DECISION

 

Wilson Sonsini Goodrich & Rosati v. matthew jonas

Claim Number: FA2309002060818

PARTIES

Complainant is Wilson Sonsini Goodrich & Rosati ("Complainant"), represented by John L. Slafsky of Wilson Sonsini Goodrich & Rosati, California, USA. Respondent is matthew jonas ("Respondent"), Colorado, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <wsgrllp-us.com> and <wsgr-uk.com>, registered with NameCheap, Inc..

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Richard Hill as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on September 7, 2023; Forum received payment on September 7, 2023.

 

On September 8, 2023, NameCheap, Inc. confirmed by e-mail to Forum that the <wsgrllp-us.com> and <wsgr-uk.com> domain names are 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 September 11, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 2, 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@wsgrllp-us.com, postmaster@wsgr-uk.com. Also on September 11, 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 October 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant states that it is one of the best-known law firms in the United States and internationally. WSGR is shorthand for Complainant's full name, Wilson Sonsini Goodrich & Rosati. Complainant has been using the WSGR trademark publicly for nearly four decades and the public has come to associate the trademark exclusively with Complainant. Complainant was founded and is headquartered in Silicon Valley (California) and is the premier provider of legal services to technology, life sciences, and growth enterprises, representing companies ranging from entrepreneurial startups to multibillion-dollar global corporations at every stage of development. In the U.S., Complainant has consistently been ranked as one of the top-50 law firms in American Lawyer's "Am Law 100" rankings and is presently ranked as the 33rd largest firm in the country. Complainant also has a strong international presence with offices in the United Kingdom, Belgium, Hong Kong, and China. With over $1.3 billion in gross revenue in 2022, Complainant ranked as the 42nd highest grossing law firm in the world in American Lawyer's 2022 "Global 200" survey. Complainant employs over a thousand attorneys and nearly two thousand legal staff across its 19 offices in major cities throughout the United States and other countries. Complainant has been recognized by major publications such as California Lawyer ("the largest, most successful law firm of its kind in the world"); Bloomberg ("a law firm known for representing some of the world's top technology companies"); Financial Times ("one of the top US law firms specialising in technology companies and start-ups"); American Lawyer (recognized as among "the best of the best across all of what the [legal] profession holds dear"); and Global Data Review (honoring Complainant among the "global elite" in its GDR100 rankings), among others. Complainant adopted its current name, Wilson Sonsini Goodrich & Rosati, in 1978. Since that time, Complainant has used the shorthand WSGR as a trademark. Complainant registered the <wsgr.com> domain name on March 31, 1993 to promote its services. Complainant's WSGR trademark has appeared prominently in its marketing and advertising, such as on stationery and business cards, on signage, on websites and social media accounts, in press releases, and at promotional events. Complainant's social media content routinely references the WSGR mark. Complainant uses various social media "handles" and/or "hashtags" referencing WSGR. The public's recognition of Complainant's WSGR trademark is well documented. The mark and/or the <wsgr.com> domain name has been referenced in prominent publications such as The Wall Street Journal, Financial Times, The Economist, Bloomberg, The Miami Herald, The Financial Post, The Guardian, and The Sun, among others.

 

Complainant alleges that the disputed domain names are is confusingly similar to its WSGR mark because they incorporates the mark in its entirety and merely add a hyphen, the generic/descriptive term "llp", and/or the geographic terms "US" or "UK", together with the ".com" generic top-level domain ("gTLD").

 

According to Complainant, Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names nor has Complainant authorized Respondent to use its mark. Respondent is not using the disputed domain names for a bona fide offering of goods or services, or a legitimate noncommercial fair use. Instead, the disputed domain names are not being used.

 

Further, says Complainant, Respondent has registered and is using the disputed domain names in bad faith. The disputed domain names are not being used. Respondent is planning to use the disputed domain names to impersonate Complainant in, for example, phishing schemes. Respondent had actual or constructive knowledge of Complainant's mark before registering the disputed domain names.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

PRELIMINARY ISSUE: Refiled case

The instant case is a refiling of the complaints against <wsgrllp-us.com> and <wsgr-uk.com>, initially filed in Wilson Sonsini Goodrich & Rosati v. matthew jonas / andrew jonnes, FA2308002056444 (Forum Aug. 30, 2023). In that case, the complaint against <wsgrllp-us.com> and <wsgr-uk.com> was dismissed without prejudice because the Panel found that there was insufficient evidence to demonstrate that all the disputed domain names were registered by the same person or entity.

 

According to paragraph 4.18 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Jurisprudential Overview 3.0"), panels have accepted refiled complaints where the case has previously been decided expressly on a "without prejudice" basis.

