WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Ropes & Gray LLP v. Contact Privacy Inc. Customer 0158624574/ Admin NA, Ropes Gray

Case No. D2020-2376

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 Contact Privacy Inc. Customer 0158624574, Canada / Admin NA, Ropes Gray, United States.

2. The Domain Name and Registrar

The disputed domain name <ropesgrays.com> is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 11, 2020. On September 14, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 14, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 17, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 2, 2020.

The Center verified that the Complaint together with the amended 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 October 5, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 25, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 26, 2020.

The Center appointed William R. Towns as the sole panelist in this matter on November 2, 2020. 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 is Ropes & Gray LLP, an international law firm founded by John Codman Ropes and John Chipman Gray in 1865. The Complainant has grown to over 1,400 attorneys and represents clients in a wide range of legal matters. The Complainant is the owner of a United States trademark registration for ROPES & GRAY, U.S. Reg. No. 2902936, applied for September 12, 2003, and registered with the United States Patent and Trademark Office (USPTO) on November 16, 2004. The Complainant also asserts common law rights in the ROPES & GRAY mark. The Complainant maintains an active presence on the Internet, having registered the domain name <ropesgray.com> in October 1995, and operating a website promoting the Complainant’s legal services for over 20 years.

The Respondent registered the disputed domain name <ropesgrays.com> on July 10, 2020, according to the Registrar’s WhoIs records. The disputed domain name resolves to a web page advertising website building under the name Zoho websites. The website also includes a reference to “Zillum Consultants”, which is described as a business consultancy.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain name <ropesgrays.com> is identical or confusingly similar to the Complainant’s ROPES & GRAY mark. The Complainant maintains that the inclusion of the letter “s” in the disputed domain name does not dispel the confusing similarity of the disputed domain name to the Complainant’s mark, constitutes typosquatting, and warrants the transfer of the disputed domain name.

The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant denies any relationship or affiliation with the Respondent that would authorize the Respondent to license, use, or register a domain name incorporating the Complainant’s ROPES & GRAY mark. This in and of itself, according to the Complainant, creates a strong presumption that the Respondent lacks rights or legitimate interests in the disputed domain name.

The Complainant maintains that the Respondent has neither used nor undertaken preparations to use the disputed domain name with a bona fide offering of goods or services, has not been commonly known by the disputed domain name, and is not making a noncommercial or fair use of the disputed domain name. The Complainant further contends that the Respondent is using the disputed domain name in connection with a phishing and wire fraud scheme.

The Complainant submits that the Respondent registered and is using the disputed domain name in bad faith. The Complainant observes that the Respondent registered the disputed domain name some 155 years after the Complainant was founded, and nearly 25 years following the Complainant’s registration of its ROPES & GRAY mark with the USPTO. The Complainant thus concludes that the Respondent would have been aware of the Complainant and the Complainant’s famous ROPES & GRAY mark when registering the disputed domain name. The Complainant considers that the Respondent’s registration of the disputed domain name due to its confusing similarity with the Complainant’s famous mark, and without any connection to the Complainant, in and of itself is evidence of bad faith registration and use of the disputed domain name.

The Complainant further asserts upon information and belief that the disputed domain name has been used by the Respondent as part of a business email scheme to facilitate wire transfer fraud impacting one of the Complainant’s clients. Absent any response from the Respondent, the Complainant submits its actual assertions should be accepted as true for purposes of this proceeding.

The Complainant maintains that the Respondent’s current passive holding of the disputed domain name, which according to the Complainant resolves to an inactive landing page, does not prevent a finding of bad faith. According to the Complainant, the presence of the disputed domain name in the hands of the Respondent poses an abusive threat hanging over the head of the Complainant – referring again to the business email compromise involving one of the Complainant’s clients.

B. Respondent

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

6. Discussion and Findings

A. Scope of the Policy

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain name”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.

Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the respondent has no rights or legitimate interests with respect to the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the view is that the burden of production shifts to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

B. Identical or Confusingly Similar

The Panel finds that the disputed domain name <ropesgrays.com> is confusingly similar to the Complainant’s ROPES & GRAY mark, in which the Complainant has established rights through registration and use. In considering identity and confusing similarity, the first element of the Policy serves essentially as a standing requirement.¹ The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the Complainant’s trademark and the disputed domain name.

In this case, the Complainant’s ROPES & GRAY mark is clearly recognizable in the disputed domain name.² The inclusion of the letter “s” after “gray” in disputed domain name does not serve to dispel the confusing similarity of the disputed domain name to the Complainant’s mark. When the relevant trademark is recognizable in the disputed domain name the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise), does not preclude a finding of confusing similarity under paragraph 4(a)(i) of the Policy.³ GenericTop-Level Domains (“gTLDs”) “.com” are generally disregarded when evaluating the identity or confusing similarity of the complainant’s mark to the disputed domain name under paragraph 4(a)(i) of the Policy, irrespective of any ordinary meaning that might be ascribed to the gTLD.⁴

Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been licensed or otherwise authorized to use the Complainant’s well-known ROPES & GRAY mark. Nevertheless, the Respondent has registered the disputed domain name, which is confusingly similar to the Complainant’s ROPES & GRAY mark and essentially appropriates the Complainant’s mark in its entirety.

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services;

(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Respondent has not submitted a response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. The Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.

The Panel concludes from the record in this case that the Respondent was aware of the Complainant and had the Complainant’s ROPES & GRAY mark firmly in mind when registering the disputed domain name. The Panel further considers that the Respondent in all likelihood registered the disputed domain name with the aim of exploiting and profiting from the Complainant’s well-known mark.

Having regard to the relevant circumstances in this case, and in the absence of any explanation by the Respondent, the Panel finds that the Respondent has neither used nor demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy, and is not making a legitimate noncommercial or fair use of the disputed domain name for purposes of paragraph 4(c)(iii) of the Policy. The Respondent has not been authorized to use the Complainant’s ROPES & GRAY mark, and there is no indication that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. In short, nothing in the record before the Panel supports a claim by the Respondent of rights or legitimate interests in the disputed domain name.

Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.

For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. The Panel finds that the Respondent was aware of the Complainant and the Complainant’s well-known ROPES & GRAY mark when registering the disputed domain name. The Panel concludes that the Respondent in all likelihood registered the disputed domain name seeking to exploit and profit from the Complainant’s distinctive mark.

The Panel notes that the disputed domain name has been used by the Respondent as part of a business email scheme to facilitate wire transfer fraud impacting one of the Complainant’s clients which constitute evidence of bad faith.

Additionally, the Panel considers the following circumstances also to be indicative of the Respondent’s bad faith under Telstra Corporation Limited v. Nuclear Marshmallows, supra. As previously noted, the Complainant’s ROPES & GRAY mark is distinctive and well-known. It is readily apparent that the Respondent was aware of and targeted the Complainant’s mark when registering the disputed domain name. Absent any explanation from the Respondent, the Panel cannot conceive of any plausible good faith use of the disputed domain name that could be made by the Respondent. The Respondent’s conduct in these circumstances suggests opportunistic bad faith.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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 disputed domain name <ropesgrays.com> be transferred to the Complainant.

William R. Towns
Sole Panelist
Date: November 15, 2020

¹ See WIPO Overview 3.0 , section 1.7.

² See WIPO Overview 3.0, section 1.8 and cases cited therein.

³Id.

⁴ See WIPO Overview 3.0, section 1.11.