McGuireWoods LLP v. Barry Cohen
Claim Number: FA2302002030147
Complainant is McGuireWoods LLP (“Complainant”), represented by Amanda DeFord of McGuireWoods LLP, Virginia, USA. Respondent is Barry Cohen (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mcguierwoods.com>, registered with IONOS SE.
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to Forum electronically on February 1, 2023; Forum received payment on February 1, 2023.
On February 2, 2023, IONOS SE confirmed by e-mail to Forum that the <mcguierwoods.com> domain name is registered with IONOS SE and that Respondent is the current registrant of the name. IONOS SE has verified that Respondent is bound by the IONOS SE 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 February 3, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 23, 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@mcguierwoods.com. Also on February 3, 2023, 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 March 3, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Richard Hill 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 states that it is a well-respected, AmLaw 100 international law firm that provides a wide variety of legal services to its clients. The modern form of the firm was created in 1966 through the merger of two prominent law firms in the Commonwealth of Virginia, both of which trace their roots back to the 1800s. Since 1966, Complainant has continued to grow through mergers with other law firms, and today, Complainant employs over 1000 lawyers in over 23 offices in the United States and Europe, while also collaborating with colleagues and managing resources in 128 countries around the world. Starting in 1966, Complainant operated under the name McGuire, Woods, & Battle LLP, and in 2000, the firm began using, and operating under, the name “McGuireWoods LLP”. Complainant asserts rights in the MCGUIREWOODS Mark based upon its registration in the United States in 2001. The mark is registered elsewhere around the world and it is well known.
Complainant alleges that the disputed domain name is confusingly similar to its MCGUIREWOODS mark because in consists of a misspelling of the mark (the letters “r” and “e” are transposed), merely adding the generic top level domain (“gTLD”) “.com”.
According to Complainant, Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name. Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate or fair use. Instead, the disputed domain name is not being used. Respondent has engaged in typosquatting. Respondent intends to use the disputed domain name in furtherance of a phishing scam.
Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith. The disputed domain name is not being used. Respondent is engaged in typosquatting. Respondent had actual knowledge of Complainant’s rights in the MCGUIREWOODS Mark prior to registration of the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has registered trademark rights for the mark MCGUIREWOODS and uses it to provide legal services. The mark was registered in 2001 and it is well known.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The disputed domain name was registered in 2022.
The disputed domain name is not being used.
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 disputed domain name consists of a misspelling of Complainant’s MCGUIREWOODS mark (the letters “r” and “e” are transposed), merely adding the “.com” generic top level domain (“gTLD”). Such changes are not sufficient to defeat an argument of confusing similarity per Policy ¶ 4(a)(i). See Indiana Univ. Health, Inc. v. Mark Davis, FA2202001983401 (Forum Mar. 16, 2022) (finding that “the fact that the letters ‘a’ and ‘e’ are reversed” in <iuhaelth.org> was “likely to be missed by the casual reader” and did not mitigate confusing similarity with IU HEALTH mark); see also Western Alliance Bancorporation v. James Brandon, FA 1783001 (Forum June 5, 2018) (“Respondent’s <westernalliancebcorporation.info> domain name is confusingly similar to Complainant’s WESTERN ALLIANCE BANCORPORATION mark because it merely appends the gTLD ‘.info’ to a misspelled version of Complainant’s mark.”); see also Wells Fargo & Company v. Purple Bucquet, FA1009001347807 (Forum Nov. 3, 2010) (“The Panel finds that the misspelling or switching of a single letter fails to properly distinguish the disputed domain names from Complainant’s mark.”). Thus, the Panel finds that the <mcguierwoods.com> domain name is confusingly similar to Complainant’s MCGUIREWOODS mark per Policy ¶ 4(a)(i).
