Rochon Genova LLP & Class Holdings Inc. v. ALLAN HUTCHINSON
Claim Number: FA1707001741695
Complainant is Rochon Genova LLP & Class Holdings Inc. (“Complainant”), represented by Joel Rochon, Canada. Respondent is ALLAN HUTCHINSON[1] (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rochongenovallp.com>, registered with eNom, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 26, 2017; the Forum received payment on July 26, 2017.
On July 27, 2017, eNom, LLC confirmed by e-mail to the Forum that the <rochongenovallp.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 31, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 21, 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@rochongenovallp.com. Also on July 31, 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 August 25, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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
1. Complainant is a law firm, and Complainant’s mark represents the legal surnames of the two founding partners of the law firm. Complainant owns common-law rights in the mark based on the continued and extensive use of the ROCHON GENOVA LLP mark in commerce for eighteen years. Complainant has generated considerable goodwill and reputation in the mark.
2. Respondent’s <rochongenovallp.com>[2] domain name is confusingly similar to Complainant’s domain name, <rochongenova.com>, by merely adding another term from Complainant’s mark, “llp.”
3. Respondent should be considered as having no rights or legitimate interest in the <rochongenovallp.com> domain name. Respondent uses the domain name as part of an email address, which it uses to fraudulently email individuals to provide false electronic contracts. In its fraudulent emails, Respondent passes off as one of Complainant’s attorneys who works as Of Counsel at the firm, and includes a copy of Complainant’s logo.
4. Respondent registered and uses the <rochongenovallp.com> domain name in bad faith. Respondent tarnishes the name of Complainant in a fraudulent scheme incorporating Complainant’s logos in emailing employment contracts to individuals. Further, Respondent must have registered the domain name with full knowledge of Complainant’s use of its trademarks and the reputation of its lawyer, Allan Hutchinson, because Respondent misrepresents itself as if it were Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds common law rights for the ROCHON GENOVA LLP mark. Respondent’s domain name is confusingly similar to Complainant’s ROCHON GENOVA LLP mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <rochongenovallp.com> domain name and that Respondent registered and uses the 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 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.”).
Complainant holds common law rights in the ROCHON GENOVA LLP mark. Common law rights are typically found through a showing that a secondary meaning in the mark has been created in the minds of the public. See AOL LLC v. DiMarco, FA 1275978 (Forum Sept. 9, 2009) (“‘Secondary meaning’ is acquired when ‘in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product rather than the product itself.’”). Traditionally, a complainant can establish a secondary meaning by providing evidence of the complainant’s sales figures, expenditures, and any other evidence indicating popularity in the mark as related to complainant. See Gourmet Depot v. DI S.A., FA 1378760 (Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”). Complainant has provided such evidence.
Complainant next has shown that Respondent’s <rochongenovallp.com> domain name is identical to Complainant’s ROCHON GENOVA LLP mark, merely removing the spaces and adding the gTLD. Similar changes to a mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.). The Panel also finds that the addition of generic top-level domains is irrelevant in the identical or confusingly similar analysis. See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel therefore finds that the <rochongenovallp.com> domain name is identical to the ROCHON GENOVA LLP mark under Policy ¶4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <rochongenovallp.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
The record reflects that Respondent is not commonly known by the domain name. There is no evidence that Complainant has authorized Respondent to use the ROCHON GENOVA LLP mark in any regard, nor is Respondent affiliated with Complainant. A respondent is not commonly known by a domain name where there is no evidence in the record suggesting that the respondent is commonly known by the domain name or affiliated with the complainant. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006). Therefore, the Panel determines that Respondent is not commonly known by the <rochongenovallp.com> domain name.
Complainant argues that Respondent fails to use the <rochongenovallp.com> domain for any bona fide offering of goods or services or legitimate noncommercial or fair use as it attempts to “phish” for information from consumers via email. The use of a domain name to fraudulently obtain information from Internet users is not a bona fide offering of goods or services or legitimate noncommercial or fair use. See Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also Mortgage Research Center LLC v. Miranda, FA 993017 (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).”).
The record shows that Respondent uses the domain name as part of an email address, which it uses to email individuals to provide purported electronic contracts. In its emails, Respondent passes off as one of Complainant’s attorneys, Allan Hutchinson, who works as Of Counsel at the firm, and includes a copy of Complainant’s logo. Passing off as a complainant can also show a lack of rights and legitimate interests under Policy ¶¶ 4(c)(i) & (iii). See Crow v. LOVEARTH.net, FA 203208 (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 . . . .”). The Panel therefore finds that Respondent has failed to provide a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered the <rochongenovallp.com> domain name in bad faith. Complainant claims that Respondent tarnishes the name of Complainant in a fraudulent scheme incorporating Complainant’s logos in emailing employment contracts to individuals. Disrupting a business by passing off as a complainant and engaging in fraudulent phishing behavior can show bad faith under the Policy. See Qatalyst Partners LP v. Devimore, FA 1393436 (Forum July 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use); see also Zoetis Inc. and Zoetis Services LLC v. VistaPrint Technologies Ltd, FA1506001623601 (Forum July 14, 2015) (“Respondent’s attempt to use the <zoietis.com> domain name to phish for personal information in fraudulent emails also constitutes bad faith pursuant to Policy ¶ 4(a)(iii).”). As evidence, Complainant has provided emails of individuals who contacted Complainant after receiving the fraudulent communications from Respondent. Accordingly, the Panel finds that Respondent registered and uses the <rochongenovallp.com> domain name in bad faith per Policy ¶ 4(b)(iii) and Policy ¶ 4(a)(iii).
Complainant lastly claims that Respondent had actual knowledge of Complainant’s ROCHA GENOVA LLC mark. Proof of actual knowledge shows bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). It is apparent that Respondent must have registered the domain name with full knowledge of Complainant’s mark because Respondent misrepresents itself as if it were the Complainant. Thus, the Panel finds bad faith under Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied 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 <rochongenovallp.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: September 11, 2017
[1] The Respondent has falsely used the name Allan Hutchinson to register the domain name. Allan Hutchinson is an attorney with Complainant’s law firm Rochon Genova LLP. Respondent uses Allan Hutchinson’s name to seek personal information from prospective clients of Rochon Genova LLP. See below.
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