WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Jones Day v. Name Redacted

Case No. D2020-3130

1. The Parties

The Complainant is Jones Day, United States of America (“United States”), internally represented.

The Respondent is Name Redacted¹.

2. The Domain Name and Registrar

The disputed domain name <jonesday-law.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 November 20, 2020. On November 23, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 24, 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 November 25, 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 November 30, 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 December 1, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 21, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 24, 2020.

The Center appointed Cherise Valles as the sole panelist in this matter on January 11, 2021. 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

Tracing its beginnings to 1893 in Cleveland, Ohio, United States, the Complainant is a global law firm with more than 40 offices in major centers of business and finance throughout the world. The Complainant has more than 2,500 lawyers, including more than 550 lawyers in Europe, and ranks among the world’s largest law firms. In the United States, the Complainant has offices in Atlanta, Georgia; Boston, Massachusetts; Chicago, Illinois; Cleveland, Ohio; Columbus, Ohio; Dallas, Texas; Detroit, Michigan; Houston, Texas; Irvine, California; Los Angeles, California; Miami, Florida; Minneapolis, Minnesota; New York, New York; Pittsburgh, Pennsylvania; San Diego, California; San Francisco, California; Silicon Valley, California; and Washington, D.C. Jones Day has nine offices in Europe, ten offices in Asia and the Pacific, two offices in the Middle East, and two offices in Latin America.

The Complainant provides legal representation to members of the Fortune 500, Fortune Global 500, and FT Global 500. It also serves privately held companies, financial institutions, investment firms, health care providers, retail chains, foundations, educational institutions, and individuals.

The Complainant has repeatedly earned the “#1 for Client Service” ranking by The BTI Consulting Group, an organization that monitors client satisfaction with legal services. The annual ranking is based on independent, individual interviews with more than 300 Fortune 1000 general counsel.

Since at least as early as July 1983, the Complainant has used the service mark JONES DAY to identify the legal services the firm provides. The firm has used the service mark JONES DAY in commerce in various other forms since at least 1939. The Complaiannt is the owner of, among others, two United States Service Mark Registrations for the mark JONES DAY, United States Reg. Nos. 2212877 (registered on December 22, 1998) and 2316539 (registered on February 8, 2000), for use in connection with “legal services” (collectively, the “JONES DAY Marks”).

As a result of the high quality of legal services it has provided to its clients for more than a century and its reputation as one of the premier law firms in the world, the Jones Day name and service marks have become valuable assets and are famous. According to Acritas’ annual Global Elite Law Firm Brand Index 2020, Jones Day’s brand strength worldwide is among the top five law firms.

Jones Day owns and operates an interactive Internet website featuring the legal services it provides, and the attorneys who provide them. Since September 30, 1997, Jones Day has owned and operated its interactive Internet website at the domain name <jonesday.com>.

The disputed domain name <jonesday-law.com> was registered on November 6, 2020. The disputed domain name resolves to a pay-per-click website, hosting multiple revolving links to third-party websites, and the Complainant has provided evidence that the disputed domain name has been used in connection to a fraudulent scheme.

5. Parties’ Contentions

A. Complainant

After the disputed domain name was registered, the Complainant discovered that the Respondent had registered the disputed domain name, which incorporates the JONES DAY mark in its entirety, without authorization from the Complainant. The Complainant found out that the Respondent had registered and used the disputed domain name when it was contacted by a third party targeted as part of a phishing campaign in which one or more individuals or entities used the Jones Day name and impersonated a Jones Day lawyer to induce a transfer of money. The phishing campaign in question was purportedly carried out by an employee of the Complainant using an email address associated with the disputed domain name. However, the employee of the Complainant is not connected with the disputed domain name nor does the email address bear any relation to the employee’s legitimate email address. Neither the employee nor the Complainant contacted the third party in connection with any request to transfer money.

The Complainant asserts that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisfied. In particular, the Complainant asserts that:

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

- The disputed domain name is confusingly similar to the Complainant’s registered JONES DAY trademarks, in light of the fact that it wholly incorporates the Complainant’s mark.

The Respondent lacks rights or legitimate interests in the disputed domain name.

- The Complainant states that the Respondent should be considered as having no rights or legitimate interests in the disputed domain name. The Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name that included its trademarks.

The disputed domain name has been registered and is being used in bad faith.

- The Complainant asserts that the disputed domain name was registered and is being used in bad faith. The mere fact of registration of a domain name that is confusingly similar or identical to a famous trademark by an entity that has no relationship to that mark is itself evidence of bad faith registration and use. Furthermore, the Respondent’s fraudulent use of the disputed domain name is clear evidence of bad faith.

The Complainant requests the Panel to issue a decision finding that the disputed domain name be transferred to the Complainant, in accordance with paragraph 4(i) of the Policy.

