King & Spalding LLP v. John Valmont / K AND S
Claim Number: FA2212002024847
Complainant is King & Spalding LLP (“Complainant”), represented by Kathleen E. McCarthy, USA. Respondent is John Valmont / K AND S (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kslaw-uk.com>, registered with Key-Systems GmbH.
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.
The Honorable Neil Anthony Brown KC as Panelist.
Complainant submitted a Complaint to Forum electronically on December 20, 2022; Forum received payment on December 20, 2022.
On December 22, 2022, Key-Systems GmbH confirmed by e-mail to Forum that the <kslaw-uk.com> domain name is registered with Key-Systems GmbH and that Respondent is the current registrant of the name. Key-Systems GmbH has verified that Respondent is bound by the Key-Systems GmbH 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 December 28, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 17, 2023 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@kslaw-uk.com. Also on December 28, 2022, 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, Forum transmitted to the parties a Notification of Respondent Default.
On January 23, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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 made the following contentions.
Complainant, King & Spalding LLP, is an international law firm. Complainant has rights in the KING & SPALDING mark through numerous trademark registrations, including with the United States Patent and Trademark Office (“USPTO”) (e.g., USPTO Reg. No. 4,982,331, which was registered on June 21, 2016). See Compl. Ex. B. Complainant also has common law rights in the K&S logo, which has pending USPTO trademark applications, as well as the <kslaw.com> domain name. Respondent’s <kslaw-uk.com> domain name is confusingly similar to the KING & SPALDING mark, K&S logo, and <kslaw.com> domain name as the domain name merely adds the “-uk” geographic code and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <kslaw-uk.com> domain name since Respondent is not licensed or authorized to use Complainant’s KING & SPALDING mark. Respondent is also not commonly known by the disputed domain name. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent is passing off as Complainant through fraudulent emails and redirecting users back to Complainant’s legitimate site.
Respondent registered and uses the <kslaw-uk.com> domain name in bad faith by intending to deceive Internet users. Respondent is also impersonating Complainant through fraudulent emails to effectuate a phishing scheme. Further, Respondent had actual knowledge of Complainant’s rights in the KING & SPALDING mark, the K&S logo, and the <kslaw.com> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is an international law firm.
2. Complainant has established its rights in the KING & SPALDING mark through numerous trademark registrations, including with the United States Patent and Trademark Office (“USPTO”) (e.g., USPTO Reg. No. 4,982,331, which was registered on June 21, 2016). Complainant has also established its common law trademark rights in the K&S logo and in the <kslaw.com> domain name.
3. Respondent registered the <kslaw-uk.com> domain name on November 14, 2022.
4. Respondent has caused the disputed domain name to be used to pass itself off as Complainant through fraudulent emails and redirecting internet users back to Complainant’s legitimate site.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the KING & SPALDING mark through numerous trademark registrations, including with the USPTO (e.g., USPTO Reg. No. 4,982,331, which was registered on June 21, 2016). See Compl. Ex. B. Registration of a mark with the USPTO is a valid showing of rights in a mark under Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Since Complainant provides evidence of registration of the KING & SPALDING mark with the USPTO, the Panel finds that Complainant has demonstrated its rights in the KING & SPALDING mark per Policy ¶ 4(a)(i).
Complainant also submits that it has common law trademark rights in the K&S logo, with which it has pending USPTO trademark registrations (e.g., Ser. No. 97621702, which was filed on October 6, 2022). See Compl. Ex. C. Previous Panels have determined that a complainant obtains rights in a mark upon filing a trademark application. See Micha Advanced Health dba LEMYKA v. Shanshan Huang / This domain name is for sale, FA 1772893 (Forum Apr. 9, 2018) (“The relevant date for acquiring rights in a registered mark is the application filing date.”). Since Complainant provides evidence of the registration application and filing date of the K&S logo with the USPTO, the Panel finds that Complainant has demonstrated rights in the K&S logo per Policy ¶ 4(a)(i).
Further, Complainant submits that it has common law trademark rights in the <kslaw.com> domain name. It is always open to a complainant to show that a mark has established secondary meaning, such as through extensive and long-standing use, recognition, and promotional advertising so as to give rise to a common law trademark. See Marquette Golf Club v. Al Perkins, 1738263 (Forum July, 27, 2017) (finding that Complainant had established its common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including “longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising.”). In this case, Complainant points to its exclusive and decades-long use of the domain name, as well as its marketing and promotion of the <kslaw.com> domain name in connection with the legal services it provides. Complainant also notes that the domain name is used as an email suffix for all employees of Complainant and that the registration and use of the domain name dates back to 1995. See Compl. Exs. D and E. As the Panel determines that Complainant has adequately demonstrated secondary meaning in the <kslaw.com> domain name, it finds that Complainant has established that it has common law trademark rights in the domain name pursuant to Policy ¶ 4(a)(i).
