Gordon & Rees LLP v. Peter Smith
Claim Number: FA1505001618345
Complainant is Gordon & Rees LLP (“Complainant”), represented by Richard Sybert of Gordon & Rees LLP, California, USA. Respondent is Peter Smith (“Respondent”), Isle of Man.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <gordonrees.lawyer> and <gordonrees.attorney>, registered with Godaddy.Com, Llc.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 7, 2015; the Forum received payment on May 7, 2015.
On May 7, 2015, Godaddy.Com, Llc confirmed by e-mail to the Forum that the <gordonrees.lawyer> and <gordonrees.attorney> 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 May 14, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 3, 2015 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@gordonrees.lawyer, postmaster@gordonrees.attorney. Also on May 14, 2015, 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 June 10, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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(s) be transferred from Respondent to Complainant.
A. Complainant
1. Respondent’s <gordonrees.lawyer> and <gordonrees.attorney> domain names are confusingly similar to Complainant’s GORDON & REES mark.
2. Respondent does not have any rights or legitimate interests in the <gordonrees.lawyer> and <gordonrees.attorney> domain names.
3. Respondent registered and uses the <gordonrees.lawyer> and <gordonrees.attorney> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
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 does not hold a registration of its GORDON & REES mark through a trademark authority, such as the U.S. Patent and Trademark Office. However, Policy ¶ 4(a)(i) does not require registration with a trademark agency if Complainant can demonstrate common law rights. See 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).
In order to have common law rights, Complainant must show that the GORDON & REES mark has secondary meaning in the eyes of the public. Relevant evidence of secondary meaning includes sales, advertising, and consumer and media recognition. See Gourmet Depot v. DI S.A., FA 1378760 (Nat. Arb. Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”). Complainant has provided evidence of its first use of the GORDON & REES mark for the purpose of practicing law beginning in September 1974. Complainant has also provided evidence of media and consumer recognition, and business filings in several states in the United States. The Panel finds that Complainant’s evidence is sufficient to establish secondary meaning, and thus Complainant holds common law rights in the GORDON & REES mark pursuant to Policy ¶ 4(a)(i).
Respondent’s <gordonrees.lawyer> and <gordonrees.attorney> domain names contain Complainant’s GORDON & REES mark and simply remove the ampersand and add the descriptive top-level domains “.lawyer” and “.attorney.” Past panels have found that TLDs are irrelevant for Policy ¶ 4(a)(i) analysis. See 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.”). Previous panels have also found that the use of a descriptive TLD that relates to the mark in question creates confusing similarity. See DD IP Holder LLC v Manpreet Badhwar, FA 1562029 (Nat. Arb. Forum July 14, 2014) (“because there is a reference to food and restaurants inherent in the new gTLD ‘.menu’, the combination of the ‘dunkin’ element with the ‘.menu’ gTLD extension adds further to the confusing character of the domain in issue in the present case.”). Past panels also routinely find that the deletion of an ampersand in a mark is irrelevant because the symbol cannot be used in a domain name. See PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000) (noting that PG&E’s home web page is found at <pge.com> because the ampersand symbol is not reproducible in a domain name). Accordingly, the Panel finds that Respondent’s <gordonrees.lawyer> and <gordonrees.attorney> domain names are confusingly similar to Complainant’s GORDON & REES mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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.”).
Complainant alleges that Respondent is not commonly known by the disputed domain names. The WHOIS information lists “Peter Smith” as the registrant of the <gordonrees.lawyer> and <gordonrees.attorney> domain names. Complainant states that Respondent is not authorized to use Complainant’s mark. Respondent has not submitted any evidence to indicate being commonly known by the disputed domain names. Past panels have found that a lack of evidence from a respondent demonstrates that the respondent is not commonly known by the domain name pursuant to ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Accordingly, the Panel finds that Respondent is not commonly known by the <gordonrees.lawyer> and <gordonrees.attorney> domain names under ¶ 4(c)(ii).
Complainant alleges that Respondent does not use the disputed domain names to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use, because Respondent fails to actively use the domain names. Complainant argues that Respondent is making no use of the domains except to hold them and wait for Complainant to purchase them from Respondent. Past panels have agreed that respondents lack rights or legitimate interests when holding domain names that are confusingly similar to a complainant’s mark without demonstrating preparation to use the domains. See Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Apr. 12, 2007) (finding that the respondent lacked rights or legitimate interests in a confusingly similar domain name that it had not made demonstrable preparations to use since its registration seven months prior to the complaint). Thus, the Panel finds that Respondent fails to use the disputed domain names to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
Complainant also argues that Respondent lacks rights and legitimate interests in the disputed domain names, because Respondent has acquired the disputed domain names with the intent to sell them to Complainant for profit. The Panel notes Respondent’s offer to sell the disputed domain names to Complainant for $1000. Past panels have found that an attempt to sell a domain name for a cost above out-of-pocket expense is evidence of a lack of rights and legitimate interest in that domain name under Policy ¶ 4(a)(ii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (holding that where a respondent makes a “disproportionate” offer to sell its domain name registration to the complainant for more than its out-of-pocket registration costs, there is additional evidence that the respondent lacks rights and legitimate interests in the disputed domain name). Accordingly, the Panel finds that Respondent’s offer to sell the disputed domain names further demonstrates Respondent’s lack of rights and legitimate interests.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant alleges that Respondent acquired the disputed domain names for the purpose of selling them to Complainant, and has provided evidence of Respondent’s offer to sell the disputed domain names. Past panels have found bad faith registration and use under Policy ¶ 4(b)(i) when a respondent makes an unsolicited offer to sell a disputed domain name to the complainant for more than the initial costs of registration. See VARTEC TELECOM, INC. v. Olenbush, D2000-1092 (WIPO Sept. 28, 2000) (finding bad faith registration where the respondent registered the domain in order to sell it “for far more than he paid for it” by sending a general email to the complainant offering the domain name for sale). Complainant specifically contends that Respondent suggested that the cost to purchase the disputed domain names from him would be less than the cost to have the domains transferred through legal proceedings. Past panels have found such behavior to constitute bad faith registration and use. See Prudential Ins. Co. of Am. v. TPB Fin., FA 105218 (Nat. Arb. Forum Apr. 8, 2002) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(i) where the respondent offered to sell the domain name for $900, specifically noting that it would cost the complainant more to enforce its rights legally than to succumb to the respondent's attempted extortion). Accordingly, the Panel finds that Respondent’s attempt to sell the disputed domain names constitute evidence of Respondent’s bad faith in registration and use of the domain names under Policy ¶ 4(b)(i).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(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 <gordonrees.lawyer> and <gordonrees.attorney> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: June 14, 2015
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