WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Crowe & Dunlevy v. Myrna Reichert

Case No. D2019-2785

1. The Parties

Complainant is Crowe & Dunlevy, United States of America (“United States”), internally represented.

Respondent is Myrna Reichert, United States.

2. The Domain Name and Registrar

The disputed domain name <attorneysuscrowedunlevy.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 14, 2019. On November 14, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 15, 2019, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.

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 Respondent of the Complaint, and the proceedings commenced on November 21, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 11, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 12, 2019.

The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on December 17, 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

Complainant Crowe & Dunlevy is an American law firm headquartered in Oklahoma with offices in Oklahoma City, Tulsa, and Dallas, United States.

Complainant is the proprietor of trademark registrations, including United States registration No. 3744634 for CROWE & DUNLEVY (word mark) for “legal services” in class 45, registered on February 2, 2010, claiming a date of first use in 1981. Complainant operates its primary corporate website at “crowedunlevy.com”.

The Domain Name was registered by Respondent on April 3, 2013. It resolves to a site offering legal services by an entity identifying itself as “Crowe Dunlevy Attorney at Law”.

5. Parties’ Contentions

A. Complainant

Complainant’s submissions may be summarized as follows:

Under the first element, Complainant alleges that it has trademark rights in the CROWE & DUNLEVY mark (the “Mark”) based on its registration and longstanding use in the United States. The Domain Name is intentionally confusingly similar to, and is an example of typo-squatting of, Complainant’s Mark.

Under the second element, Complainant alleges that it is not aware of any other entity that has legitimate rights to use the Mark. Respondent is using the Domain Name in an attempt to impersonate Complainant’s law firm. Respondent has no legitimate interests in the Domain Name.

Under the third element, Complainant alleges that the Domain Name has been used by Respondent in bad faith. Respondent is using the Domain Name in an attempt to impersonate Complainant and to defraud visitors to the website. The website to which the Domain Name resolves includes names of attorneys practicing law at Complainant’s law firm. The registration and use of the Domain Name to fraudulently impersonate Complainant is strong evidence that the Domain Name was registered, and is being used, in bad faith. As stated in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.13.1., “Panels have categorically held that the use of a domain name for illegal activity (e.g. the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent”. Respondent is using the Domain Name to conduct an impersonation fraud that demonstrates knowledge of Complainant and its lawyers.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Given the facts in the case file and Respondent’s failure to file a response, the Panel accepts as true the contentions in the Complaint. Nevertheless, paragraph 4(a) of the UDRP requires Complainant to make out all three of the following:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) Respondent has registered and is using the Domain Name in bad faith.

A. Identical or Confusingly Similar

Complainant has provided evidence establishing that it has trademark rights in the Mark through use and registration in jurisdictions including the United States, thereby satisfying the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO Overview 3.0, section 1.2.1.

In comparing Complainant’s Mark with the Domain Name, the Panel finds that the Domain Name is confusingly similar with the Mark, since the Domain Name contains the Mark in its entirety. The addition of the descriptive terms “attorney” and “us” does not prevent a finding of confusing similarity as Complainant’s Mark is clearly recognizable within the Domain Name.

It is the well-established view of UDRP panels that the addition of the generic Top-Level Domain (“gTLD”) to the Domain Name does not prevent the Domain Name from being confusingly similar to Complainant’s trademark (see WIPO Overview 3.0, section 1.11.1, and cases cited thereunder).

The Panel finds that Complainant has established the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The Panel finds that the evidence submitted by Complainant establishes a prima facie case that Respondent has no rights or legitimate interests in the Domain Name. The Panel finds that there is no evidence that Respondent is commonly known by the Domain Name or is using the Mark with permission of Complainant. Rather, the case materials contain Complainant’s express assertion that such permission does not exist. Complainant’s rights in Mark predate the registration of the Domain Name by more than 30 years.

The circumstances and evidence indicate that Respondent has no rights or legitimate interests in the Domain Name. The nature of the Domain Name, adding a hyphen to Complainant’s Mark, cannot constitute fair use because it effectively impersonates or suggests sponsorship or endorsement by Complainant, the trademark owner (see WIPO Overview 3.0, section 2.5.1).

Respondent, in failing to file a response, has not submitted any evidence or arguments demonstrating such rights or legitimate interests, nor has it rebutted any of Complainant’s contentions. There is no information available that would support a finding of a fair use of the Domain Name.

The Panel finds that Complainant has established the second element under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

The Panel finds that, on balance, evidence in the record demonstrates that Respondent chose the Domain Name for the purpose of impersonating or attempting to create an association with Complainant. Complainant’s rights in the Mark predate the registration of the Domain Name by decades. The Domain Name contains Complainant’s Mark in its entirety with the addition of non-distinctive terms, thereby attempting to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s Mark. The Panel finds that such registration creates a presumption of bad faith. See WIPO Overview 3.0, section 3.1.4.

Having established that the Domain Name was registered in bad faith, the Panel next turns to the issue of whether Respondent has engaged in bad faith use of the Domain Name. Considering the totality of the circumstances, the Panel finds that the Domain Name has also been used in bad faith. In particular, the Panel finds that the website to which the Domain Name resolves clearly attempts to impersonate Complainant by identifying the purported operator of the website as “Crowe Dunlevy Attorney at Law.” The search results for Respondent’s website include results for attorneys practicing at Complainant’s law firm.

Respondent has failed to file any response or provide any evidence of actual or contemplated good-faith use.

In the view of the Panel, such circumstances, taken together, indicate that Respondent registered and used the Domain Name in bad faith. The Panel finds that Complainant has established the third element under paragraph 4(a) of the Policy.

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 Domain Name <attorneysuscrowedunlevy.com> be transferred to Complainant.

Ingrīda Kariņa-Bērziņa
Sole Panelist
Date: December 31, 2019