 

Accordingly, the Panel accepts the instant refiled Complaint.

 

FINDINGS

Complainant has common law trademark rights in the mark WSGR and uses it to provide legal services around the world. The mark is well known.

 

Complainant's rights in its mark predate the registration of the disputed domain names.

 

The disputed domain names were registered in 2022 and 2023.

 

Complainant has not licensed or otherwise authorized Respondent to use its mark.

 

The disputed domain names are not being used.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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").

 

Identical and/or Confusingly Similar

Complainant asserts common law rights in its WSGR mark. Common law rights are sufficient to establish rights in a mark under Policy ¶ 4(a)(i). See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark). Common law rights may be established through evidence of secondary meaning in the mark such as longstanding use, evidence of an identical domain name, media recognition, and promotional material and advertising. 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."). Here, Complainant registered the domain name <wsgr.com> in 1993, and used it to market and to provide legal services well before the registration of the disputed domain names. Further, Complainant used its WSGR mark in various promotional and advertising materials. The Panel finds that Complainant has provided sufficient evidence of secondary meaning to establish common law rights in its WSGR mark, with rights predating the first registration of the disputed domain names.

 

The disputed domain names incorporate Complainant's WSGR mark in its entirety and merely add a hyphen, the generic/descriptive term "llp", and/or the geographic terms "US" or "UK", together with the ".com" generic top-level domain ("gTLD"). Such changes are not sufficient to overcome a confusingly similar analysis per Policy ¶ 4(a)(i). See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) ("Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element."); see also Home Depot Product Authority, LLC v. Angelo Kioussis, FA 1784554 (Forum June 4, 2018) ("The domain name contains the mark in its entirety, with only the addition of the generic letters 'sb' and the digits '2018,' plus the generic Top Level Domain ("gTLD") '.com.'  These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy."); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Forum July 1, 2003) ("[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i)."). Therefore, the Panel finds that the disputed domain names are confusingly similar to Complainant's mark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant has not licensed or otherwise authorized Respondent to use its mark. Respondent is not commonly known by the disputed domain names: under Policy ¶ 4(c)(ii), the Panel may look to the WHOIS information to determine whether Respondent is commonly known by the disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named "Fred Wallace" as registrant of the disputed domain name). Here, the WHOIS information on record lists "matthew jonas" as the registrant of the disputed domain names. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).

 

The disputed domain names are not being used. Failure to make an active use of a domain name demonstrates that Respondent is not using the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial fair use. See 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)."). Therefore, the Panel finds that Respondent is not using the disputed domain names to make for a bona fide offering of goods, or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or 4(c)(iii). And the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain names.

 

Registration and Use in Bad Faith

Complainant alleges that Respondent may be planning to use the disputed domain names for phishing, but, regrettably, once again presents no evidence to support that allegation. In particular, Complainant does not allege – much less provide evidence to show – that MX records have been configured for the disputed domain name. Consequently, the Panel once again finds that Complainant has failed to satisfy its burden of proof for this allegation and will not further discuss it.

 

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 names.

 

Indeed, the disputed domain names are 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, while Complainant's trademark is well known, it is not apparent to the Panel that it is difficult to envisage any use of the mark that would not violate the Policy. However, Complainant presents evidence showing that it would be difficult to envisage any use of the disputed domain names (which incorporates Complainant's mark, the term "llp" which refers to Complainant's type of business structure (limited liability partnership) and the geographical designators "US" or "UK") that would not violate the Policy.

 

According to paragraph 4.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Jurisprudential Overview 3.0"), a Panel may conduct limited factual research regarding disputed domain names:

 

Noting in particular the general powers of a panel articulated inter alia in paragraphs 10 and 12 of the UDRP Rules, it has been accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision.

 

This may include visiting the website linked to the disputed domain name in order to obtain more information about the respondent or its use of the domain name, consulting historical resources such as the Internet Archive (www.archive.org) in order to obtain an indication of how a domain name may have been used in the relevant past, reviewing dictionaries or encyclopedias (e.g., Wikipedia), or accessing trademark registration databases.

 

The Panel has run a search on the texts "wsgrllp-us" and "wsgr-uk" and it finds that, indeed, it would be difficult to envisage any use of those terms, as domain names, that would not violate the Policy – as opposed to the use of the term "wsgr" alone, which would not necessarily violate the Policy.

 

Thus the Panel finds that it would be difficult to envisage any use of the disputed domain names 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, on the balance of the evidence, in this particular case, a finding of bad faith use can be inferred even though the disputed domain names are not being actively used. See Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <wsgrllp-us.com> and <wsgr-uk.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

Richard Hill, Panelist

Dated: October 3, 2023