Goodwin Procter LLP v. Amritpal Singh
Claim Number: FA1706001736062
Complainant is Goodwin Procter LLP (“Complainant”), represented by Brenda R. Sharton of Goodwin Procter LLP, Massachusetts, United States. Respondent is Amritpal Singh (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <goodwinlaw.org>, 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 15, 2017; the Forum received payment on June 15, 2017.
On June 18, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <goodwinlaw.org> 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 ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 19, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 10, 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@goodwinlaw.org. Also on June 19, 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 July 13, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant has used the GOODWIN mark in connection with its legal services since 1912, and has established its common law rights in the mark through continuous usage, advertisement, and domain name possession.
Complainant registered the related GOODWIN PROCTER mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,734,312, registered July 8, 2003), which demonstrates its rights in the mark.
Respondent’s <goodwinlaw.org> is confusingly similar to Complainant’s mark because it incorporates the GOODWIN mark in its entirety, adding only the generic term “law” and the generic top-level domain (“gTLD”) “.org,” neither of which meaningfully distinguishes the domain name from Complainant’s registered mark.
Respondent has no rights or legitimate interests in <goodwinlaw.org>. Respondent is not commonly known by the domain name, nor has Complainant authorized Respondent to use the GOODWIN mark for any purpose. Respondent also fails to use the disputed domain name in connection with any bona fide offering of goods or services, as the domain name resolves to a website containing only Complainant’s logo—a clear indication of Respondent’s intent to impersonate Complainant. Further, Respondent uses the domain name to conduct a phishing scheme, wherein Respondent contacts internet users via an email address hosted by the disputed domain name and attempts to procure sensitive information (which Respondent, presumably, intends to use for personal profit).
Respondent registered and continues to use <goodwinlaw.org> in bad faith. Respondent’s use of the disputed domain involves attracting Internet users to its site using Complainant’s notoriety, so that it may financially profit by way of the sensitive user information it obtains by phishing. Additionally, Respondent’s registration of the <goodwinlaw.org> domain name constitutes opportunistic bad faith, because it was done for the sole purpose of capitalizing on Complainant’s unique and distinctive mark. Finally, Respondent breached its contract with the registrar of the disputed domain name--- GoDaddy.com—by failing to acknowledge that the name infringed on the third party trademark rights of Complainant, which provides even further evidence of Respondent’s bad faith behavior concerning the <goodwinlaw.org> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has a trademark for GOODWIN.
Respondent registered the at-issue domain name subsequent to Complainant’s acquisition of rights in the GOODWIN mark.
Respondent is not authorized to use Complainant’s trademark.
Respondent uses email originating from the at-issue domain name to impersonate Complainant in furtherance of a phishing scheme.
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 (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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s demonstration of its common law trademark rights in the GOODWIN mark by showing long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning establishes Complainant’s rights in a mark under Policy ¶ 4(a)(i). See Oculus VR, LLC v. Ivan Smirnov, FA 1625898 (Forum July 27, 2015) (holding, “A Complainant does not need to hold registered trademark rights in order to have rights in a mark under Policy ¶ 4(a)(i) and it is well established that a Complainant may rely on common law or unregistered trademarks that it can make out.”).
Respondent’s <goodwinlaw.org> domain name contains Complainant’s GOODWIN mark in its entirety suffixed with the suggestive term “law.” The top level domain name “.org” is appended thereto --completing the domain name. The differences between Respondent’s domain name and Complainant’s trademark are insufficient to differentiate one from the other for the purpose of the Policy. In fact, Respondent’s use of the term “law” in the domain name is suggestive of Complainant’s law related business and thus adds to any confusion between the domain name and Complainant’s trademark. Further, the addition of the “.org” gTLD is immaterial to the Panel’s analysis. Therefore, the Panel finds that Respondent’s <goodwinlaw.org> domain name is confusingly similar to Complainant’s GOODWIN mark pursuant to Policy ¶ 4(a)(i). See Abbott Laboratories v. Miles White, FA 1646590 (Forum Dec. 10, 2015) (holding that the addition of descriptive terms, particularly terms that pertain to complainant’s business, do not adequately distinguish a disputed domain name from complainant’s mark under Policy ¶ 4(a)(i).); see also, Scott Elowitz Photography, LLC v. zhang yinfeng / Hengshui Fn Fur Trading Co., Ltd, FA 1534428 (Forum Jan. 22, 2014) (holding, “The <lenscoat.org> domain name is identical to Complainant’s LENSCOAT under Policy ¶ 4(a)(i), because the domain name fully appropriates the mark and its affixation of the gTLD “.org” is insufficient to distinguish it from the mark.”).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond and as discussed below there is no evidence supporting a finding pursuant to Policy 4(c) that Respondent has rights or interests in the at-issue domain name, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the domain name.
WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Amritpal Singh.” The record before the Panel contains no evidence that might otherwise tend to prove, contrary to the WHOIS information, that Respondent is commonly known by the at-issue domain name. The Panel therefore concludes that for the purposes of Policy ¶ 4(c)(ii) Respondent is not commonly known by the at-issue domain name. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (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).
Additionally, Respondent uses the confusingly similar domain name to support an email address originating from the <goodwinlaw.org> domain name which Respondent’s uses to perpetrate fraud. By sending email which appears to be from a domain name sponsored by Complainant, Respondent engages in a phishing scheme targeting the emails’ recipients. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Chevron Intellectual Property LLC v. Thomas Webber / Chev Ronoil Recreational Sport Limited, FA 1661076 (Forum Mar. 15, 2016) (finding that the respondent had failed to provide a bona fide offering of goods or services or any legitimate noncommercial or fair use, stating, “Respondent is using an email address to pass themselves off as an affiliate of Complainant. Complainant presents evidence showing that the email address that Respondent has created is used to solicit information and money on false pretenses. The disputed domain name is being used to cause the recipients of these emails to mistakenly believe Respondent has a connection with Complainant and is one of the Complainant’s affiliates.”); see also, Morgan Stanley v. Zhange Sheng Xu / Zhang Sheng Xu, FA1501001600534 (Forum Feb. 26, 2015) (“The Panel agrees that the respondent’s apparent phishing attempt provides further indication that the respondent lacks any rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”). Similarly, the use of the domain name to address a webpage displaying only Complainant’s logo, as does the at-issue domain name, further indicates that Respondent has made no bona fide offering of goods or services via the domain name and lacks legitimate rights or interests therein. See Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name).
Given the foregoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶ 4(a)(ii).
The at‑issue domain name was registered and is being used in bad faith. As discussed below, Policy ¶4 (b) circumstance are present as well as other circumstances which lead the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
As discussed above regarding rights and interests, Respondent’s confusingly similar domain name was registered and used to help facilitate a phishing scheme whereby targeted internet users are tricked into giving up proprietary information to Respondent. Respondent fools the recipients of email originating from its <goodwinlaw.org> domain name into believing that such email is from Complainant. Respondent’s use of the at-issue confusingly similar domain name to capitalize on Complainant’s goodwill to inappropriately extract private information from the recipients of <goodwinlaw.org> email demonstrates Respondent’s bad faith registration and use of the domain name under Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also, Metro. Life Ins. Co. v. Bonds, FA 873143 (Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”);see also, Monsanto Co. v. Decepticons, FA 101536 (Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith).
Indeed, Respondent’s phishing scheme is, in and of itself, evidence of bad faith registration and use within the meaning of Policy ¶ 4(a)(iii). See Emdeon Business Services, LLC v. HR Emdeon Careers, FA1507001629459 (Forum Aug. 14, 2015) (finding that the respondent had engaged in an email phishing scheme indicating bad faith under Policy ¶ 4(a)(iii), where respondent was using the disputed domain name to send emails to internet users and advising them that they had been selected for a job interview with the complainant and was persuading the users to disclose personal information in the process).
Lastly, given that Complainant’s GOODWIN mark is well-known and Respondent makes overt use of the <goodwinlaw.org> domain name to impersonate Complainant there can be no doubt that Respondent was well aware of Complainant’s GOODWIN mark when it registered the confusingly similar <goodwinlaw.org> domain name. Registering a domain name with knowledge of another’s rights therein is indicative of bad faith under Policy ¶4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name"). Likewise, Respondent’s use of the confusingly similar domain name to support Respondent’s email fraud is exemplary of opportunistic bad faith. See Harrods Ltd. v. Harrod’s Closet, D2001-1027 (WIPO Sept. 28, 2001) (finding that where a mark is so “obviously connected with well-known products,” its very use by someone with no connection to these products can evidence opportunistic bad faith).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <goodwinlaw.org> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: July 18, 2017
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