Whiteford, Taylor & Preston, LLP v. Info Royal LePage
Claim Number: FA2303002038291
Complainant is Whiteford, Taylor & Preston, LLP (“Complainant”), represented by Howard R. Feldman, Maryland, USA. Respondent is Info Royal LePage (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wtplavv.com>, registered with Wild West Domains, 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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to Forum electronically on March 31, 2023; Forum received payment on March 31, 2023.
On April 4, 2023, Wild West Domains, LLC confirmed by e-mail to Forum that the <wtplavv.com> domain name is registered with Wild West Domains, LLC and that Respondent is the current registrant of the name. Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, 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 April 4, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 24, 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@wtplavv.com. Also on April 4, 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 April 28, 2023, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, Forum appointed Steven M. Levy, 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
Complainant, Whiteford, Taylor & Preston, LLP is a law firm. Complainant asserts common law rights in the trademark WTP through use in commerce and acquired secondary meaning since 1994, including its use of the domain name <wtplaw.com> since 1996. Respondent’s <wtplavv.com> domain name, registered on December 27, 2022, is confusingly similar to Complainant’s WTP trademark because it replaces the letter “w” with a double letter “v”.
Respondent does not have rights or legitimate interests in the <wtplavv.com> domain name. Respondent is not licensed or authorized to use Complainant’s WTP 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. The domain name does not resolve to any website content but Respondent attempts to impersonate an attorney at Complainant’s law firm in furtherance of a phishing scheme aimed at a bankruptcy trustee.
Respondent registered and uses the <wtplavv.com> domain name
in bad faith by
attempting to impersonate one of Complainant’s attorneys in furtherance of a
phishing scheme.
B. Respondent
Respondent failed to submit a Response in this proceeding.
- Complainant has demonstrated its ownership of common law trademark rights in the term WTP and the <wtplavv.com> domain name is confusingly similar to the mark;
- Respondent has no rights or legitimate interests in the disputed domain name as there is no evidence that it is commonly known thereby and its email impersonation of an attorney at Complainant’s law firm, in furtherance of a phishing scheme, is not a bona fide offering or goods or services nor is it a legitimate noncommercial or fair use of the disputed domain name; and
- Respondent’s use of the disputed domain name for impersonation emails in furtherance of a phishing scheme supports a finding that the domain name was registered and is used 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:
(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 correctly argues that registration of a trademark is not required in order to satisfy the Policy ¶ 4(a)(i) requirement that a complainant own trademark rights. This threshold element of the Policy may be satisfied where a complainant demonstrates established common law rights in the mark (i.e., secondary meaning) acquired through evidence of use. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding that “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.”); see also 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.”). The Complainant provides numerous pieces of evidence to show how its claimed WTP mark has been used and promoted. This includes images of various firm brochures and advertisements, a business card, and promotional items bearing the mark (e.g., coffee mugs, water bottles, a golf ball, and sunscreen). While these items do not speak to the result of Complainant’s promotional efforts (as would client testimonials, unsolicited news articles, firm rankings, etc.), they do show the extent to which Complainant has publicized its mark and Respondent has not participated in these proceedings to contest Complainant’s evidence or assertions. Thus, the Panel finds it highly likely that Complainant has developed common law rights in the WTP trademark under Policy ¶ 4(a)(i).
Next, Complainant argues that the <wtplavv.com> domain name is confusingly similar to Complainant’s WTP trademark. The use of the entirety of a mark, combined with a generic term, can support a finding of confusing similarity. See HDR Global Trading Limited v. asdasd asd, FA 2037989 (Forum Apr. 29, 2023) (“Respondent’s <bitmexpro.org> domain name is confusingly similar to Complainant’s trademark because it contains the BITMEX trademark in its entirety, merely adding the generic term ‘pro’ and the generic top-level domain (‘gTLD’) ‘.org’ to form the disputed domain name.”). The disputed domain name incorporates the entirety of Complainant’s WTP mark and is nearly identical to Complainant’s own <wtplaw.com> domain name as it replaces the letter “w” with a double letter “v” thus creating visual verisimilitude. In light of such mimicry, the Panel does not hesitate to find that the disputed domain name is confusingly similar to Complainant’s 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). Should it succeed in this effort, the burden then shifts to Respondent to show that 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 <wtplavv.com> domain name because Respondent is not licensed or authorized to use Complainant’s WTP mark and is not commonly known by the disputed domain name. It is well accepted that WHOIS information may be used to inform consideration of whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA 1613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). 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 Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA 1574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The WHOIS information for the disputed domain name lists the registrant as “Info Royal LePage” and there is no evidence to suggest that Respondent is known otherwise. Therefore, the Panel finds no ground upon which to conclude that Respondent is commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Next, Complainant contends that Respondent does not use the disputed domain name for any bona fide offering of goods or services and that it does not make a legitimate noncommercial or fair use of the domain name. Rather, Respondent attempts to impersonate Complainant in furtherance of a phishing scheme. Passing oneself off as someone else in furtherance of a phishing scheme is not considered a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii). See Emerson Electric Co. v. Adilcon Rocha, FA 1735949 (Forum July 11, 2017) (finding that respondent’s attempt to pass itself 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); see also Cubist Pharmaceuticals, Inc. v. Gregory Stea, FA 1550388 (Forum May 5, 2014) (“Respondent is using the domain name in emails to various IT hardware suppliers in an attempt to impersonate Complainant and defraud its customers. The domain name also resolved to a website similar to Complainant’s website. The Panel found that such actions precluded a bona fide offer or fair use.”). Here, Complainant provides copies of emails sent from the disputed domain name showing attempts to impersonate one of the attorneys at Complainant’s law firm. As claimed by Complainant, these emails are “requesting that the Trustee of a United States Bankruptcy Court approved settlement trust ignore wire instructions previously provided to him and, instead, transmit trust funds using ACH information provided by Respondent”. Respondent has not filed a Response or made any other submission in this case but, in any event, the Panel is hard-pressed to believe that there can be any explanation for Respondent’s actions which would lead to the conclusion that they are a bona fide offering of goods or services, or that they constitute a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶¶ 4(c)(i) or (iii).
