WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Ropes & Gray LLP v. Onso Onso

Case No. D2019-0823

1. The Parties

The Complainant is Ropes & Gray LLP, United States of America (“United States”), represented by Ropes & Gray LLP, United States.

The Respondent is Onso Onso, United States.

2. The Domain Name and Registrar

The disputed domain name <ropegrays.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 10, 2019. On April 11, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 12, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details and contact information for the disputed domain name.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 18, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 8, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 9, 2019.

The Center appointed Clark W. Lackert as the sole panelist in this matter on May 14, 2019. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant law firm, Ropes & Gray LLP, was founded in 1865, and has serviced its clients for over 150 years. Since its founding, the Complainant has attracted significant media attention worldwide and created significant goodwill in its trademark ROPES & GRAY. The Complainant has registered its trademark ROPES & GRAY in the United States Patent and Trademark Office in 2004 claiming a date of first use of 1865 under number 2,902,936 for “legal services, provision of information in the field of law”, and such registration is in full force and effect. The Complainant also registered its domain name <ropesgray.com> in 1995 and such domain name registration is still in full force and effect.

The Respondent registered the disputed domain name <ropegrays.com> on March 27, 2019, well after the Complainant’s trademark and domain name registration. The record also indicates that the Respondent used the disputed domain name to solicit at least one client of the Complainant to wire funds to it. The registrar suspended the disputed domain name due to this spoofing activity, but the Respondent still maintains ownership of the disputed domain name.

The Respondent is in default and did not file a Response to the Complaint in the current proceeding.

5. Parties’ Contentions

A. Complainant

A. The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

Founded by John Codman Ropes and John Chipman Gray in 1865, the Complainant has always been known by the name “Ropes & Gray” for over 150 years. The Complainant’s premier law practice has attracted substantial press media attention worldwide. The Complainant owns the following incontestably-registered service mark owned and used by the Complainant in connection with its ongoing business activities:

ROPES & GRAY, Reg. No. 2,902,936

Class 42; Legal services, provision of information in the field of law.

The Complainant has an active presence on the Internet. The Complainant has registered and continues to use its principal domain name <ropesgray.com> registered with Network Solutions, LLC on October 12, 1995. Each and every employee of the Complainant, including attorneys and other professionals, uses an email address with the principal domain name.

Once a complainant has proven ownership of the registered trademark, “a straightforward visual or aural comparison of the trademark with” the disputed domain name is conducted to determine whether they are confusingly similar.

Here, the disputed domain name <ropegrays.com> shows a clear resemblance to the Complainant’s registered ROPES & GRAY mark and <ropesgray.com> domain name. See Philip Morris USA Inc. v. Luca Brignoli, WIPO Case No. D2014-1180 (finding that the disputed domain name and registered trademark “seen as a whole show a clear resemblance” and that a difference of a “letter … does not change the visual similarity”). The only difference between the Complainant’s registered trademark and the disputed domain name is a transposition of a letter (“s”), which has already been found to be confusingly similar in many cases. See, e.g., Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556 (finding a transposition of a letter “l” to result in “vlovo” confusingly similar to the registered trademark VOLVO); seealso, e.g., Edmunds.com, Inc. v. Keyword Marketing Inc. a/k/a Marketing Total S.A. a/k/a Domain Drop S.A., WIPO Case No. D2007-1427 (finding the disputed domain name confusingly similar due to a simple transposition of a letter in the disputed domain name while maintaining visual similarity to the registered trademark).

The disputed domain name, <ropegrays.com>, is a common mistyping of the Complainant’s registered ROPES & GRAY mark and its rightful domain name (<ropesgray.com>), as the “Respondent’s domain [name] differ[s] from the Complainant’s mark by one letter”. See Debevoise & Plimpton LLP v. Keyword Marketing, Inc. / Web Advertising, Corp., WIPO Case No. D2007-1679; see also Hogan Lovells, Int’l LLP v. Proxy Protection LLC, WIPO Case No. D2017-0921 (finding one letter difference between the Complainant’s and the disputed domain name “quite minor” leading to the conclusion that “the disputed domain name is confusingly similar to the Complainant’s proven trademarks”).

“Various cases have found domain names that were common mistyping of the marks at issue to be confusingly similar to the relevant marks.” Supra. Indeed, registration of disputed domain name with minor differences from registered trademarks is commonly referred to as “typosquatting”, which warrants transfer of the disputed domain name to the owner of the trademark. Supra.

Therefore, with a single letter difference between the domain names, and due to the visual similarity between ROPES & GRAY, <ropesgray.com>, and <ropegrays.com>, the disputed domain name is likely to cause confusion, to cause mistake, and to deceive as to the affiliation, connection, or association of the Respondent with the Complainant.

B. The Respondent has no rights or legitimate interests in respect of the disputed domain name;

According to the WhoIs database (accessed on March 29, 2019), the Respondent registered the disputed domain name on March 27, 2019.

There is no relationship or affiliation between the Complainant and the Respondent giving rise to any license, permission, or other right by which the Respondent could own or use any domain name incorporating the Complainant’s registered ROPES & GRAY mark.

The Respondent’s registration of the disputed domain name without any relationship to the Complainant or the Complainant’s mark itself creates a strong presumption that the Respondent lacks legitimate interests in the disputed domain name. See, e.g., Pfizer Inc. v. NA, WIPO Case No. D2005-0072; Centurion Bank of Punjab Limited v. West Coast Consulting, LLC, WIPO Case No. D2005-1319.