The next issue that arises is whether the <kslaw-uk.com> domain name is confusingly similar to the KING & SPALDING mark, and/or the K&S logo, and/or the <kslaw.com> domain name. The disputed domain name <kslaw-uk.com> includes the equivalent of:
(a) the KING & SPALDING mark, as it would be widely read as invoking that name;
(b) the K&S logo, as it would be widely read as invoking the initials of the prominent law firm King & Spalding LLP; and
(c) the <kslaw.com> domain name, as it would be widely read as invoking that domain name and therefore as referring to Complainant.
With respect to the “-uk” part of the disputed domain name, it should be said that when a disputed domain name wholly incorporates a mark, as it does in this case, geographic identifiers have been found insufficient to defeat a finding of confusing similarity but as reinforcing such a finding. See PAIGE, LLC v. Chris Kimber, FA 1714208 (Forum Mar. 9, 2017) (“Accordingly, the Panel agrees that… “uk” is an irrelevant addition under the Policy, creating confusing similarity under Policy ¶ 4(a)(i).”); see also Expedia, Inc. v. Mandanice, FA 146598 (Forum Apr. 7, 2003) (finding that the <expedia-uk.com> domain name was confusingly similar to the complainant’s EXPEDIA mark). In addition, the inclusion of a gTLD does not negate a finding of confusing similarity per Policy ¶ 4(a)(i). See Metro-Goldwyn-Mayer Studios Inc. v. Antigua Domains, FA 1073020 (Forum Oct. 17, 2007) (“[T]he inclusion of the generic top-level domain ‘.com’ is inconsequential to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names.”). Here, the domain name merely adds the “-uk” geographic code and the “.com” gTLD. As the Panel determines that Complainant actually has rights in the KING & SPALDING mark, the K&S logo and the <kslaw.com> domain name and as Complainant’s argument is persuasive, it therefore finds that the <kslaw-uk.com> domain name is confusingly similar to each of the KING & SPALDING mark, the K&S logo and the <kslaw.com> domain name under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take each of Complainant’s KING & SPALDING mark, K&S logo and <kslaw.com> domain name and to use them in its domain name, adding only the geographic indicator “-uk”;
(b) Respondent registered the <kslaw-uk.com> domain name on November 14, 2022;
(c) Respondent has caused the disputed domain name to be used to pass itself off as Complainant through fraudulent emails and redirecting internet users back to Complainant’s legitimate site;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent has no rights or legitimate interests in the <kslaw-uk.com> domain name because Respondent is not commonly known by the disputed domain name and Complainant has never licensed rights to or authorized Respondent to use the KING & SPALDING mark, K&S logo, or the <kslaw.com> domain name. In the absence of a response, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). If a respondent may appear to be commonly known by a disputed domain name but fails to respond and provide evidence, Panels have presumed they are not in fact commonly known by the domain name. See Google Inc. v. S S / Google International, FA1506001625742 (Forum Aug. 4, 2015) (“Respondent did identify itself as ‘Google International’ in connection with its registration of the Disputed Domain Name, and this is reflected in the WHOIS information. However, Respondent has not provided affirmative evidence from which the Panel can conclude that Respondent was commonly known by the Disputed Domain Name before Respondent’s registration thereof.”). In addition, where there is no evidence to indicate a complainant has authorized the use of a mark, that may act as support for the conclusion that a respondent is not commonly known by the disputed domain name and thus lacks any rights or legitimate interest in the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”); see also Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information for <kslaw-uk.com> lists the registrant as “John Valmont” with the organization “K AND S.” See Registrar Email Verification. Respondent failed to submit a response and there is no evidence to suggest that Respondent was authorized, licensed rights to, or otherwise permitted to use either the KING & SPALDING mark, the K&S logo, or the <kslaw.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by, and lacks rights or legitimate interests in, the disputed domain name per Policy ¶ 4(c)(ii);
(f) Complainant also argues that Respondent is passing itself off as Complainant through the use of fraudulent emails. Previous Panels have found that use of a domain name as an email to impersonate and pass off as a complainant does not constitute either a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Microsoft Corporation v. Terrence Green / Whois Agent / Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr. 4, 2016) (finding the respondent’s use of the disputed domain names to send fraudulent emails purportedly from agents of complainant to be 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 also Emerson Electric Co. v. Adilcon Rocha, FA 1735949 (Forum July 11, 2017) (finding that respondent’s attempt to pass off as complainant through emails does not constitute a bona fide offering of goods or services and, as such, respondent lacked rights or legitimate interests in the disputed domain name). In this case, Complainant provides emails using the disputed domain name that purport to be from one of Complainant’s employees. See Compl. Ex. G. As the Panel agrees that Respondent is passing itself off as Complainant through fraudulent emails, the Panel finds that Respondent lacks a bona fide offering of goods or services and/or legitimate noncommercial or fair use of the <kslaw-uk.com> domain name under Policy ¶¶ 4(c)(i) and (iii);