B. Respondent

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

6. Discussion and Findings

The Policy provides specific remedies to trademark owners against registrants of domain names where the owner of the mark (a complainant) establishes each of the following elements:

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

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

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

The Complainant has the burden of proof in establishing each of these elements.

The Respondent has failed to file a Response in this proceeding. The Panel may draw appropriate inferences from the available evidence submitted by the Complainant.

A. Identical or Confusingly Similar

To prove this element, the Complainant must have trademark rights and the disputed domain name must be identical or confusingly similar to the Complainant’s trademark.

By virtue of its trademark registrations, the Complainant is the owner of the JONES DAY trademarks. SeeWIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 1.2.1, which states that “[w]here the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case”.

The disputed domain name incorporates the JONES DAY trademark in its entirety, with the addition of the term “law”. The addition of the term “law” does not prevent a finding of confusing similarity between the JONES DAY Marks and the disputed domain name. WIPO Overview 3.0 states at section 1.8 that “[w]here the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”.

It is standard practice when comparing a disputed domain name to a complainant’s trademark not to take the extension into account. See WIPO Overview 3.0 at section 1.11.1, which states that the “applicable Top Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and, as such, is disregarded under the first element of the confusing similarity test”.

In the light of the foregoing, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark and that paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy enumerates three non-exclusive ways in which a respondent may demonstrate rights or legitimate interests in a domain name (with “you” referring to the respondent):

“[a]ny of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

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

(ii) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are 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 did not submit a Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b).

Previous UDRP panels have held that the complainant must establish a prima facie case that respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production to respondent. See The American Automobile Association, Inc. v. PrivacyProtect.org/Domain Tech Enterprises, et al., WIPO Case No. D2011-2202, noting that a complainant need only show a prima facie case that respondent lacks rights or legitimate interests in a disputed domain name in order to shift the burden of production to respondent. If the respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

The Complainant claims that the Respondent is not commonly known by the disputed domain name. Moreover, it submits that there is no relationship or affiliation between the Complainant and the Respondent that gives rise to any license, permission, or other right by which the Respondent could own or use any domain name incorporating the Complainant’s registered trademark JONES DAY. The Complainant states that the Respondent is not a licensee of or otherwise affiliated with it, and that the Complainant has never authorized or otherwise condoned or consented to the Respondent’s registration of the disputed domain name. See Guerlain S.A. v. SL, Blancel Web, WIPO Case No. D2000-1191, which concluded that lackof any license or permission from complainant to use its marks contributed to a finding that complainant established prima facie evidence that respondent had no rights or legitimate interest in the domain name <missguerlain.com>.

There is no evidence that the Respondent is using, or has made demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods and services. Instead, the information submitted in Annex 7 shows that the website and email address(es) associated with the disputed domain name have been used in an effort to carry out fraud against third parties. Such use is inherently deceptive as Internet users are led to believe that emails associated with the disputed domain name are coming from the Complainant, through the use of both the disputed domain name and the impersonation of an employee of the Complainant.

In addition, the information contained in Annex 8 shows that the website associated with the disputed domain name has been used as an illegitimate pay-per-click landing page for the Respondent’s commercial gain. See Fontem Holdings 4, B.V. v. J-B-, Limestar Inc., WIPO Case No. D2016-0344, which found that use of a domain name for parking page displaying pay-per-click links for a variety of goods and services cannot constitute a bona fide offering of goods or services nor legitimate noncommercial or fair use, as respondent is unduly profiting from value attached to a complainant’s trademarks. Such use has been repeatedly found not to constitute bona fide commercial use of a domain name. See also Educational Testing Service v. Eunho Hwang, WIPO Case No. D2017-0993.

The Respondent is not commonly known by the disputed domain name, which evinces a lack of rights or legitimate interests. The Respondent does not make use of a business name, which includes the term “jonesday” nor has the Respondent registered any trademarks incorporating this term. There has never been any relationship between the Complainant and the Respondent. The Respondent is not licensed, or otherwise authorized, be it directly or indirectly, to register or use the Complainant’s trademarks in any manner whatsoever, including in, or as part of, the disputed domain name.

In light of the foregoing, the Panel finds that the Complainant has established an unrebutted prima facie case and concludes that paragraph 4(a)(ii) of the Policy is satisfied.

C. 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 documented out-of-pocket costs directly related to the domain name;

(ii) the respondent has 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;

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

(iv) by using the domain name, the respondent has intentionally attempted 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 term “bad faith” is “broadly understood to occur where a respondent takes unfair advantage of, or otherwise abuses, a complainant’s mark”. WIPO Overview 3.0, section 3.1.

Previous UDRP panels have found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. WIPO Overview 3.0, section 3.1.4. As held by previous UDRP panels, “registration of a well-known trademark as a domain name is a clear indication of bad faith itself”. See The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113.