Both prior to and subsequent to the date of registration, the Respondent has not used or prepared to use the disputed domain name with any bona fide offering of goods or services (Policy, paragraph 4(c)(i)), has not been commonly known by the disputed domain name (Policy, paragraph 4(c)(ii)), and has not made any noncommercial or fair use of the disputed domain name ((Policy, paragraph 4(c)(iii)). In fact, the disputed domain name has never resolved to an active website. Therefore, the Respondent lacks legitimate interests in the disputed domain name under the Policy.

C. The disputed domain name was registered and used in bad faith;

The Respondent registered the domain name <ropegrays.com> without the Complainant’s authorization on March 27, 2019 — 150 years after the Complainant was founded, more than twenty years after the Complainant registered its own <ropesgray.com> domain name, and more than a decade after the Complainant’s registration of its ROPES & GRAY mark. The Respondent’s registration of the disputed domain name that is confusingly similar to the Complainant’s famous trademark and domain name without any relationship to the Complainant is itself sufficient evidence of bad faith registration and use. See Chanel, Inc. v. Buybeauty.com, WIPO Case No. D2000-1126 (“[g]iven that Respondent has no connection with the Complainant and has never been authorized by the Complainant to use the CHANEL mark, the very fact that Respondent has registered buychanel.com establishes bad faith use and registration”).

Further, the Respondent’s clear intent is to mislead or to deceive the Complainant’s current and prospective clients, and/or to tarnish the Complainant ROPES & GRAY mark and reputation, possibly making commercial gain through litigation or phishing emails with the disputed domain name. Indeed, the Respondent intentionally attempted to imitate the Complainant’s ROPES & GRAY name and mark, and its <ropesgray.com> domain name, in a phishing attempt deliberately intended to create a likelihood of confusion with the Complainant’s mark.

More particularly, at 3:31 AM on March 27, 2019, on the day of registration of the disputed domain name, someone using the email address “[...]@ropegrays.com” sent an email (the “Phishing Email”) to one of the Complainant’s clients, pretending to be an employee of the Complainant, to defraud the Complainant’s client by attempting to persuade it to make payments with “new wiring instructions” for an “escrow account in Hong Kong”, unknown to the Complainant.

The Phishing Email also included what appear to be entirely false earlier email correspondence with the Complainant’s client (dated March 21 and March 25 2019), along with a footnote purporting to provide information on the Complainant and to cause confusion as to the source of the email: “Ropes & Gray LLP is an international law firm headquartered in the United States and registered with the PRC Ministry of Justice….”

On April 3, 2019, the Registrar, at the Complainant’s request, suspended the disputed domain name on the basis of the Respondent’s “spoofing activities towards ropesgray.com”. However, the Respondent retains ownership and control of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has demonstrated that it trademark rights for ROPES & GRAY registered with the USPTO (see section 4 above).

This is a clear case of typosquatting of the name of a well-known law firm, and then using this typosquatted domain name and the resulting confusion to spoof clients of the Complainant for at least one illegal fund transfer. The only difference in the disputed domain name and the Complainant’s trademark is the transposition of the letter “s”. In addition to the authority cited by the Complainant, as recited above, e.g., the <vlovo.com> case (see supra), the recent decision in Costco Wholesale Membership Inc., Costco Wholesale Corporation v. Domain Administrator, PrivacyGuardian.org / Markus Tamn, WIPO Case No. D2018-2523,reaffirms this typosquatting principle by holding that the typosquatted domain name <costoc.com> was confusingly similar to the trademark COSTCO.

This Panel finds that the disputed domain name is only one letter different in that the letter “s” is transposed from the Complainant’s trademark, and is therefore confusingly similar.

B. Rights or Legitimate Interests

The record does not indicate any rights or legitimate interests in the disputed domain name or any related trademark owned by the Respondent. Moreover, WIPO Overview 3.0, section 2.13.1, states that phishing and other illegal activity can not confer legitimate interests or rights on a domain name registrant.

C. Registered and Used in Bad Faith

The Respondent has created a confusingly similar domain name to the Complainant’s well-known trademark, and then, using spoofing and phishing, tried to illegally solicit funds by means of wire fraud. These actions create bad faith on various levels.

The fact that the Registrant’s trademark is well known, as was copied by the Respondent, creates bad faith. See the Chanel case, supra.

Moreover, the use of the domain name to illegally spoof and phish existing clients of the Complainant into believing that they are authorized to receive funds on behalf of client is a violation of Policy, paragaraph 4(b)(iv). Caffitaly System S.p.A. v. WhoisGuard Protected, WhoisGuard, Inc. / Organization: Winsomgroup, Robert Hills, WIPO Case No. D2018-2804, and WIPO Overview 3.0, Section 3.1.4. As the Panel stated therein: “Complainant provided evidence that the disputed domain name <caffitialy.com> was used to create fraudulent email addresses, which were then used the very same day the disputed domain name was registered to commit fraud, in an attempt to have one of Complainant’s clients transfer money into a foreign bank account. In accordance with section 3.1.4 of WIPO Overview 3.0, the use of a domain name for fraudulent activities is considered evidence of bad faith.”

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <ropegrays.com> be transferred to the Complainant.

Clark W. Lackert
Sole Panelist
Date: May 29, 2019