K-slaw.com

The timeline behind k-slaw.com

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

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

NATIONAL ARBITRATION FORUM DECISION King & Spalding LLP v. john brown / InWAUH Claim Number: FA2407002107904 PARTIES Complainant is King & Spalding LLP ("Complainant"), represented by Kathleen E. McCarthy of King & Spalding LLP, New York, USA. Respondent is john brown / InWAUH ("Respondent"), Minnesota, USA. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <k-slaw.com>, registered with NameCheap, Inc.. PANEL The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding. Richard Hill as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to Forum electronically on July 24, 2024; Forum received payment on July 24, 2024. On July 24, 2024, NameCheap, Inc. confirmed by e-mail to Forum that the <k-slaw.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 25, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 14, 2024 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@k-slaw.com. Also on July 25, 2024, 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, Forum transmitted to the parties a Notification of Respondent Default. On August 15, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Richard Hill as Panelist. Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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 name be transferred from Respondent to Complainant. PARTIES' CONTENTIONS A. Complainant Complainant states that it is an international law firm founded in 1885 that represents a broad array of clients, including half of the Fortune Global 100, with more than 1,300 lawyers in 23 offices globally. The firm has handled matters in over 160 countries on six continents and is consistently recognized for the results it obtains and dedication to understanding the business and culture of its clients. Complainant has offered legal services in commerce in the United States under the well-known KING & SPALDING trademark since at least as early as 1962. Complainant has used and promoted the domain name <kslaw.com> for its main website advertising its services and on its marketing and promotional materials since at least as early as 1996. Complainant asserts rights in the K&S mark through its registration in the United States in 2023. It also asserts common law rights in the mark KSLAW. Complainant alleges that the disputed domain name is confusingly similar to its K&S mark because it incorporates the mark (replacing the ampersand with a hyphen) and merely adds the generic/descriptive term "law" together with the ".com" generic top level domain ("gTLD"). It also alleges that the disputed domain name is confusingly similar to its KSLAW mark because it consists of the mark, with the mere addition of a hyphen and the ".com" gTLD. Complainant cites UDRP precedents to support its position. According to Complainant, Respondent lacks rights or legitimate interests in the disputed domain name as there is no affirmative evidence that Respondent is commonly known by the disputed domain name and Complainant has not authorized or permitted Respondent to use its marks. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use. Instead, the disputed domain name is used in furtherance of a fraudulent email phishing scheme. Specifically, Respondent used the disputed domain name to send emails impersonating Complainant's employees and partners, attaching doctored invoices in an effort to divert payments owed to Complainant to Respondent and to trick recipients into believing that they are communicating with Complainant when they are not. The signature block of the fraudulent emails displays Complainant's mark and distinctive logo, and the actual address of one of Complainant's offices. Complainant cites UDRP precedents to support its position. Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith. Respondent uses the disputed domain name to pass off as Complainant in furtherance of a fraudulent email phishing scheme. Respondent had actual knowledge of Complainant's rights in its marks. Complainant cites UDRP precedents to support its position. B. Respondent Respondent failed to submit a Response in this proceeding. FINDINGS Complainant has rights in the mark K&S dating back to 2023, and common law rights in the mark KSLAW that predate the registration of the disputed domain name. Complainant uses its marks to provide legal services. The disputed domain name was registered in 2024. Complainant has not licensed or otherwise authorized Respondent to use its marks. The disputed domain name is used in furtherance of a fraudulent email phishing scheme. The signature block of the fraudulent emails displays Complainant's mark and distinctive logo, and the actual address of one of Complainant's offices. DISCUSSION Paragraph 15(a) of the Rules instructs this Panel to "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 requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (2) Respondent has no rights or legitimate interests in respect of the domain name; and (3) 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 shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) ("Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint"). Identical and/or Confusingly Similar The disputed domain name incorporates Complainant's K&S mark (replacing the ampersand with a hyphen) and merely adds the generic/descriptive term "law" together with the ".com" generic top level domain ("gTLD"). Such changes are not sufficient to distinguish the disputed domain name from the mark under Policy ¶ 4(a)(i). See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) ("Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element."); see also Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Forum Nov. 18, 2005) (holding that the addition of both the word "advisors" and the gTLD ".com" did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i)); see also McKinsey Holdings, Inc. v. Indidom, D2000-1616 (WIPO Jan. 31, 2001) (finding that the removal of the ampersand from "McKinsey & Company" does not affect the user's understanding of the domain name, and therefore the domain name <mckinseycompany.com> is identical and/or confusingly similar to the mark "McKinsey & Company"); see also Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Forum Apr. 24, 2000) (finding that punctuation is not significant in determining the similarity of a domain name and mark). Therefore the Panel finds that the disputed domain name is confusingly