The Complainant’s rights in the JONES DAY trademarks predate the Respondent’s registration of the disputed domain name. Previous panels have found that “[t]he similarity between the disputed domain name and the Complainant’s well-known mark make it highly implausible that Respondent’s registration of a confusingly similar domain name was not an intentional effort to capitalize on or otherwise take advantage of the likely confusion with Complainant’s trademark rights”. Ropes & Gray LLP v. David Turcotte, WIPO Case No. D2017-2474. The Panel takes note of the fact that the JONES DAY Marks are well known worldwide, and that the Respondent registered the disputed domain name in 2020, more than 125 years after the Complainant was founded, more than 35 years after the Complainant began using the JONES DAY Marks, more than 20 years after the Complainant first registered the JONES DAY Marks, and more than 20 years after the Complainant’s registration of the domain name <jonesday.com>. The Panel concludes that the Respondent must have been aware of the Complainant’s rights at the time it registered the disputed domain name, in particular because the disputed domain name contains the JONES DAY trademark, along with the term “law”. The mere registration of the disputed domain name by the Respondent creates a presumption of bad faith in these circumstances.

The Respondent created an email address in an attempt to impersonate the Complainant, mislead consumers, and profit from the Complainant’s goodwill and reputation, which constitutes evidence of bad faith. See, e.g., Groupe Lactalis v. John Kleedofer/Privacy Protection Service INC d/b/a Privacy Protect.org, WIPO Case No. D2014-0133, which held that “the use of the disputed domain name in connection with fraudulent emails sent to third parties in an attempt to solicit and attempt to engage in business transactions mimicking the Complainant can indeed mislead Internet users for commercial gain by profiting from the similarity between the disputed domain name and the Complainant’s mark”. See Minerva S.A. v. TT Host, WIPO Case No. D2016-0384 and Minerva S.A. v. Whoisguard Protected, Whoisguard, Inc./Greyhat Services, WIPO Case No. D2016-0385, each of which ordered the transfer of the disputed domain name through which email addresses were created for the purpose of sending fraudulent emails in an attempt to create a likelihood of confusion between the respondent and the complainant.

The disputed domain name was used to create an email address using the name of an employee of the Complainant. The use of JONES DAY Marks in the disputed domain name by the impersonated employee leads to the conclusion that the disputed domain name was registered and used, together with the email address, with the intent to deceive Internet users, including email recipients, into believing that the email address was associated with the Complainant. The Respondent impersonated the Complainant in an attempt to unduly profit from the Complainant’s substantial goodwill and reputation. Therefore, the Respondent’s use of an email address containing the disputed domain name to send fraudulent communications constitutes evidence of bad faith.

The Respondent’s registration and use of the disputed domain name constitutes bad faith registration and use. The Respondent intentionally attempted to attract, for commercial gain, Internet users to the website associated with the disputed domain name, by creating a likelihood of confusion with JONES DAY Marks as to the source, sponsorship, affiliation, or endorsement of the webpage and email address associated with the disputed domain name. As previously noted, the Respondent attempted to confuse at least one third party targeted by an apparent phishing campaign into believing that emails associated with the disputed domain name were being sent by an actual Jones Day lawyer to encourage a transfer of money. It appears that the Respondent intended to cause confusion among Internet users, and particularly among recipients of messages sent from an email address associated with the disputed domain name.

Furthermore, the Respondent’s use of the disputed domain name to profit from pay-per-click advertising revenue amounts to bad faith registration of the disputed domain name for commercial gain. Given that the disputed domain name previously redirected users to third-party sites that have no apparent relationship to the Complainant or to the JONES DAY Marks, the Panel infers that the Respondent was redirecting traffic to these third-party websites in exchange for a fee. See Pfizer Inc v. lipidor.com DNS Services, WIPO Case No. D2003-1099, which drew a “reasonable inference” that the respondent was redirecting traffic in exchange for a fee.

The Complainant sent the Respondent a letter demanding that the Respondent stop using the disputed domain name and to transfer the disputed domain name to the Complainant. The Respondent has failed to respond to this demand letter. A failure to respond to such communications also supports a finding of bad faith. See Giorgio Armani S.p.A. Milan Swiss Branch Mendrisio v. Lizhen Ye, WIPO Case No. D2013-0808.

Therefore, under the circumstances, the failure by the Respondent to respond to the Complainant’s demand letter constitutes further evidence of bad faith.

The Panel determines that the disputed domain name has been registered and is being used in bad faith, as the Respondent is intentionally attempting to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of the website.

Accordingly, the Panel concludes that the Complainant has satisfied its burden of showing bad faith registration and use of the disputed domain name under 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 <jonesday-law.com> be transferred to the Complainant.

Cherise Valles
Sole Panelist
Date: January 25, 2021

¹ The Respondent appears to have used the name of a third party when registering the disputed domain name. In light of the potential identity theft, the Panel has redacted the Respondent’s name from this decision. However, the Panel has attached as Annex 1 to this decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name of the Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this decision shall not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v. FAST‑12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788.