(g) Complainant notes that the <kslaw-uk.com> domain name redirects users back to Complainant’s legitimate website. A respondent’s use of a disputed domain name to redirect users back to a complainant’s own site has been found not to confer rights or legitimate interests. See Better Existence with HIV v. AAA, FA 1363660 (Forum Jan. 25, 2011) (finding that “even though the disputed domain name still resolves to Complainant’s own website, Respondent’s registration of the disputed domain name in its own name fails to create any rights or legitimate interests in Respondent associated with the disputed domain name under Policy ¶ 4(a)(ii)”). As the Panel agrees and finds that the disputed domain name redirects to Complainant’s legitimate site at <kslaw.com>, it finds that Respondent lacks rights or legitimate interests in the <kslaw-uk.com> domain name per Policy ¶ 4(c)(ii).
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and uses the <kslaw-uk.com> domain name in bad faith by impersonating Complainant through fraudulent emails. Previous Panels have agreed with that interpretation of similar facts, finding bad faith pursuant to Policy ¶ 4(b)(iv) when a respondent uses a disputed domain name to pass itself off as a complainant, including through the use of emails. See Smiths Group plc v. Snooks, FA 1372112 (Forum Mar. 18, 2011) (finding that the respondent’s attempt to impersonate an employee of the complainant was evidence of bad faith registration and use under Policy ¶ 4(a)(iii)). Complainant provides in evidence emails sent via the disputed domain name. See Compl. Ex. G. As the Panel agrees, it finds bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iv).
Secondly, Complainant argues that Respondent’s intent to deceive Internet users further evinces bad faith. Panels have used a respondent’s deceptive intent and use of a well-known and confusingly similar domain name to support a finding of bad faith per Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); see also Carey Int’l, Inc. v. Kogan, FA 486191 (Forum July 29, 2005) (“[T]he Panel finds that Respondent is capitalizing on the confusing similarity of its domain names to benefit from the valuable goodwill that Complainant has established in its marks. Consequently, it is found that Respondent registered and used the domain names in bad faith under Policy ¶ 4(b)(iv).”); Harrods Ltd. v. Harrod’s Closet, D2001-1027 (WIPO Sept. 28, 2001) (finding that where a mark is so “obviously connected with well-known products,” its very use by someone with no connection to these products can evidence opportunistic bad faith). Here, Complainant contends that Respondent takes advantage of confusing similarity between the disputed domain name and Complainant’s well-known marks. As the Panel agrees, it finds that Respondent has acted in bad faith under Policy ¶ 4(b)(iv) in registering and using the disputed domain name.
Thirdly, Complainant claims that Respondent is using the disputed domain name to conduct a phishing scheme. Phishing is independent evidence of bad faith per Policy ¶ 4(a)(iii). See 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).”). The email provided by Complainant seeks to acquire financial information and is therefore phishing. See Compl. Ex. G. As the Panel agrees that Respondent is phishing for personal or financial information, it finds bad faith use under Policy ¶ 4(a)(iii).
Fourthly, Complainant contends that Respondent had actual knowledge of Complainant’s rights in the KING & SPALDING mark, the K&S logo, and <kslaw.com> domain name when registering <kslaw-uk.com>. Actual knowledge is sufficient to support a finding of bad faith under Policy ¶ 4(a)(iii). See Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum January 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”). To support its submission, Complainant points to the fame of the KING & SPALDING mark, the K&S logo, and the <kslaw.com> domain name, as well as Respondent’s impersonation of Complainant. As the Panel determines that Respondent had actual knowledge of Complainant’s rights, it finds that Respondent registered and uses the <kslaw-uk.com> domain name in bad faith according to Policy ¶ 4(a)(iii).
Fifthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name based on the KING & SPALDING mark, the K&S logo, and the <kslaw.com> domain name mark and in view of the conduct that Respondent has engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <kslaw-uk.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown KC
Panelist
Dated: January 24, 2023
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