McGuireWoods LLP v. trevor hunter / Hunter Inc
Claim Number: FA1901001823452
Complainant is McGuireWoods LLP (“Complainant”), represented by Amanda L. DeFord of McGuireWoods LLP, Virginia, USA. Respondent is trevor hunter / Hunter Inc (“Respondent”), North Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mcguirewoodslegal.com>, 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 January 2, 2019; the Forum received payment on January 2, 2019.
On January 3, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <mcguirewoodslegal.com> 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 January 3, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 23, 2019 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@mcguirewoodslegal.com. Also on January 3, 2019, 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 January 24, 2019, 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, McGuireWoods LLP, has continuously owned and used, in commerce, the MCGUIREWOODS mark throughout the United States and the world in connection with its legal services as well as in connection with consulting services it provides through subsidiaries.
Complainant has rights in the MCGUIREWOODS mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <mcguirewoodslegal.com> domain name is confusingly similar to Complainant’s MCGUIREWOODS mark as it incorporates the mark in its entirety and is differentiated only by the generic term “legal” and the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <mcguirewoodslegal.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use the MCGUIREWOODS mark in any manner. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent fails to make an active use of the disputed domain name. Furthermore, the disputed domain name’s resolving webpage contains pay-per-click links to other firms’ websites.
Respondent registered and is using the <mcguirewoodslegal.com> domain name in bad faith. Respondent fails to make an active use of the disputed domain name. Further, Respondent had actual knowledge of Complainant’s rights in the mark prior to registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the MCGUIREWOODS mark through its registration of such mark with the USPTO.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in its relevant trademark.
Respondent holds the <mcguirewoodslegal.com> domain name inactively except to address a webpage which displays multiple pay-per-click links.
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 ownership of a USPTO registration for its MCGUIREWOODS trademark is sufficient to demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i). See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark).
Respondent’s <mcguirewoodslegal.com> domain name contains Complainant’s entire MCGUIREWOODS trademark followed by the suggestive term “legal” and the top-level domain name “.com. ” These modifications to Complainant’s trademark are insufficient to distinguish the at-issue domain name from Complainant’s mark for the purposes of the Policy ¶ 4(a)(i). In fact the inclusion of the suggestive term “legal” only adds to any confusion between Complainant’s legal services related trademark and Respondent’s domain name. Therefore, the Panel finds that Respondent’s <mcguirewoodslegal.com> domain name is confusingly similar to Complainant’s MCGUIREWOODS trademark. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).); see also King Ranch IP, LLC v. E Miller, FA 1785596 (Forum June 6, 2018) (“Complainant’s trademark is used in-part with regard to barbecue related goods and services; the term “bbq” is thus suggestive of the KING RANCH trademark. Therefore, the Panel finds that the <kingranchbbq.com> domain name is confusingly similar to Complainant’s KING RANCH 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).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademarks 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 at-issue domain name.
WHOIS information for the at-issue domain name lists “trevor hunter / Hunter Inc” as the domain name’s registrant. There is nothing in the record that otherwise suggests Respondent is commonly known by the <mcguirewoodslegal.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain names pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also, Instron Corp. v. Kaner, FA 768859 (Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Respondent makes no active use of the <mcguirewoodslegal.com> domain name. Therefore, the Panel finds Respondent’s use of the domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Activision Blizzard, Inc. / Activision Publishing, Inc. / Blizzard Entertainment, Inc. v. Cimpress Schweiz GmbH, FA 1737429 (Forum Aug. 3, 2017) (“Complainant insists that Respondent has made no demonstrable preparations to use the disputed domain name. When Respondent is not using the disputed domain name in connection with an active website, the Panel may find that Respondent is not using the disputed domain name for a bona fide offering of goods or services… As Respondent has not provided a response to this action, Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.”). Additionally, Complainant asserts and shows that the at-issue domain name addresses a parking page offering pay-per-click links some of which relate to Complainant’s competition. Likewise, such use of the confusingly similar domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (”Respondent’s use of <edcorlando.xyz> also does not qualify as a bona fide offering… the <edcorlando.xyz> domain name resolves to a site containing pay-per-click hyperlinks and advertisements… Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering.”).
Given the forgoing, Complainant’s unrebutted prima facie showing that Respondent lacks rights or interests in the at-issue domain name satisfies Complainant’s burden under Policy ¶4 (a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of legitimate interests in respect of the at-issue domain name.
The <mcguirewoodslegal.com> domain name was registered and used in bad faith. As discussed below without limitation, Policy ¶4(b) specific bad faith circumstances as well as other circumstance are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy regarding its registration and use of the <mcguirewoodslegal.com> domain name.
As discussed above concerning rights and legitimate interests, Respondent holds the <mcguirewoodslegal.com> domain name somewhat inactively; the domain name simply addresses a parked webpage which contains various hyperlinks. Respondent’s holding of the confusingly similar domain name to address a parked page shows Respondent’s bad faith under Policy ¶ 4(a)(iii). See, e.g., Vivint, Inc. v. GreenLeaf Solar, FA1585796 (Forum Nov. 25, 2014) (“Respondent’s failure to use the <deanwitter.mobi> domain name, which is identical to Complainant’s DEAN WITTER mark, for any purpose besides the ‘parked’ page that currently resolves from the disputed domain name indicates that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ (a)(iii).”); see also, VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).
Moreover, the fact that <mcguirewoodslegal.com> addresses a webpage that displays pay-per-click links to Complainant’s competition additionally demonstrates Respondent’s bad faith registration and use of the at-issue domain name pursuant to Policy ¶¶ 4(b)(iii) and/or (iv). See Google Inc. v. James Lucas / FireStudio / Jameschee / FIRESTUDIO / SEONG YONG, FA1502001605757 (Forum Apr. 7, 2015) (“This Panel agrees that Respondent’s inclusion of advertisements to likely reap click-through fees is an example of bad faith pursuant Policy ¶ 4(b)(iv).”); see also American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum Jan. 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶ 4(b)(iii)”).
Next, in light of the lack of suitability for the domain name to be used for any non-infringing purpose, Respondent obviously registered and now holds and uses the at-issue domain name so that Respondent may inappropriately exploit its confusing similarity to Complainant’s MCGUIREWOODS trademark. There is no reasonable basis to find otherwise. Therefore, the Panel also concludes that Respondent has registered and used the <mcguirewoodslegal.com> domain name in bad faith given the strong inference of Respondent’s intent to inappropriately trade on Complainant’s mark. See BBY Solutions, Inc. v. Grant Ritzwoller, FA 1703389 (Forum Dec. 21, 2016) (finding bad faith because the <bestbuyus.com> domain name was obviously connected with the complainant’s well-known BEST BUY mark, thus creating a likelihood of confusion strictly for commercial gain).
Finally, Respondent registered the <mcguirewoodslegal.com> domain name knowing that Complainant had trademark rights in the MCGUIREWOODS mark. Respondent’s prior knowledge of Complainant’s trademark is evident given the notoriety of the MCGUIREWOODS mark, the use of the domain name as discussed above, and Respondent’s juxtaposition of the suggestive term “legal” with such mark in creating the domain name. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <mcguirewoodslegal.com> domain name in bad faith pursuant to 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").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mcguirewoodslegal.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: January 27, 2019
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