McGuireWoods LLP v. China Tom
Claim Number: FA2302002030629
Complainant is McGuireWoods LLP (“Complainant”), USA, represented by Amanda DeFord of McGuireWoods LLP, Virginia. Respondent is China Tom (“Respondent”), Czech Republic.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mcgulrevvoods.com>, registered with NameCheap, Inc..
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.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to Forum electronically on February 6, 2023; Forum received payment on February 6, 2023.
On February 6, 2023, NameCheap, Inc. confirmed by e-mail to Forum that the <mcgulrevvoods.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 February 7, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 27, 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@mcgulrevvoods.com. Also on February 7, 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 5, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, Esq. 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
i) Complainant,
McGuireWoods LLP, is an international law firm. Complainant has rights in the
MCGUIREWOODS mark based upon registration with the United States Patent and
Trademark Office (“USPTO”) (e.g., Reg. No. 2,483,615, registered August
28, 2001). The disputed domain name is confusingly similar to Complainant’s
MCGUIREWOODS trademark because it incorporates the mark in its entirety but
replaces the letter “i” with “l” and the letter “w” with “vv” and adds the
generic top-level domain name (“gTLD”) “.com”.
ii) Respondent
does not have rights or legitimate interests in the disputed domain
name. Respondent is not licensed or authorized to use Complainant’s MCGUIREWOODS
mark and is not commonly known by the disputed domain name. Respondent also
does not use the disputed domain name for any bona fide offering of
goods or services or legitimate noncommercial or fair use. Respondent hosts
advertisements as pay-per-click hyperlinks. Respondent engages in
typosquatting.
iii) Respondent
registered and uses the disputed domain name in bad faith.
Respondent disrupts Complainant’s business by hosting pay-per-click hyperlinks.
Respondent had actual knowledge of Complainant’s rights in the MCGUIREWOODS
mark. Respondent engages in typosquatting.
B. Respondent
Respondent did not submit a response in this proceeding.
1. The disputed domain name was registered on April 13, 2021.
2. Complainant has established rights in the MCGUIREWOODS mark based upon registration with the USPTO (e.g., Reg. No. 2,483,615, registered August 28, 2001).
3. The disputed domain name’s resolving website hosts links to commercial websites which are unrelated to Complainant’s legal services.
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”).
Complainant asserts rights in the MCGUIREWOODS mark based upon registration with the USPTO (e.g., Reg. No. 2,483,615, registered August 28, 2001) and other trademark agencies. Registration of a mark with multiple trademark agencies is a valid showing of rights under Policy ¶ 4(a)(i). Since Complainant has provided evidence of registration of the MCGUIREWOODS mark with the USPTO, the Panel finds that Complainant has established rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that the disputed domain name <mcgulrevvoods.com> is confusingly similar to Complainant’s MCGUIREWOODS trademark. Subtle misspellings of a mark and the addition of a gTLD do not distinguish confusing similarity under Policy ¶ 4(a)(i). See Acme Lift Company, L.L.C. v. VistaPrint Technologies Ltd, FA 1607039 (Forum Apr. 11, 2015) (stating, “Where a respondent has created a domain name in an effort to visually deceive Internet users via a simple misspelling (and when such misspellings are visually similar to the mark), a finding of confusing similarity under Policy ¶ 4(a)(i) is appropriate.”); see also Vanguard Trademark Holdings USA LLC v. Shuai Wei Xu / Xu Shuai Wei, FA 1784238 (Forum June 1, 2018) (“Respondent arrives at each of the disputed domain names by merely misspelling each of the disputed domain names and adding the gTLD ‘.com.’ This is insufficient to distinguish the disputed domain names from Complainant’s trademark.”). The disputed domain name incorporates the mark in its entirety but replaces the letter “i” with “l” and the letter “w” with “vv” and adds the gTLD “.com.” Therefore, the Panel finds the disputed domain name is confusingly similar to Complainant’s MCGUIREWOODS mark under Policy ¶ 4(a)(i).
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”).
Complainant argues that Respondent does not have rights or legitimate interests in the disputed domain name because Respondent is not licensed or authorized to use Complainant’s MCGUIREWOODS mark and is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). 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). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Bittrex, Inc. v. Operi Manaha, FA 1815225 (Forum Dec. 10, 2018) (concluding that the respondent was not commonly known by the <appbittrex.com> domain name where the WHOIS information listed Respondent as “Operi Manaha,” and nothing else in the record suggested Respondent was authorized to use the BITTREX mark.). The unmasked WHOIS information for the disputed domain name lists the registrant as “China Tom.” Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant contends Respondent also does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Respondent hosts advertisements as pay-per-click hyperlinks. Respondent’s use of a confusingly similar domain name to host links to commercial websites and subject Internet users to pop-up advertisements does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or 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.”). Complainant provides a screenshot of the disputed domain name’s resolving webpage showing hyperlinks advertising unrelated products or services. Therefore, the Panel finds Respondent does not provide a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant further asserts Respondent engages in typosquatting. Respondent’s act of typosquatting provides additional evidence that respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Macy’s Inc. and its subsidiary Macy’s West Stores, Inc. v. chen wenjie c/o Dynadot Privacy, FA1404001552918 (Forum May 21, 2014) (“Respondent’s disputed domain names are typosquatted versions of Complainant’s registered mark. Typosquatting shows a lack of rights or legitimate interests.”). The Panel recalls the disputed domain name is confusingly similar to Complainant’s MCGUIREWOODS trademark because it incorporates the mark in its entirety but replaces the letter “i” with “l” and the letter “w” with “vv” and adds the gTLD “.com”. Thus, the Panel finds that Respondent engages in typosquatting.
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. 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 has no rights or legitimate interests in the disputed domain name.
Complainant contends Respondent disrupts Complainant’s business by hosting pay-per-click hyperlinks. Use of a domain name to host unrelated links for commercial gain is indicative of bad faith under Policy ¶ 4(b)(iv). See Dovetail Ventures, LLC v. Klayton Thorpe, FA1506001625786 (Forum Aug. 2, 2015) (holding that the respondent had acted in bad faith under Policy ¶ 4(b)(iv), where it used the disputed domain name to host a variety of hyperlinks, unrelated to the complainant’s business, through which the respondent presumably commercially gained). The Panel notes that Complainant provides a screenshot of the disputed domain name’s resolving website hosting links which are unrelated to Complainant’s legal services, e.g., “Book Business Flight, Stock Tracker Website, Tsa Precheck Application, Low Cost Wifi, How to Get Free Nintendo Switch Games, Buy Online Airline Tickets, etc. Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Complainant further argues that Respondent engages in typosquatting. Typosquatting itself is evidence of relevant bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Gap Inc. and its subsidiary, Old Navy (Apparel), LLC v. Jiri Capcuch, FA1405001562139 (Forum July 2, 2014) (“Respondent adds an additional letter ‘v’ to Complainant’s OLD NAVY mark in the <oldnavvy.com> domain name, a classic example of typosquatting. Respondent’s typosquatting is, in itself, evidence of bad faith under Policy ¶ 4(a)(iii).”). The Panel again recalls the disputed domain name is confusingly similar to Complainant’s MCGUIREWOODS trademark because it incorporates the mark in its entirety but replaces the letter “i” with “l” and the letter “w” with “vv” and adds the gTLD “.com”. Therefore, the Panel finds Respondent engages in typosquatting, which supports a finding of bad faith registration and use of the disputed domain name 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 <mcgulrevvoods.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: March 6, 2023
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