Williams Mullen Clark & Dobbins, P.C. v. UCY KAY
Claim Number: FA1409001582403
Complainant is Williams Mullen Clark & Dobbins, P.C. (“Complainant”), represented by Neil C. Magnuson of Williams Mullen Clark & Dobbins, P.C., North Carolina, USA. Respondent is UCY KAY (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <williamsmullenlaw.com>, registered with Enom, Inc.
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 A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 29, 2014; the National Arbitration Forum received payment on September 29, 2014.
On October 3, 2014, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <williamsmullenlaw.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 October 3, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 23, 2014 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@williamsmullenlaw.com. Also on October 3, 2014, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 30, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 <williamsmullenlaw.com> domain name, the domain name at issue, is confusingly similar to Complainant’s WILLIAMS MULLEN mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant uses WILLIAMS MULLEN to identify its law firm in its trade of law practice. Complainant has used the mark since 1909 and has registered the mark with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,652,705, registered Nov. 19, 2002). Respondent’s <williamsmullenlaw.com> domain name adds the irrelevant generic top-level domain (“gTLD”) “.com” and the descriptive term “law” to Complainant’s mark.
Respondent has no rights or legitimate interests in the <williamsmullenlaw.com> domain name. First, Respondent has never been commonly known as the <williamsmullenlaw.com> domain name. As to the use of the <williamsmullenlaw.com> domain name, the website itself is inactive whilst Respondent uses the <williamsmullenlaw.com> domain name to host e-mail accounts in a phishing scam where false job offers are made.
Respondent registered and is using the <williamsmullenlaw.com> domain name in bad faith. Respondent’s decision to send out e-mails purporting to be from Complainant shows that Respondent wants to capitalize on the likelihood of confusion.
Respondent did not submit a response. The <williamsmullenlaw.com> domain name was registered July 29, 2014.
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(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.”).
Complainant uses WILLIAMS MULLEN to identify its law firm in its trade of law practice. Complainant has used the mark since 1909 and has registered the mark with the USPTO (e.g., Reg. No. 2,652,705, registered Nov. 19, 2002). This Panel may find the USPTO registration as satisfactory evidence of Complainant’s Policy ¶ 4(a)(i) rights in the WILLIAMS MULLEN mark for legal services and law practice. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
Respondent’s <williamsmullenlaw.com> domain name adds the irrelevant gTLD “.com” and the descriptive term “law” to Complainant’s mark in forming the domain name. Neither a deletion of spacing nor the addition of a gTLD such as “.com” provide any uniqueness to the domain name. See HomeVestors of Am., Inc. v. Sean Terry, FA 1523266 (Nat. Arb. Forum Nov. 11, 2013) (“[T]he Panel notes that panels have previously held that a domain name’s elimination of spaces found in the complainant’s mark and addition of a gTLD such as “.com” do not sufficiently differentiate the domain name from the complainant’s mark for the purposes of a confusing similarity analysis under Policy ¶ 4(a)(i).”). Adding the descriptive term “law” to the domain name does little other than enhance the confusing similarity between the domain name and the WILLIAMS MULLEN mark—a mark used to provide legal and law-related services. See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business).
The Panel finds that Policy ¶ 4(a)(i) has been established.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name 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 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. 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.”).
Respondent has never been commonly known by the <williamsmullenlaw.com> domain name. “Ucy Kay” is listed as registrant of record for the disputed domain name. Respondent is simply not commonly known by this disputed domain name under Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant notes that, as to the use of the <williamsmullenlaw.com> domain name, the website itself is inactive whilst Respondent uses the <williamsmullenlaw.com> domain name to host e-mail accounts in a phishing scam where false job offers are made. Respondent or its agent appears to send e-mails through the domain name that suggest job offers are available if the recipient provides Respondent with given information. Using a domain name to phish for personal information via fraudulent job offers is proof that no bona fide offering, or legitimate noncommercial or fair use is in store for this domain name pursuant to Policy ¶¶ 4(c)(i), (iii). See Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Nat. Arb. Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent’s decision to send out e-mails purporting to be from Complainant shows that Respondent wants to capitalize on the likelihood of confusion as to the <williamsmullenlaw.com> domain name. The Panel agrees that the scope of this phishing scheme is as such as to reflect Policy ¶ 4(b)(iv) bad faith on part of Respondent because Internet users could easily believe they are handing their valuable personal information to a trusted confidant of Complainant—not an unauthorized third party. See, e.g., Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (determining that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name); Carey Int’l, Inc. v. Kogan, FA 486191 (Nat. Arb. Forum July 29, 2005) (“[T]he Panel finds that Respondent is capitalizing on the confusing similarity of its domain names to benefit from the valuable goodwill that Complainant has established in its marks. Consequently, it is found that Respondent registered and used the domain names in bad faith under Policy ¶ 4(b)(iv).”).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <williamsmullenlaw.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: November 9, 2014
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