similar to Complainant's mark under Policy ¶ 4(a)(i). Complainant asserts common law rights in its KSLAW mark. Common law rights are sufficient to establish rights in a mark under Policy ¶ 4(a)(i). See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark). Common law rights may be established through evidence of secondary meaning in the mark such as longstanding use, evidence of an identical domain name, media recognition, and promotional material and advertising. See Marquette Golf Club v. Al Perkins, 1738263 (Forum July, 27, 2017) (finding that Complainant had established its common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including "longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising."). Here, Complainant registered the domain name <kslaw.com>, and has used it since 1996 to market and to provide legal services. Prior panels have found that Complainant has established common law rights in the mark KSLAW. See King & Spalding LLP v. John Valmont / K AND S, FA2212002024847 (Forum Jan. 24, 2023); see also King & Spalding LLP v. Speed Express / Speedy Express Logistics Company LTD., FA2312002076282 (Forum Jan. 18, 2024). Therefore, the Panel finds that Complainant has established common law rights in its KSLAW mark, with rights predating the first registration of the disputed domain name. The disputed domain name consists of Complainant's KSLAW mark, with the mere addition of a hyphen and the ".com" gTLD. Such changes are not sufficient to distinguish the disputed domain name from the mark under Policy ¶ 4(a)(i). See also Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Forum Apr. 24, 2000) (finding that punctuation is not significant in determining the similarity of a domain name and mark). Therefore the Panel finds that the disputed domain name is confusingly similar to Complainant's KSLAW mark under Policy ¶ 4(a)(i). Further, according to 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Jurisprudential 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 such as website content trading off the complainant's reputation, … may support a finding of confusing similarity." Here, Complainant provides evidence showing that the disputed domain name is used in a way that may lead users believe that Respondent is somehow affiliated with Complainant. This supports the side-by-side comparisons above. Rights or Legitimate Interests Respondent is neither an authorized user nor licensee of Complainant's mark. Respondent it is not commonly known by the disputed domain name: under Policy ¶ 4(c)(ii), relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named "Fred Wallace" as registrant of the disputed domain name). Here, the WHOIS information of record indicates that the disputed domain name was registered by "john brown / InWAUH". Thus the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). Complainant presents evidence showing that Respondent uses the disputed domain name in furtherance of a fraudulent email phishing scheme. Specifically, Respondent used the disputed domain name to send emails impersonating Complainant's employees and partners, attaching doctored invoices in an effort to divert payments owed to Complainant to Respondent and to trick recipients into believing that they are communicating with Complainant when they are not. Panels have found such use by a respondent consists of neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Morgan Stanley v. Zhange Sheng Xu / Zhang Sheng Xu, FA1501001600534 (Forum February 26, 2015) ("The Panel agrees that the respondent's apparent phishing attempt provides further indication that the respondent lacks any rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii)."); see also Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Forum Apr. 30, 2010) ("The Panel finds that Respondent's attempt to "phish" for users' personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)."). Therefore, the Panel finds that Respondent's use of the disputed domain name constitutes neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). And the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name. Registration and Use in Bad Faith Respondent (who did not reply to Complainant's contentions) has not presented any plausible explanation for its use of Complainant's mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent's failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name. Indeed, as already noted, Respondent uses the disputed domain name in furtherance of a fraudulent email phishing scheme. This is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See Yahoo! Inc. v. Kalra, FA 1650447 (Forum Dec. 31, 2015); Qatalyst Partners LP v. Devimore, FA 1393436 (Forum Jul. 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use.); see also National Oilwell Varco, L.P. v. Craig Wood/NOV, FA 1575951 (Forum Sept. 22, 2014) (finding bad faith where respondent fraudulently attempted to induce wire transfers by sending e-mails purporting to be from complainant's President and CEO); see also Capital One Financial Corporation and Capital One Bank v. Austin Howel, FA 289304 (Forum Aug. 11, 2004) (finding bad faith where respondent used complainant's mark to fraudulently induce transfer of credit and personal identification information). Consequently, the Panel finds that Respondent registered and is using the disputed domain name in bad faith per Policy ¶ 4(b)(iii). Further, Respondent registered the disputed domain name with actual knowledge of Complainant's mark: the signature block of the fraudulent emails displays Complainant's mark and distinctive logo, and the actual address of one of Complainant's offices. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant's rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy."); see also Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) ("The Panel notes that although the UDRP does not recognize 'constructive notice' as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it."); see also Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). The Panel finds that Respondent had actual knowledge of Complainant's rights in the mark prior to Respondent's registration of the disputed domain name and that this too constitutes bad faith under Policy ¶ 4(a)(iii). DECISION Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED. Accordingly, it is Ordered that the <k-slaw.com> domain name be TRANSFERRED from Respondent to Complainant. Richard Hill, Panelist Dated: August 15, 2024 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.