Goodwin Procter LLP v. ROCKY FISCHER / CARDINAL HEALTH INC
Claim Number: FA1711001760034
Complainant is Goodwin Procter LLP (“Complainant”), represented by Brenda R. Sharton of Goodwin Procter LLP, Massachusetts, USA. Respondent is ROCKY FISCHER / CARDINAL HEALTH INC (“Respondent”), Utah, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <us-goodwinlaw.com>, registered with Tucows Domains Inc.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 27, 2017; the Forum received payment on November 27, 2017.
On November 28, 2017, Tucows Domains Inc. confirmed by e-mail to the Forum that the <us-goodwinlaw.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. 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 November 30, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 20, 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@us-goodwinlaw.com. Also on November 30, 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 December 22, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is an international law firm with offices around the world.
Complainant uses the GOODWIN mark to promote its services.
Complainant has common law rights in the GOODWIN mark based upon secondary meaning acquired from long and continuous use.
Complainant holds a registration for the GOODWIN PROCTER trademark and service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 2,750,882, registered August 12, 2003).
The domain name is confusingly similar to Complainant’s GOODWIN mark.
Respondent lacks rights to and legitimate interests in the domain name.
Respondent has not been commonly known by the domain name.
Complainant has not authorized Respondent’s use of either of the GOODWIN and GOODWIN PROCTER marks.
Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use.
The domain name fails to resolve to an active website.
Instead, Respondent uses the domain name to pass itself off as Complainant while sending phishing emails to unsuspecting Internet users in order to obtain their personal information.
Respondent registered and uses the domain name in bad faith.
Respondent registered the domain name <us-goodwinlaw.com> on September 24, 2017.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark and service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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:
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept all reasonable allegations and inferences set out 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) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). See also Talk City, Inc. v. Robertson, D2000-0009 (WIPO February 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
Complainant’s claim of rights in the GOODWIN mark under the common law is not disputed by Respondent. Accordingly, we accept that Complainant has such rights and that they are sufficient to satisfy the requirements of Policy ¶ 4(a)(i).
See, for example, SeekAmerica Networks Inc. v. Tariq Masood, D2000-0131 (WIPO April 13, 2000):
The Rules do not require that the Complainant’s trademark or service mark be registered by a government authority or agency for such rights to exist.
See also Oculus VR, LLC v. Ivan Smirnov, FA 1625898 (Forum July 27, 2015):
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.
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <us-goodwinlaw.com> domain name is confusingly similar to Complainant’s GOODWIN mark. The domain name contains the mark in its entirety, with only the addition of a hyphen, the generic terms “us” and “law,” (which are descriptive of Complainant and its business), plus the generic Top Level Domain (“gTLD”) “.com”. These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See Am. Online, Inc. v. Karandish, FA 563833 (Forum November 2, 2005) (finding that the addition of the descriptive term “talk” to the mark of another in creating a domain name did not sufficiently distinguish that domain name from the mark under Policy ¶ 4(a)(i)). See also Health Devices Corp. v. Aspen S T C, FA 158254 (Forum July 1, 2003):
[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).
Finally, see Reese v. Morgan, FA 917029 (Forum April 5, 2007) (finding, under Policy ¶ 4(a)(i), that the addition of the generic Top Level Domain “.com” to the mark of a UDRP complainant in forming a domain name was insufficient to differentiate them by the test of confusing similarity).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in a disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <us-goodwinlaw.com> domain name, and that Complainant has authorized Respondent to use the GOODWIN mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Rocky Fischer / Cardinal Health Inc.,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the contested domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy
¶ 4(c)(ii). See, for example, State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that, because the relevant WHOIS record showed “Dale Anderson” as the registrant of a disputed domain name, that respondent was not commonly known by the <statefarmforum.com> domain name under Policy ¶ 4(c)(ii)). See also Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that a respondent was not commonly known by a disputed domain name where a UDRP complainant had not authorized that respondent to use its mark in a domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent fails to use the <us-goodwinlaw.com> domain name for a bona fide offering of goods or services or in a legitimate noncommercial or fair use, in that Respondent employs the domain name in an attempt to pass itself off as Complainant while phishing for the private information of Internet users via email messages delivered from an address tied to the domain name. This employment of the domain name is neither a bona fide offering of goods or services by means of the domain name nor a legitimate noncommercial or fair use of it such as would confirm in Respondent rights to or legitimate interests in it under the provisions of Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii). See Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Forum April 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).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent uses the challenged <us-goodwinlaw.com> domain name to operate an email-based phishing scheme to obtain fraudulently the personal information of unsuspecting Internet users. Under Policy ¶ 4(a)(iii), this use of the domain name stands as proof of Respondent’s bad faith in registering and using it. See Zoetis Inc. and Zoetis Services LLC v. VistaPrint Technologies Ltd, FA1506001623601 (Forum July 14, 2015):
Respondent’s attempt to use the … domain name to phish for personal information in fraudulent emails also constitutes bad faith pursuant to Policy ¶ 4(a)(iii).
It is also plain from the evidence that Respondent knew of Complainant and its rights in the GOODWIN mark when Respondent registered the disputed <us-goodwinlaw.com> domain name. This too demonstrates Respondent’s bad faith in registering it. See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum September 5, 2007) (finding, under Policy ¶ 4(a)(iii), that a UDRP respondent registered a domain name in bad faith, having first concluded that that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name.")
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <us-goodwinlaw.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: January 2, 2018
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