Winstonandstrawnllp.com, Winstonandstrawn-llp.com

The timeline behind winstonandstrawnllp.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

How each disputed name was decided in this proceeding.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

DECISION Winston & Strawn LLP v Sarah-Jane Bloggs Claim Number: FA1607001684401 PARTIES Complainant is Winston & Strawn LLP (“Complainant”), represented by Paul D. McGrady of Winston & Strawn, Illinois, USA. Respondent is Sarah-Jane Bloggs (“Respondent”), United Kingdom. REGISTRAR AND DISPUTED DOMAIN NAMES The domain names at issue are <winstonandstrawnllp.com> and <winstonandstrawn-llp.com>, registered with CRAZY DOMAINS FZ-LLC. PANEL The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding. Terry F. Peppard as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the Forum electronically on July 18, 2016; the Forum received payment on July 19, 2016. On July 20, 2016, CRAZY DOMAINS FZ-LLC confirmed by e-mail to the Forum that the <winstonandstrawnllp.com> and <winstonandstrawn-llp.com> domain names are registered with CRAZY DOMAINS FZ-LLC and that Respondent is the current registrant of the names. CRAZY DOMAINS FZ-LLC has verified that Respondent is bound by the CRAZY DOMAINS FZ-LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”). On July 22, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 11, 2016 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@winstonandstrawnllp.com, and postmaster@winstonandstrawn-llp.com. Also on July 22, 2016, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts. Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default. On August 17, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding. Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent. RELIEF SOUGHT Complainant requests that the domain names be transferred from Respondent to Complainant. PARTIES' CONTENTIONS A. Complainant Doing business as WINSTON & STRAWN LLP, Complainant is a leading provider of legal services worldwide. Complainant holds a registration for the WINSTON & STRAWN LLP service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) (Registry No. 2,912,355, registered Dec. 21, 2004). Respondent registered the domain name <winstonandstrawnllp.com> on April 14, 2016, and the domain name <winstonandstrawn-llp.com> on May 30, 2016. The domain names are substantively identical to Complainant’s WINSTON & STRAWN LLP mark. Respondent has not been commonly known by the <winstonandstrawnllp.com> and <winstonandstrawn-llp.com> domain names. Respondent does not have permission from Complainant to use the WINSTON & STRAWN LLP mark. Respondent fails to provide a bona fide offering of goods or services by means of the domain names or a legitimate noncommercial or fair use of them. In an attempt to pass Respondent off as Complainant, the websites resolving from the domain names contain fraudulent information purporting to offer legal services to Internet users. Respondent has no rights to or legitimate interests in the domain names. Respondent knew of Complainant and its rights in the WINSTON & STRAWN LLP mark when it registered the domain names. Respondent registered and uses the domain names in bad faith. B. Respondent Respondent failed to submit a Response in this proceeding. FINDINGS (1) the domain names registered by Respondent are substantively identical, and therefore confusingly similar, to a service mark in which Complainant has rights; and (2) Respondent has no rights to or legitimate interests in respect of the domain names; and (3) the same domain names were registered and are being used by Respondent in bad faith. DISCUSSION Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable." Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: i. the domain name registered by Respondent 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. the domain name has been registered and is being used in bad faith. In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept all reasonable allegations and inferences set out in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). See also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.” Identical and/or Confusingly Similar Complainant has rights in the WINSTON & STRAWN LLP service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (finding that a UDRP complainant’s registration of a mark with the USPTO (or any other competent governmental authority) adequately proves its rights in that mark under Policy ¶ 4(a)(i)). This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here the United Kingdom). See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum Aug. 24, 2010): [T]he Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country. Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <winstonandstrawnllp.com> and <winstonandstrawn-llp.com> domain names are substantively identical, and therefore confusingly similar, to Complainant’s WINSTON & STRAWN LLP mark. The domain names contain the mark in its entirety, except for the substitution of the word “and” for the ampersand and the elimination of the spaces between the terms of the mark in each instance, but with the addition of, in the case of <winstonandstrawn-llp.com>, a hyphen, and, in each case, the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in creating the domain names, do not save them from the realm of identity or confusing similarity under the standards of the Policy. