McGuireWoods LLP v. jeffrey
Claim Number: FA2304002040470
Complainant is McGuireWoods LLP ("Complainant"), represented by Amanda DeFord of McGuireWoods LLP, Virginia, USA. Respondent is jeffrey ("Respondent"), Indiana, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mcguireswood.com>, registered with Google 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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to Forum electronically on April 18, 2023; Forum received payment on April 18, 2023.
On April 18, 2023, Google LLC confirmed by email to Forum that the <mcguireswood.com> domain name is registered with Google LLC and that Respondent is the current registrant of the name. Google LLC has verified that Respondent is bound by the Google 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 19, 2023, Forum served the Complaint and all Annexes, including an Italian and English Written Notice of the Complaint, setting a deadline of May 9, 2023 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@mcguireswood.com. Also on April 19, 2023, the Italian and English Written Notice of the Complaint, notifying Respondent of the email 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 May 12, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed David E. Sorkin 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.
The verification email received from Google LLC states that the language of the Registration Agreement is Italian. Rule 11(a) provides that the language of this administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise. Complainant requests that the proceeding be conducted in English, contending that Respondent is capable of understanding English based upon Respondent's United States address and various other facts in the record. The Panel also notes that the Written Notice of the Complaint was served upon Respondent in both English and Italian and that Respondent has made no objection to this request.
The Panel finds it likely that Respondent is sufficiently conversant in the English language, has received adequate notice of this proceeding, and has chosen not to participate. The Panel sees no reason to require the expense and delay associated with arranging for a translation that is likely unnecessary to afford proper notice to Respondent, and that in any event Respondent is likely to ignore. It appears to the Panel that no prejudice will result from conducting this proceeding in English, and that doing so will enable the proceeding to be conducted expeditiously. See, e.g., Bunge Ltd. v. Evgenii Fefelov, FA 1956666 (Forum Aug. 20, 2021). The Panel decides that English shall be the language of this proceeding.
A. Complainant
Complainant is a large international law firm. Complainant adopted the name McGuire, Woods, & Battle LLP in 1966 following a merger of two prominent law firms, and has operated under the name McGuireWoods LLP since 2000. Complainant has used MCGUIREWOODS since at least as early as 2000 in connection with its legal services and the consulting services that it provides through subsidiaries. Complainant owns a longstanding United States trademark registration for MCGUIREWOODS in standard character form, along with similar registrations in other jurisdictions.
The disputed domain name <mcguireswood.com> was registered in April 2023. The name is registered in the name of a privacy registration service on behalf of Respondent. (The Panel notes that the underlying registration information provided by Respondent appears to be at least partially fictitious.) The domain name does not resolve to a website. Complainant states that Respondent is not commonly known by the domain name and is not licensed or otherwise authorized to use Complainant's mark.
Complainant contends on the above grounds that the disputed domain name <mcguireswood.com> is confusingly similar to its MCGUIREWOODS mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being 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 Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
The disputed domain name <mcguireswood.com> incorporates Complainant's registered MCGUIREWOODS trademark, inserting a letter "S" in the middle, omitting the "S" at the end, and adding the ".com" top-level domain. These alterations do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., McGuireWoods LLP v. Wayne Malcolm / Evil Logz / Bell Nation, FA 1856098 (Forum Sept. 18, 2019) (finding <mcguireswoods.com> confusingly similar to MCGUIREWOODS). The Panel considers the disputed domain name to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's registered mark without authorization. Respondent does not appear to have made any active use of the domain name, nor to have engaged in preparations for such use, suggesting that Respondent lacks rights or legitimate interests in the domain name. See, e.g., McGuireWoods LLP v. Xin Park, FA 2030142 (Forum Mar. 1, 2023) (finding lack of rights or interests in similar circumstances).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent used a privacy registration service and what the Panel infers to be fictitious underlying registration data to register a domain name corresponding to a misspelling of Complainant's registered mark, in what the Panel considers to be an instance of typosquatting. Complainant does not appear to have made any active use of the domain name and has not come forward with any explanation for the selection of or intended use for the domain name. Such circumstances are indicative of bad faith registration and use under the Policy. See, e.g., See, e.g., McGuireWoods LLP v. Xin Park, supra (finding bad faith registration and use in similar circumstances); CommScope, Inc. of North Carolina v. Yvonne Chesler, FA 1970241 (Forum Nov. 29, 2021) (same). The Panel finds that the disputed domain name was registered and is being used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mcguireswood.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: May 12, 2023
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