Alston & Bird LLP v. lagrene jean philippe
Claim Number: FA1603001666513
Complainant is Alston & Bird LLP (“Complainant”), represented by Sam Gunn of Alston & Bird, LLP, Georgia, USA. Respondent is lagrene jean philippe (“Respondent”), Israel.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <alston-ny.com>, registered with Ligne Web Services SARL.
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 18, 2016; the Forum received payment on March 18, 2016.
On March 21, 2016, Ligne Web Services SARL confirmed by e-mail to the Forum that the <alston-ny.com> domain name is/are registered with Ligne Web Services SARL and that Respondent is the current registrant of the name. Ligne Web Services SARL has verified that Respondent is bound by the Ligne Web Services SARL 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 22, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 11, 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@alston-ny.com. Also on March 22, 2016, the Written Notice of the Complaint in both English and French, 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 13, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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
Complainant states that it is a well-known a law firm founded in 1893 with offices throughout the world. Complainant’s rights in the ALSTON mark are based on registration of the mark in the United States in 2010.
According to Complainant, the disputed domain name is confusingly similar to the ALSTON mark as the domain includes the entire mark and merely adds the generic top-level domain (“gTLD”) “.com,” a hyphen, and the geographic acronym “ny.” Complainant cites UDRP precedents to support its position.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not been commonly known by the disputed domain name. Further, Respondent’s use of the disputed domain name, to attempt to receive payment based on fictitious invoices sent by E-Mail while posing as an employee of Complainant, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent has registered and is using the disputed domain name domain in bad faith. Respondent’s bad faith is demonstrated by the Respondent’s use of the disputed domain name to fraudulently elicit payment while posing as an employee of Complainant. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns rights in the mark ALSTON dating back to 2010.
The disputed domain name was registered in 2016.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
Respondent has used the disputed domain name to attempt to receive payment based on fictitious invoices sent by E-Mail while posing as an employee of Complainant.
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.”).
Before considering the three elements of the Policy, the Panel must rule on the language of the proceedings.
Complainant requests that this administrative proceeding proceed in the English language pursuant to UDRP Rule 11(a). Complainant makes this request in light of the French language Registration Agreement. Complainant argues that Respondent’s use of the English language in E-Mails sent using the disputed domain name indicates an understanding of the language. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Factors which previous panels have seen as relevant include evidence of Respondent’s understanding of the language of the Complaint. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language). Further, the Panel may weigh the relative time and expense in enforcing the French language agreement, which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”).
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant that Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceeding shall be in English.
Complainant has rights in the mark ALSTON, dating back to 2010. The disputed domain differs from the mark through the addition of the gTLD “.com,” a hyphen, and the geographic acronym “ny.” Panels have held that adding the gTLD “.com,” a hyphen, and a geographic acronym did not differentiate a domain from a mark. See Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (finding that the respondent’s <hess-uk.com> domain name was confusingly similar to the complainant’s HESS mark, as the mere addition of “uk” and a hyphen failed to sufficiently differentiate the disputed domain name from the registered mark). Consequently the Panel finds that Respondent’s domain is confusingly similar to the ALSTON mark under Policy ¶ 4(a)(i).
The WHOIS information identifies Respondent as “lagrene jean phillippe.” Panels have held that a respondent is not commonly known by a disputed domain based on WHOIS information. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name). The Panel holds that Respondent is not commonly known by the disputed domain under policy ¶ 4(c)(ii).
Respondent has used the disputed domain name to send E-Mails in an effort to pass off as an employee of Complainant and fraudulently profit from the deception. In similar circumstances panels have found that similar uses are not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Lockheed Martin Corporation v. OFFICE ROLLS, FA1651015 (Nat. Arb. Forum Dec. 30, 2015) (finding that Respondent lacked rights or legitimate interests in a domain name whose “sole use has been in connection with a fraudulent scheme aimed at Complainant's vendors”); Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .”). Accordingly, this Panel finds that Respondent has not used the domain within the parameters of Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
Further, where a party has registered and used a domain name in bad faith (see the discussion below), that party cannot be found to have made a bona fide offering of goods or services, see The PNC Financial Services Group, Inc. and PNC Bank, N.A. v. Azra Khan, WIPO Case No. D2002-0701; see also AltaVista Company v. Saeid Yomtobian, WIPO Case No. D2000 0937.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
As noted above, Respondent has used the disputed domain name in a fraudulent attempt to receive money through posing as one of Complainant’s employees. Respondent, using an E-Mail associated with the disputed domain, sent E-Mails with an invoice of $477,000 to Permobil, a wheelchair company. Panels have found bad faith where a respondent deliberately attempted to pass itself off as a complainant as a means to fraudulently benefit from unknowing third-parties. 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)). Thus, the Panel finds that Respondent acted in bad faith under 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 <alston-ny.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: April 15, 2016
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