Finally, where a disputed domain name resolves to a blank webpage, panels have found that there is no bona fide offering of goods or services nor a legitimate noncommercial or fair use. See Société Air France v. Gary Van Til, Response Science Ltd, D2017-0203 (WIPO Mar. 15, 2017) (no rights or legitimate interest found where “the websites to which the Disputed Domain Names resolve are blank.”); see also Victoria’s Secret Stores Brand Management, Inc. v. Travis Martin c/o Dynadot Privacy, FA 1250363 (Forum Apr. 22, 2009) (“the failure of Respondent’s confusingly similar <victoriassecrret.com> domain name to resolve to any website is evidence that Respondent has not made a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Complainant has not submitted any screenshot of the website resolution for the disputed domain name but the Panel has attempted to browse to it and found that it indeed does not resolve to any content. The Panel finds that this also provides no ground upon which to find that Respondent has any rights or legitimate interests in the disputed domain name.
Although not addressed in the Complaint, a foundational question under ¶ 4(a)(iii) is whether or not Respondent had knowledge of Complainant’s rights in its WTP mark at the time it registered the <wtplavv.com> domain name. Some attribution of knowledge of a complainant’s trademark, whether actual, constructive, or based upon a conclusion that a respondent should have known of the mark, is inherently prerequisite to a finding of bad faith under the Policy. See Domain Name Arbitration, 4.02-C (Gerald M. Levine, Legal Corner Press, 2nd ed. 2019) (“Knowledge and Targeting Are Prerequisites to Finding Bad Faith Registration”); see also USA Video Interactive Corporation v. B.G. Enterprises, D2000-1052 (WIPO Dec. 13, 2000) (claim denied where “Respondent registered and used the domain name without knowledge of Complainant for a bona fide commercial purpose.”). As noted above, Complainant submits copies of a number of firm brochures, advertisements, a business card, and promotional items, which shows some promotional activity surrounding the mark, and it also claims that the mark is “widely known” and that it “has invested considerable resources advertising its legal services under the Mark” but its evidence doesn’t directly speak to the reputation its mark may have acquired with the relevant consumer demographic as a result of this advertising and promotional activity. In any event, Respondent’s actual knowledge of Complainant’s mark is apparent from its clear attempt at impersonating one of the attorneys at Complainant’s law firm in the submitted email exchange.
With reference to such impersonation, Complainant argues that Respondent is engaged in a phishing scheme to defraud certain parties of funds. Respondent use of a disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use under Policy ¶¶ 4(b)(iv) & 4(a)(iii). 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)); see also FIL Limited v. Li jie, FA 1718900 (Forum Mar. 17, 2017) (finding the <fidelity.cn.com> domain name was registered and used in bad faith as it resolved to a website which mimicked the complainant’s login page in an attempt to gain Internet users’ personal and financial information); see also SHUAA Capital psc v. Oba Junkie / shuaa capital psc, FA 1581255 (Forum Oct. 29, 2014) (“The Panel finds that Respondent’s use of the domain name’s e-mail suffix for fraudulent purposes illustrates Policy ¶ 4(a)(iii) bad faith.”). Here, the submitted emails sent from the disputed domain name show an attempt to impersonate an attorney at Complainant’s law firm to request a transfer of funds to an account presumably controlled by Respondent. This evidence leads the Panel to determine that Respondent registered and uses the disputed domain name in bad faith to disrupt Complainant’s business under Policy ¶ 4(b)(iii) and to attract commercial gain by creating a likelihood of confusion with Complainant’s WTP mark under ¶ 4(b)(iv).
Finally, Complainant argues that Respondent registered and uses the <wtplavv.com> domain name in bad faith as the disputed domain name does not resolve to any website content. As the examples set out in Policy ¶ 4(b) are not exclusive, bad faith may be found where respondent has made no website use of a disputed domain name and there are no indications that respondent could have registered and used the disputed domain name for any non-infringing purpose. See Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000); see also Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where the respondent made no use of the domain name in question and there are no other indications that the respondent could have registered and used the domain name in question for any non-infringing purpose). As noted above, despite Complainant not submitting a screenshot of the website resolution for the disputed domain name, the Panel has confirmed that it does not resolve to any content. This lack of web content combined with the fact that it is difficult to conceive of, and Respondent has not suggested, any good-faith use to which a domain name may be put when it consists of a close visual misspelling of the Complainant’s legitimate domain name, lends further support to the conclusion that Respondent registered and uses the disputed domain name in 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 <wtplavv.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: May 2, 2023
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