of the mark since 1973. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Ass’n of Tex. Prof’l Educators, Inc. v. Salvia Corp., FA 685104 (Nat. Arb. Forum May 31, 2006) (holding that the complainant had demonstrated common law rights in the ATPE mark through continuous use of the mark in connection with educational services for over twenty-five years).
Complainant further argues that the <crm-law.org> domain name is confusingly similar to its CRM mark. Complainant notes that the CRM mark is the acronym for its CRAMER ROSENTHAL MCGLYNN company name and mark. Complainant goes on to argue that simply adding a hyphen and the generic term “law” and the generic top-level domain (“gTLD”) “.org” are not sufficient to distinguish the domain name from its mark. The Panel agrees and finds that Respondent’s <crm-law.org> domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant maintains that Respondent does not have rights and legitimate interests in the <crm-law.org> domain name. Complainant is required to make a prima facie case in support of these allegations. Once Complainant has produced a prima facie case the burden of proof shifts to Respondent to show that it has rights or legitimate interests in the disputed domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”). The Panel finds that the Complainant has produced a prima facie case. Due to the Respondent’s failure to respond to these proceedings, the Panel may assume Respondent does not have any rights or legitimate interests in the disputed domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond). The Panel, however, will examine the record to determine whether Respondent possesses rights or legitimate interests in the <crm-law.org> domain name pursuant to Policy ¶ 4(c).
Complainant asserts that it has not granted Respondent permission to use its CRM mark, and that Respondent is not commonly known as the <crm-law.org> domain name. Further, Complainant contends that Respondent does not actually conduct business under the names CRAMER ROSENTHAL MCGLYNN, CRM or <crm-law.org>. The WHOIS information list the registrant as “Bratu Stefan,” which does not indicate that Respondent is commonly known by the disputed domain name. Respondent has not produced any evidence to show that it is commonly known by the disputed domain name. Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name).
Complainant argues that Respondent’s disputed domain name resolves to a website that purports to be for a law firm known as Cramer Rosenthal McGlynn, which Complainant argues is completely false. First, Complainant notes that the physical address for the purported law firm in New York on Respondent’s website is the same address that Complainant’s offices are located at. Second, Complainant conducted online searches for both the phone number and business name listed and could find no such number and no such law firm. Further, Complainant argues that the content available on Respondent’s website has simply been copied from third-party law firms such as, Seyfarth Shaw, Holland and Knight and Searcy Denney Scarola Barnhard and Shipley. Therefore, Complainant concludes that although Respondent’s website appears to give information on a law firm all of the representations are false and Respondent is not using the disputed domain name for a bona fide offering of goods or services. The Panel finds that Respondent’s use of the disputed domain name to resolve to a website that purports to offer legal services that appears to be fake is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)); see also State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (“The unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services.”).
Complainant further asserts that Respondent is using the disputed domain name to confuse Internet users into believing that Complainant is operating the resolving website in order to acquire the personal information of Internet users. Complainant contends that Respondent’s use of Complainant’s business name and marks to promote fictitious legal services constitutes passing off as Complainant. Complainant also notes that the resolving website of Respondent contains a “contact us” hyperlink that encourages Internet users to divulge personal information so Respondent can fraudulently acquire Internet users’ personal information. The Panel finds that Respondent’s use of the disputed domain name to display Complainant’s marks and business information throughout the resolving website, as well as providing a link that asks Internet users for personal information is further evidence that Respondent lacks rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii). See Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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 also HOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004) (finding that a domain name that “is confusingly similar to Complainant’s mark, redirects Internet users to a website that imitates Complainant’s website, and is used to acquire personal information from Complainant’s potential associates fraudulently” does not fall within the parameters of Policy ¶¶ 4(c)(i) or (iii)).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that it may consider the totality of the circumstances when conducting a Policy ¶ 4(a)(iii) analysis, and that the review is not limited to the enumerated factors in Policy ¶ 4(b) but to the totality of the circumstances. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (“The requirement in the ICANN Policy that a complainant prove that domain names are being used in bad faith does not require that it prove in every instance that a respondent is taking positive action. Use in bad faith can be inferred from the totality of the circumstances even when the registrant has done nothing more than register the names.”).
Complainant contends that Respondent is using the disputed domain name to provide information about a non-existent and fictitious law firm bearing Complainant’s company name and address. Complainant has submitted information to show that Respondent’s website contains links that allow Internet users to contact Respondent’s fake business by giving Respondent personal and identifying information. Complainant argues that Respondent is using the domain name in order to acquire and use Internet users’ personal information in a phishing scheme, and that such evidence indicates Respondent’s bad faith registration and use of the domain name. The Panel agrees and finds that Respondent’s use of the disputed domain name to acquire personal information from Internet users is evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (“The domain name <billing-juno.com> was registered and used in bad faith by using the name for fraudulent purposes.”); see also HOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004) (finding that the respondent registered and used the domain name in bad faith because it redirected Internet users to a website that imitated the complainant’s website and was used to fraudulently acquire personal information from the complainant’s potential associates).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <crm-law.org> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: November 24, 2010
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