Complainant has not licensed or otherwise authorized Complainant to use its mark. Respondent is not commonly known by the disputed domain name: under Policy ¶ 4(c)(ii), WHOIS information can substantiate a finding that a respondent is not 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). Here, the WHOIS information of record identifies the registrant as “Barry Cohen”. The Panel therefore finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
The disputed domain name is not being used. An inactive holding is not a bona fide offering of goods and services or a legitimate or fair use per Policy ¶¶ 4(c)(i) or (iii). See McGuireWoods LLP v. Meaghan Downey NA, FA1911001871964 (Forum Dec. 17, 2019) (finding no bona fide offering of goods or services or legitimate noncommercial fair use where disputed domain resolved to “a mostly blank page that displays ‘Gateway Timeout’ and ‘server error’ messages”); see also Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> 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).”). Accordingly, the Panel finds that respondent fails to use the disputed domain name to make a bona fide offering of goods and services or a legitimate or fair use per Policy ¶ 4(c)(i) or (iii).
Further, Respondent’s intentional misspelling of Complainant’s mark in the disputed domain constitutes typosquatting. Typosquatting itself is evidence of a Respondent’s lack of rights or legitimate interests under Policy ¶ 4(a)(ii). See Webster Financial Corporation and Webster Bank, National Assocation v. Pham Dinh Nhut, FA1502001605819 (Forum Apr. 17, 2015) (“Respondent’s acts of typosquatting provide additional evidence that respondent lacks rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii).”).
For all the above reasons, the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.
Complainant alleges that the disputed domain name may have been intended for use in a phishing scam. However, it presents no evidence to support that allegation. Consequently, the Panel finds that Complainant has failed to satisfy its burden of proof for this allegation and will not discuss it further.
Complainant also alleges that Respondent’ business involves registering domain names that incorporate the well-known and well-respected marks of other entities, and that mimic the legitimate domain names owned by those entities. However, it does not present any evidence to support that allegation, much less evidence to show that Respondent was found to have registered and used domain names in bad faith under the Policy. Thus the Panel will not further discuss this allegation.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, as already noted, the disputed domain name is not being used. According to paragraph 3.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Jurisprudential Overview 3.0): “From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.”
In the present case, Complainant’s trademark is well known. It is difficult to envisage any use of the disputed domain name that would not violate the Policy, see Morgan Stanley v. TONY / shentony, FA 1637186 (Forum Oct. 10, 2015) (“Respondent registered the disputed domain name [MORGANSTANLEY.ONLINE] in bad faith because . . . it is difficult to envisage any use of the disputed domain name that would not violate the Policy”); see also Singapore Airlines Ltd. v. European Travel Network, D2000-0641 (WIPO Aug. 29, 2000) (where selection of disputed domain name is so obviously connected to complainant’s well-known trademark, use by someone with no connection with complainant suggests opportunistic bad faith); see also Starwood Hotels & Resorts Worldwide, Inc., Sheraton Int’l IP, LLC, Westin Hotel Mgmt., L.P. v. Jingjing Tang, D2014-1040 (WIPO Aug. 19, 2014) (“The Panel finds that the [WESTIN] Marks are not such that could legitimately be adopted by traders other than for the purpose of creating an impression of an association with Complainant. Thus, the Panel concludes that the disputed domain names were registered in bad faith”).
There has been no response to the Complaint and Respondent used a privacy service, that is, it attempted to conceal its identity. Given these circumstances, the Panel finds that, in this particular case, a finding of bad faith use can be inferred even though the disputed domain name is not being actively used. See Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000).
Further, also as already noted, Respondent has engaged in typosquatting. Typosquatting is itself evidence of bad faith under Policy ¶ 4(a)(iii). See Cost Plus Management Services, Inc. v. xushuaiwei, FA 1800036 (Forum Sep. 7, 2018) (“Typosquatting itself is evidence of relevant bad faith registration and use.”). Accordingly the Panel finds Respondent that registered and uses the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Finally, the Panel infers that Respondent registered the disputed domain name with actual knowledge of Complainant’s mark, because it consists of a misspelling of Complainant’s mark and it does not seem that the disputed domain name could have been created inadvertently. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant’s rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also 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). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to Respondent’s registration of the disputed domain name and that this constitutes bad faith under 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 <mcguierwoods.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: March 3, 2023
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