WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Greenberg Traurig LLP v. Domain Admin, Whois Privacy Corp.

Case No. D2020-2695

1. The Parties

The Complainant is Greenberg Traurig LLP, United States of America (“United States” or “US”), internally represented.

The Respondent is Domain Admin, Whois Privacy Corp., Bahamas.

2. The Domain Name and Registrar

The disputed domain name <gtlaw-boston.com> is registered with Internet Domain Service BS Corp (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 15, 2020. On October 15, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 16, 2020, 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.

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 October 19, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 8, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 9, 2020.

The Center appointed Emre Kerim Yardimci as the sole panelist in this matter on November 13, 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 a multi-practice law firm with more than 2,200 attorneys across 40 offices in the United States, Latin America, Europe, Asia, and the Middle East. The Complainant also has an office in Boston, United States.

The Complainant has been using the trademarks GREENBERG TRAURIG and GT continuously since late 1967 and 2008 respectively. The Complainant holds many service mark registrations in several countries, including US Registration Number 4,790,133 for the trademark GT, registered on August 11, 2015, covering legal services in class 45 and indicating a date of first use of December 31, 2008, and International Registration no. 1240800 for the trademark GT GREENBERG TRAURIG, registered on February 2, 2015, covering legal services in class 45. The Complainant has been using its registered domain name <gtlaw.com> to feature its website, which prominently features its GT and GREENBERG TRAURIG trademarks. Along with the above-referenced trademark registrations, Complainant also holds US Registration Number 2,810,539 for the trademark GREENBERG TRAURIG, registered on February 3, 2004, covering legal services in class 42.

The disputed domain name was created on May 14, 2020. At the time the Complaint was filed, the website was providing related links to different kind of legal services. At the time of writing this decision, the disputed domain name is inactive. According to the current record, the Respondent is domiciled in Bahamas.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the disputed domain name is confusingly similar to the Complainant’s trademark GT and that the addition of the geographical term “boston” reinforces the association between the disputed domain name and the Complainant’s trademark as Internet users will likely assume that the disputed domain name is used for the law office in Boston where the Complainant has already an office.

The Complainant considers that the Respondent has no rights or legitimate interests in respect of the disputed domain name, mainly because the Complainant has neither licensed nor otherwise authorized the Respondent to use its marks or to apply for or use any domain name incorporating the trademark GT.

The Complainant further underlines that the Respondent is not commonly known by the disputed domain name and is not using the disputed domain name in connection with a bona fide offering of goods or services, as the Respondent has hidden its identity by using privacy shield and that the disputed domain name resolves to a website promoting services which compete directly with the Complainant’s services and which could be easily confused with those offered by the Complainant.

Finally, in addressing the question of registration and use of the disputed domain name in bad faith, the Complainant observes that the Respondent is well aware of the Complainant’s trademark considering that, according MX records, the Respondent created e-mail address “[...]@gtlaw-boston.com” impersonating an attorney of Complainant’s Boston office. The Complainant further underlines that the Respondent used the above mentioned phony e-mail address for submitting take down notices to Amazon.com

The fact that the website does not provide any information on the true identity of the website provider and that the Respondent created a phony e-mail address clearly shows that the Respondent intentionally creates the impression that the services and the links offered on the Respondent’s website are provided for misleading users on the source of the website and thereby attract, for commercial gain, Internet users to the website.

B. Respondent

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

6. Discussion and Findings

6.1. Effect of the Default

Paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.

As there are no exceptional circumstances for the failure of the Respondent to submit a formal Response, the Panel infers that the Respondent does not deny the facts asserted and contentions made by the Complainant. Therefore, asserted facts that are not unreasonable will be taken as true and the Respondent will be subject to the inferences that flow naturally from the information provided by the Complainant. Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441.

6.2 Discussion and Findings

According to paragraph 15(a) of the Rules: “A panel shall 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 directs that the Complainant must prove each of the following:

(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and,

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

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. As indicated above, the element “GT” is the distinctive part of the Complainant’s trade name since 2008 at least and the Complainant holds several trademark registrations for GT.

As per WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) section 1.7, the test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.

The disputed domain name <gtlaw-boston.com> integrates the Complainant’s GT trademark as a dominant element and the addition of the words “law” and “boston” does not prevent a finding of confusing similarity as per section 1.8 of the WIPO Overview 3.0. While the word “law” is descriptive with respect to the legal services, the sector in which Complainant operates, the word “boston” only refers to a designation of the geographical location. Accordingly, the Panel finds that the Complainant’s GT trademark is recognizable within the disputed domain name.

Moreover, as per section 1.7 of the WIPO Overview 3.0, in specific limited instances, while not a replacement as such for the typical side-by-side comparison, where a panel would benefit from affirmation as to confusing similarity with the complainant’s mark, the broader case context may support a finding of confusing similarity. As noted below, the disputed domain name has been used to impersonate an attorney of Complainant’s Boston office. Accordingly, the Panel finds that the disputed domain name was chosen by the Respondent to target the Complainant.

As regards the generic Top-Level Domain “.com”, it is typically disregarded under the confusing similarity test.

Consequently, the Panel finds that the Complainant has shown that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights and satisfied the requirement under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has alleged that the Respondent has not indicated any sort of legitimate reason for having registered the disputed domain name and has not provided any plausible bona fide reason for having it registered.

The Complainant has made a prima facie case in support of its allegations and, therefore, the burden of production shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating that it does have rights or legitimate interests in the disputed domain name, according to paragraph 4(a)(ii) of the Policy.

The Respondent did not reply to the Complainant’s contentions and, therefore, did not submit any evidence of rights or legitimate interests over the disputed domain name in accordance with paragraph 4(c) of the Policy.

Moreover, it appears from the content of the “www.gtlaw-boston.com” website that the Respondent is not making a legitimate noncommercial or fair use; on the contrary, it appears that the Respondent is using the disputed domain name by providing links to different kind of legal services and that the Respondent has fraudulently created a phony e-mail address by impersonating a lawyer of the Complainant’s Boston Office and submitted take down notices to Amazon.com.

Therefore, the Respondent is using the disputed domain name in a misleading way for its own commercial gain by taking unfair advantage of the Complainant’s trademark at issue and at the same time is damaging the Complainant’s reputation.

The Complainant, having made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, which remains unrebutted, has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Considering the Panel’s finding under the second element, the Panel finds that the registration and use of the disputed domain name falls under the circumstances described under paragraph 4(b)(iv) of the Policy, namely, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by seeking to create a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. Moreover, as per section 3.4 of the WIPO Overview 3.0, the Panel finds that the fraudulent email scheme to which the disputed domain name has been used is clear evidence of bad faith.

Lastly, the Panel observed that the Respondent used a privacy shield. While the Respondent’s use of a privacy service will not in itself constitute bad faith under the Policy, the Panel may still take it into account and draw adverse inferences. The use of the privacy shield in this case together with other elements gives rise to the suspicion that the privacy shield was used to mask the identity of the true registrant and to obstruct proceedings commenced under the Policy.

In the view of all above, there is no doubt that the Respondent knew the Complainant’s trademark at the time of the registration and tried to take unlawful advantage from it through the use of the disputed domain name. The Panel is persuaded that the Respondent’s registration and use of the disputed domain name constitute bad faith registration and use of the disputed domain name.

Therefore, in the view of cumulative circumstances, the Panel finds that the requirement of registration and use in bad faith is satisfied, according to the Policy, paragraph 4(a)(iii).

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 <gtlaw-boston.com> be transferred to the Complainant.

Emre Kerim Yardimci
Sole Panelist
Date: December 7, 2020