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE because: [S]paces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names. See also Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000), finding that: [T]he use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark. Further see Wright & Lato, Inc. v. Epstein, D2000-0621 (WIPO Sept. 2, 2000) (finding the <wrightandlato.com> domain name to be identical to a UDRP complainant’s WRIGHT & LATO mark, because the ampersand symbol (&) is not reproducible in a URL). Rights or Legitimate Interests Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in a disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006): Complainant must … make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names. Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain names. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain names which are cognizable under the Policy. We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the domain names <winstonandstrawnllp.com> and <winstonandstrawn-llp.com>, and that Respondent has not received from Complainant permission to use the WINSTON & STRAWN LLP mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain names only as “SARAH-JANE BLOGGS,” which does not resemble the domain names. On this record, we conclude that Respondent has not been commonly known by either of the contested domain names so as to have acquired rights to or legitimate interests in either of them within the purview of Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that a respondent was not commonly known by the <chevron-europe.com> domain name, and so failed to show that it had rights to or legitimate interests in it as provided in Policy ¶ 4(c)(ii), where, among other things, the relevant WHOIS information identified “Fred Wallace” as the registrant of that domain name). We next observe that Complainant contends, without objection from Respondent, that Respondent fails to use either of the <winstonandstrawnllp.com> and <winstonandstrawn-llp.com> domain names to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use, in that their resolving websites contain fraudulent information purporting to offer legal services to Internet users in an attempt to pass Respondent off as Complainant. This employment of the domain names, which we may comfortably presume is done for Respondent’s illicit financial gain, is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See, for example, Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007): Because respondent in this case is also attempting to pass itself off as complainant, presumably for financial gain, the Panel finds the respondent is not using the … domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii). Registration and Use in Bad Faith We are persuaded by the evidence that Respondent’s use of the disputed <winstonandstrawnllp.com> and <winstonandstrawn-llp.com> domain names, as alleged in the Complaint, disrupts Complainant’s business. Under Policy ¶ 4(b)(iii), this stands as proof of Respondent’s bad faith in registering and using the domain names. See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum December 28, 2005): Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). We are also convinced by the evidence that Respondent registered and uses the <winstonandstrawnllp.com> and <winstonandstrawn-llp.com> domain names, which we have found to be substantively identical, and therefore confusingly similar, to Complainant’s WINSTON & STRAWN LLP mark, to attempt to profit commercially from the confusion thus caused among Internet users as to the possibility of Complainant’s affiliation with the domain names. Under Policy ¶ 4(b)(iv), this too is proof of Respondent’s bad faith in registering and using the domain names. See Tower Labs. Ltd. v. Seltzer, FA 791325 (Forum Oct. 16, 2006) (concluding, under Policy ¶ 4(b)(iv), that a respondent registered and was using the domain name <bromoseltzer.com> in bad faith because it displayed a logo similar to a UDRP complainant’s BROMO SELTZER mark, which was likely to confuse the public as to the source of the material exhibited at that respondent’s website). Finally, under this head of the Policy, it is evident that Respondent registered the <winstonandstrawnllp.com> and <winstonandstrawn-llp.com> domain names while knowing of Complainant and its rights in the WINSTON & STRAWN LLP mark. This further demonstrates Respondent’s bad faith in registering the domain names. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (finding bad faith registration of a contested domain name where there was evidence of a respondent’s knowledge of a UDRP complainant and its mark “through the name used for the domain and the use made of it.”). For all of these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii). DECISION Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED. Accordingly, it is Ordered that the domain names <winstonandstrawnllp.com> and <winstonandstrawn-llp.com> be TRANSFERRED forthwith from Respondent to Complainant. Terry F. Peppard, Panelist Dated: August 26, 2016 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.