The Burton Firm, P.A. v. Mena Dre
Claim Number: FA1803001779192
Complainant is The Burton Firm, P.A. (“Complainant”), represented by Marc A. Burton of The Burton Firm, P.A., Florida, USA. Respondent is Mena Dre (“Respondent”), Colorado, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <theburtonfirrn.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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 March 27, 2018; the Forum received payment on March 27, 2018.
On March 28, 2018, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <theburtonfirrn.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 March 29, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 18, 2018 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@theburtonfirrn.com. Also, on March 29, 2018, 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 April 23, 2018, 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
Founded in 1982, Complainant has become a leading law firm in the fields of litigation, contracts, and other practice areas, especially in South Florida.
Complainant is registered to practice law in the State of Florida and has been recognized in numerous media outlets and legal directories.
Complainant has used the name and mark THE BURTON FIRM in commerce continuously since 2005.
Dating from at least 2012, Complainant has received extensive media state and national coverage for its legal practice.
As a consequence, Complainant has acquired common law rights in the mark THE BURTON FIRM.
Respondent registered the domain name <theburtonfirrn.com> on or about February 27, 2018.
The domain name is confusingly similar to Complainant’s THE BURTON FIRM mark.
Respondent has not been commonly known by the domain name.
Complainant has not licensed or otherwise authorized Respondent to use the THE BURTON FIRM mark.
Respondent does not use the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Rather, the website resolving from the domain name is inactive.
Respondent has used the domain name in connection with an email scam whereby it passed itself off as an employee of Complainant to send fraudulent emails to one of Complainant’s clients and directed the client to send a money wire transfer to a bank account.
Respondent has no rights to or legitimate interests in the domain name.
Respondent has engaged in fraudulent conduct in previous cases, as found in a WIPO case in 2017.
The domain name is an instance of typo-squatting.
Respondent registered and uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark 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 as true all reasonable allegations and inferences set out in the Complaint 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.”
A complainant need not hold a trademark registration in order to meet the requirement of Policy ¶ 4(a)(i) that it demonstrate rights in the mark upon which its claim is based as a prerequisite for bringing a complaint under the UDRP. Common law rights will suffice. See, for example, Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017):
The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.
Here, although Complainant does not hold a trademark registration, the record reveals that it has acquired common law rights in the mark THE BURTON FIRM from the development over time of “secondary meaning” linking the mark with Complainant’s featured legal services. See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (finding that a UDRP complainant demonstrated common law rights in a mark by proving “long time continuous use of the mark, …, as well as other evidence of the mark’s … secondary meaning.”).
Turning to the core question posed by Policy ¶4(a)(i), we conclude from a review of the record that Respondent’s <theburtonfirrn.com> domain name is confusingly similar to Complainant’s mark THE BURTON FIRM. The domain name contains the mark in its entirety, but for a misspelling of Complainant’s mark achieved by replacing the letter “m” with the combination of letters “r” and “n” to create a visually similar appearance, plus the addition of the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark do not save it from the realm of confusing similarity under the standards of the Policy. See Intelius, Inc. v. Hyn, FA 703175 (Forum July 5, 2006) (finding a domain name to be confusingly similar to a UDRP complainant’s mark because the domain name differed from the mark by one letter and was visually similar). See also Google, Inc. v. DktBot.org, FA 286993 (Forum August 4, 2004):
The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).
Further see Trip Network Inc. v. Alviera, FA 914943 (Forum March 27, 2007) (concluding that affixing a gTLD to the mark of another in creating a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). This is because every domain name requires a gTLD.
Under Policy 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in the <theburtonfirrn.com> 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) (i)-(iii), 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 <theburtonfirrn.com> domain name, and that Complainant has not licensed or otherwise authorized Respondent to use the mark THE BURTON FIRM. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Mena Dre,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding, under Policy ¶ 4(c)(ii), that a respondent was not commonly known by the <chevron-europe.com> domain name where the relevant WHOIS information identified its registrant only as “Fred Wallace.” See also Navistar Int’l Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that a respondent was not commonly known by a domain name where a UDRP complainant had not authorized that respondent to incorporate its mark in a domain name).
We next observe that Complainant contends, without objection from Respondent, that, apart from the actions described immediately below, the challenged <theburtonfirrn.com> domain name is not in active use, but instead resolves to a website that lacks any content. Failure to make legitimate active use of a domain name evidences the absence of both a bona fide offering of goods or services by means of it within the ambit of Policy ¶ 4(c)(i) and a legitimate noncommercial or fair use of it within the compass of Policy ¶ 4(c)(iii). See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum September 2, 2004):
Respondent is wholly appropriating Complainant’s mark and is not using the … domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).
As described in the Complaint, the only active use thus far traced to the <theburtonfirrn.com> domain name is a scheme by which Respondent apparently attempted to perpetrate a financial fraud upon an unsuspecting client of Complainant through the device of a chain of e-mail messages bearing an address built from the domain name and purporting to be sent by an officer of Complainant. Such behavior cannot be construed as either a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum November 30, 2016):
Respondent uses the … 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 [money] transfer. Using the domain name in this manner is neither a bona fide offering of goods and services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
The record reflects that this is not the first time that Respondent has engaged in a fraudulent scheme involving the use of an e-mail address derived from a domain name built upon the mark of a UDRP complainant. See Corker Binning v. Mena Dre, D2017-2196 (WIPO December 21, 2017):
Given the evidence of use of the disputed domain name for a fraudulent purpose, the Panel readily concludes that it was registered and is being used in bad faith by the Respondent.
That Respondent appears to have repeated the same illicit behavior here is enough to permit us to conclude that Respondent has engaged in a pattern of abusive registration and use of domain names as provided in Policy ¶ 4(b)(ii). See Fandango, LLC v. 21562719 Ont Ltd, FA1209001464081 (Forum November 2, 2012):
Respondent’s past conduct and UDRP history establishes a pattern of registered domain names in bad faith under Policy ¶ 4(b)(ii).
It is also plain from the evidence that Respondent knew of Complainant and its rights in the mark THE BURTON FIRM when it registered the contested <theburtonfirrn.com> domain name. This further demonstrates Respondent’s bad faith in registering it. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum February 6, 2014):
[T]he Panel here finds actual knowledge through the name used for the domain and the use made of it.
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 <theburtonfirrn.com> domain name be TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: April 25, 2018
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