Goodwin Procter LLP v. GAYLE FANDETTI
Claim Number: FA1706001738231
Complainant is Goodwin Procter LLP (“Complainant”), represented by Brenda R. Sharton, Esq. of Goodwin Procter LLP, Massachusetts, USA. Respondent is GAYLE FANDETTI (“Respondent”), Rhode Island, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <goodwinlaws.com> (‘the Domain Name’) registered with eNom, 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.
Dawn Osborne of Palmer Biggs IP as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 30, 2017; the Forum received payment on June 30, 2017.
On June 30, 2017, eNom, LLC confirmed by e-mail to the Forum that the <goodwinlaws.com> domain name is registered with eNom, LLC and that Respondent is the current registrant of the name. eNom, LLC has verified that Respondent is bound by the eNom, 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 July 5, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 25, 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@goodwinlaws.com. Also on July 5, 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 27, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs IP 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
The Complainant's contentions can be summarized as follows:
The Complainant is the owner of the trade mark GOODWIN PROCTER registered in the USA where the Respondent is based since 2003 for legal services and used for over 100 years. The Complainant owns the Domain Name goodwinlaw.com.
The Domain Name registered in 2017 is identical to the Complainant’s domain name save for an additional ‘s’. A slight change to a domain name that remains visually similar to a Complainant’s trade mark is insufficient to avoid similarity.
Respondent has no legitimate rights to use the Domain Name. Respondent has never been commonly known by the Domain Name and has no permission from the Complainant.
Respondent has used the name to pass themselves off as an employee of the Complainant in an attempt to commit fraud by redirecting a legitimate wire of funds.
This is not legitimate non commercial fair use. Illegal use cannot be bona fide commercial use.
Bad faith is clearly demonstrated where a party uses a domain to impersonate others. Further, Respondent is causing confusion on the Internet by misuse of the Complainant’s mark
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the trade mark GOODWIN PROCTER registered in the USA where the Respondent is based since 2003 for legal services and has provided evidence that it was the owner of the goodwill in that name and its shortened version GOODWIN prior to the registration of the Domain Name.
The Domain Name registered in 2017 has been used to try to misdirect funds in a fraudulent manner.
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 Domain Name consists of a sign confusingly similar to the Complainant’s unregistered GOODWIN mark, the word law, the letter ‘s’ and the gTLD.com. Panels have found that adding one letter to the end of the mark of the Complainant does not distinguish a domain name from that mark. See PathAdvantage Associated v VistaPrint Technologies Ltd, FA 1625731 (FORUM July 23, 2015)(holding that the pathadvantages.com domain name was confusingly similar to the PATHADVANTAGE trade mark merely adding the letter ‘s’.). Adding the word ‘law’ does not distinguish the Domain Name from the Complainant’s trade mark as it is a generic description of the field in which the Complainant operates.
The gTLD .com does not serve to distinguish the Domain Name from the GOODWIN mark, which is the distinctive component of the Domain Name. See Red Hat Inc v Haecke FA 726010 (Nat Arb Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Name is confusingly similar for the purpose to a mark in which the Complainant has rights.
Rights or Legitimate Interests
The Complainant has not authorised the use of its mark. The Respondent has not answered this Complaint and there is no evidence or reason to suggest the Respondent is, in fact. commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
Further the Domain Name has been used in an attempted fraud. As such it cannot have been registered for a legitimate purpose.
As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
The Respondent has not answered this Complaint or explained why it should be allowed to register a domain name containing the Complainant’s mark in what appears on the face of it to be a typosquatting registration mimicking the Complainant’s official site.
Typosquatting itself is evidence of relevant bad faith registration and use. See Diners Club int'l Ltd. v Domain Admin ****** It's all in the name ******, FA 156839 (Nat. Arb. Forum June 23, 2003) (registering a domain name which entirely incorporates a mark with additional letter(s) is registration and use in bad faith). Further, the fact that the Domain Name has been used to attempt to misdirect funds in an e mail for an illegal and fraudulent purpose underlines the bad faith in this case. It is also clearly an attempt to cause confusion on the Internet and, therefore also would constitute bad faith under Para 4 (b)(iv) of the Policy.
As such, the Panel holds that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <goodwinlaws.com> domain name be TRANSFERRED from Respondent to Complainant.
Dated: August 8, 2017
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