Linklaters v. Web Solutions Inc. / Linklaters
Claim Number: FA1704001729123
Complainant is Linklaters (“Complainant”), represented by Ian Karet of Linklaters, United Kingdom. Respondent is Web Solutions Inc. / Linklaters (“Respondent”), Minnesota, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <linklaters.us>, registered with GoDaddy.com, LLC.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 27, 2017; the Forum received payment on April 27, 2017.
On April 28, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <linklaters.us> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On May 2, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 22, 2017 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@linklaters.us. Also on May 2, 2017, 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 May 30, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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 to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD 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
i) Complainant, Linklaters, is a provider of legal services based in the United Kingdom. In connection with this business, Complainant uses the LINKLATERS mark to promote its goods and services. Complainant has rights in the mark based upon its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,633,820, registered Oct. 15, 2002). Respondent’s domain name, <linklaters.us>, is identical to Complainant’s mark as it contains the mark in its entirety and appends the country code top-level domain (“ccTLD”) “.us.”
ii) Respondent lacks rights and legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name nor has Complainant authorized Respondent to register a domain name containing its mark. Respondent has failed to use <linklaters.us> in connection with a bona fide offering of goods and services, or for a legitimate noncommercial or fair use; instead, the dispute domain name resolves to Complainant’s website and is used to pass off as Complainant and send fraudulent emails for Respondent’s gain.
iii) Respondent registered or used <linklaters.us> in bad faith. Respondent uses the disputed domain name to pass off as Complainant and send fraudulent emails to clients of Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding. The Panel notes that <linklaters.us> was registered November 1, 2016.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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 (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 asserts rights in the LINKLATERS mark based upon its registration with the USPTO (Reg. No. 2,633,820, registered Oct. 15, 2002). Registration of a mark with the USPTO is sufficient to establish rights in the mark per Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). The Panel therefore finds Complainant has rights in the LINKLATERS mark under Policy ¶ 4(a)(i).
Next, Complainant argues Respondent’s domain name, <linklaters.us>, is identical to Complainant’s mark as it contains the mark in its entirety and appends the ccTLD “.us” to make it resolve. The addition of a ccTLD to a complainant’s mark is insufficient to differentiate between the mark and the resulting domain name. See MIGROS-GENOSSENSCHAFTS-BUND v. Tayfun yalcin, FA 1621184 (Forum July 8, 2015) (“In light of the fact that Respondent’s disputed domain name incorporates Complainant’s whole mark and merely adds the ccTLD “.us,” the Panel here finds that the disputed domain name is identical to Complainant’s MIGROS mark.”). The Panel therefore finds Respondent’s domain name to be identical to Complainant’s LINKLATERS mark per Policy ¶ 4(a)(i).
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 (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 (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 fails to make a Policy ¶ 4(c)(i) argument. Respondent failed to submit a Response. In lieu of a Response to the contrary, the Panel finds that Respondent does not own marks identical to the <linklaters.us> domain name. See BONA AB v. BN, FA1505001618833 (Forum June 19, 2015) (“The Panel notes that Respondent has failed to submit evidence to suggest ownership. Therefore, the Panel finds that Respondent does not own any marks identical to the <bona.us> domain name under Policy ¶ 4(c)(i).”).
Complainant argues Respondent is not commonly known by <linklaters.us>, nor has Complainant authorized Respondent to register a domain name reflecting Complainant’s mark. In lieu of a Response, WHOIS information can support a finding that a respondent has not been commonly known by a disputed domain name. See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response); see also Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(iii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The WHOIS information of record names the registrant as “Pearson.” The Panel therefore finds Respondent has not been commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(iii).
Next, Complainant argues Respondent failed to use <linklaters.us> in connection with a bona fide offering of goods and services, or for a legitimate noncommercial or fair use; instead, the disputed domain name resolves to Complainant’s website and is used to pass off as Complainant and send fraudulent emails for Respondent’s gain. Use of an identical domain name to pass off as a complainant and to pass through to said complainant’s website is not a use indicative of rights and legitimate interests per Policy ¶¶ 4(c)(ii) & (iv). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the at-issue domain name to pose as Complainant’s CEO by means of email addresses at the confusingly similar domain name in an attempt to determine Complainant’s ability to process a transfer. Using the domain name in this manner is neither a bona fide offering of goods and services under Policy ¶ 4(c)(ii), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv)”); see also Direct Line Ins. plc v. Low-cost-domain, FA 1337658 (Forum Sept. 8, 2010) (“The Panel finds that using Complainant’s mark in a domain name over which Complainant has no control, even if the domain name redirects to Complainant’s actual site, is not consistent with the requirements of Policy ¶ 4(c)(ii) or ¶ 4(c)(iv) . . .”). The Panel therefore finds Respondent lacks rights and legitimate interests in the disputed domain name.
Complainant contends Respondent registered and used <linklaters.us> in bad faith through Respondent’s passing off as Complainant and sending of fraudulent emails. Use of an identical domain name to pass off as a complainant and send fraudulent emails is indicative of bad faith pursuant to Policy ¶ 4(b)(iii). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the <abbuie.com> domain name to impersonate Complainant’s CEO. Such use is undeniably disruptive to Complainant’s business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii), and/or Policy ¶ 4(b)(iv)). The Panel therefore finds Respondent acted in bad faith per Policy ¶ 4(b)(iii).
Last, Complainant contends that the disputed domain name redirects to Complainant’s website. Use of an identical domain name to redirect to a complainant’s site is indicative of bad faith use per Policy ¶ 4(a)(iii). See Verizon Trademark Servs. LLC v. Boyiko, FA 1382148 (Forum May 12, 2011) (“The Panel finds that Respondent’s registration and use of the confusingly similar disputed domain name, even where it resolves to Complainant’s own site, is still registration and use in bad faith pursuant to Policy ¶ 4(a)(iii).”). As such, the Panel finds that Respondent acted in bad faith per Policy ¶ 4(a)(iii).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <linklaters.us> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: June 5, 2017
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