Dorsey & Whitney LLP v. Emily Craft / Melrose LLC
Claim Number: FA1603001664895
Complainant is Dorsey & Whitney LLP (“Complainant”), represented by Jeffrey R. Cadwell of Dorsey & Whitney LLP, Minnesota, USA. Respondent is Emily Craft / Melrose LLC (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dorrsey.com>, registered with 1&1 Internet SE.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 10, 2016; the Forum received payment on March 10, 2016.
On March 14, 2016, 1&1 Internet SE confirmed by e-mail to the Forum that the <dorrsey.com> domain name is registered with 1&1 Internet SE and that Respondent is the current registrant of the name. 1&1 Internet SE has verified that Respondent is bound by the 1&1 Internet SE 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 March 14, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 4, 2016 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@dorrsey.com. Also on March 14, 2016, 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 April 6, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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
Policy ¶ 4(a)(i)
Complainant has rights in the DORSEY mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,922,918, registered February 1, 2005). Respondent’s <dorrsey.com> domain name is confusingly similar to the DORSEY mark because it contains the mark, along with an additional letter “r” and the generic top-level domain (“gTLD”) “.com.”
Policy ¶ 4(a)(ii)
Respondent is not commonly known by the <dorrsey.com> domain name as the available WHOIS information does not suggest such and because Respondent is not authorized by Complainant to use the DORSEY mark. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the domain is used for the purpose of hosting an e-mail address in an attempt to defraud Complainant.
Policy ¶ 4(a)(iii)
Respondent uses the <dorrsey.com> domain name in bad faith because the domain is used for the purpose of hosting an e-mail address in an attempt to defraud Complainant through attempting to pass off as an employee of Complainant. Respondent registered the <dorrsey.com> domain name in bad faith because it did so with actual or constructive knowledge of Complainant’s rights in the DORSEY mark based upon Respondent’s use of the domain and Complainant’s fame and use of the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Dorsey & Whitney LLP, is a well-known international law firm with numerous offices in the United States, Canada, Europe, and Asia. Complainant is the owner of over 20 international trademark registrations for the DORSEY and DORSEY&WHITNEY marks. Complainant has rights in the DORSEY mark through its trademark registrations. (e.g., Reg. No. 2,922,918, registered February 1, 2005 with the USPTO). Respondent’s <dorrsey.com> domain name is confusingly similar to the DORSEY mark.
Respondent, Emily Craft / Melrose LLC, registered the <dorrsey.com> domain name on March 7, 2016. Respondent is not commonly known by the <dorrsey.com> domain name. Respondent is not authorized by Complainant to use the DORSEY mark. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the domain is used for the purpose of hosting an e-mail address in an attempt to defraud Complainant.
Respondent uses the <dorrsey.com> domain name in bad faith because the domain is used for the purpose of hosting an e-mail address in an attempt to defraud Complainant through attempting to pass off as an employee of Complainant. Respondent registered the <dorrsey.com> domain name in bad faith because it did so with actual knowledge of Complainant’s rights in the DORSEY mark.
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 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 has rights in the DORSEY mark under Policy ¶ 4(a)(i) through registration with the USPTO. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (holding that a trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).
Respondent’s <dorrsey.com> domain name is confusingly similar to the DORSEY mark because it contains the mark, along with an additional letter “r” and the gTLD “.com.”
Respondent is not commonly known by the <dorrsey.com> domain name. The WHOIS information lists “Emily Craft” as Registrant. Respondent is not authorized by Complainant to use the DORSEY mark. 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).
Respondent does not use the <dorrsey.com> domain name 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), because the domain is used for the purpose of “spearfishing,” the hosting an e-mail address in an attempt to defraud Complainant. Respondent has used <dorrsey.com> to create an email address impersonating one of Complainant’s employees for the purpose of defrauding Complainant. The fraudulent email account was used to contact an employee of Complainant to request an unauthorized transfer of $184,893.33 from a client trust account. Therefore, Respondent fails to use the <dorrsey.com> domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Guaranty Bank v Regsterfly.com, FA 586864 (Nat. Arb. Forum Dec. 6, 2005) (Respondent’s attempts to pass itself off as the complainant by creating fraudulent email accounts is evidence that a respondent has no rights or legitimate interests in the disputed domain name); see also 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).”).
Respondent uses the <dorrsey.com> domain name in bad faith under Policy ¶ 4(a)(iii) because the domain is used for the purpose of “spearfishing,” the hosting an e-mail address in an attempt to defraud Complainant. See Smiths Group plc v. Snooks, FA 1372112 (Nat. Arb. Forum Mar. 18, 2011) (finding that the respondent’s attempt to impersonate an employee of the complainant was evidence of bad faith registration and use under Policy ¶ 4(a)(iii)); see also Guaranty Bank v Regsterfly.com, FA 586864 (Nat. Arb. Forum Dec. 6, 2005) (concluding that respondent’s attempts to pass itself off as the complainant by creating fraudulent email accounts is evidence that a respondent registered the disputed domain name in bad faith).
Respondent registered the <dorrsey.com> domain name in bad faith because it did so with actual knowledge of Complainant’s rights in the DORSEY mark. See Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dorrsey.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: April 20, 2016
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