Complainant is Baker Botts L.L.P. of Houston, Texas, United States of America, representing itself.
Respondent is Andrian Lewis of Ozone Park, New York, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Directi Internet Solutions Pvt. Ltd., doing business as PublicDomainR (“Directi”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (“Center”) on February 10, 2011. On February 11, 2011, the Center transmitted by email to Directi a request for registrar verification in connection with the disputed domain name. On February 12, 2011, Directi transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing contact information and other details of the registration.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (“Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on February 24, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 16, 2011. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 17, 2011.
The Center appointed Debra J. Stanek as the sole panelist in this matter on March 25, 2011. 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
Complainant, an international United States-based law firm, owns United States federal trademark registrations for the mark BAKER BOTTS and a BAKER BOTTS L.L.P. design mark for legal services. Those registrations issued in 1999 and 2001, respectively. It also owns a Community Trademark registration for the mark BAKER BOTTS, which issued in October 2009, as well as registrations of BAKER BOTTS and BAKER BOTTS L.L.P. in other jurisdictions. Complainant has registered and used the BAKER BOTTS mark in its domain name, , for more than 15 years and has been known as “Baker Botts” or “Baker & Botts” since 1971.
It appears that Respondent registered the disputed domain name, in July 2010. It is not clear whether the name was ever used with an active website; however, Complainant claims that Respondent has used the disputed domain name in email communications with a third party that purport to be from a partner in Complainant’s Hong Kong office, all as part of a scheme to defraud that person. 5. Parties’ Contentions A. Complainant 1. Identical or Confusingly Similar
Complainant is a large international law firm based in the United States. Established in 1840, it is among the United States’ largest law firms and has offices in several foreign countries.
Complainant has been known as “Baker Botts” or “Baker & Botts” since 1971 and owns a United States federal trademark registration for BAKER BOTTS. It also owns trademark registrations for the marks in other jurisdictions. Complainant has registered and used the BAKER BOTTS mark in its domain name, , for more than 15 years.
The disputed domain name is confusingly similar to Complainant’s BAKER BOTTS trademarks. The only difference between Complainant’s mark and the domain name is the omission of the letters “t” and “s” at the end. These differences are not sufficient to distance the domain name from Complainant’s BAKER BOTTS marks or its domain name. 2. Rights or Legitimate Interests
Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. Instead, Respondent is using the domain name to impersonate Complainant or one or more of its lawyers to defraud third parties. Specifically, it appears that Respondent communicated with a third party, representing himself as one of Complainant’s partners, using the partner’s name at a “” email address, and using Complainant’s name and other contact information. In a series of communications, appended to the Complaint, Respondent requested that the third party transfer thousands of dollars to Respondent as “probate fees.”
The Complaint alleges that Respondent has perpetrated similar schemes on other individuals.
Respondent’s use of the domain name does not provide him with any rights or legitimate interests in the domain name. 3. Registered and Used in Bad Faith
Respondent’s activities, which involve impersonation and fraud constitutes bad faith under the Policy. Respondent registered the domain name to exploit Complainant’s reputation and the good will associated with its BAKER BOTTS marks in order to defraud third parties.
Further, Respondent’s “typo-squatting” is per se bad faith registration and use under the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In order to prevail, Complainant must prove, as to the disputed domain name, that:
(i) It is identical or confusingly similar to a mark in which Complainant has rights.
(ii) Respondent has no rights or legitimate interests in respect to it.
(iii) It has been registered and is being used in bad faith.
Policy, paragraph 4(a). The Policy sets out examples of circumstances that may evidence a respondent’s rights or legitimate interests in a domain name, see Policy, paragraph 4(c), as well as circumstances that may evidence a respondent’s bad faith registration and use, see Policy, paragraph 4(b).
Although Respondent has not answered the Complaint, a default does not automatically result in a finding for Complainant. Complainant continues to have the burden of establishing the required elements. The Panel may, however, draw such inferences from Respondent’s default as it considers appropriate. See Rules, paragraph 14(b). A. Identical or Confusingly Similar
Complainant has established its rights in the mark BAKER BOTTS by virtue of the evidence of its United States federal trademark registration.1
Respondent’s domain name differs only as to the deletion of the final two letters “t” and “s”, the elimination of a space, and the addition of the generic top-level domain. The differences due to spacing and the generic top-level domain are not relevant for purposes of this comparison. Complainant concedes that the disputed domain name is not identical to Complainant’s mark but asserts that the differences are not sufficient to differentiate it from its BAKER BOTTS mark. The Panel agrees.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights. B. Rights or Legitimate Interests
The Panel, consistent with the consensus view, finds that a complainant may establish that a respondent has no rights or legitimate interests in respect of a domain name by making a prima facie showing that a respondent lacks rights or legitimate interests. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Question 2.1 (once complainant makes a prima facie case, the burden of showing rights or legitimate interests in the domain name shifts to respondent).
Paragraph 4(c) of the Policy sets out the following examples:
(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 Panel finds that Complainant has made a prima facie showing as to the examples set out in paragraph 4(c) of the Policy. There is no reason to believe, from the WhoIs record or otherwise, that Respondent is or could be known by the disputed domain name. There is no evidence that Respondent is making a fair or noncommercial use of the domain name. The evidence suggests, instead, that Respondent is using it to deceive others into believing that Respondent’s communications are from Complainant. C. Registered and Used in Bad Faith
Complainant must establish that the domain name was registered and is being used in bad faith. The Policy itself sets out four sets of circumstances, evidence of which may establish bad faith, (see Policy, paragraph 4(b)(i)-(iv)):
(1) Registering the domain name primarily to sell it for more than documented out-of-pocket costs (see Policy, paragraph 4(b)(i)).
(2) Registering the domain name to prevent the owner of the trademark from reflecting the mark in a domain name, where there is a pattern of such conduct (see Policy, paragraph 4(b)(ii)).
(3) Registering the domain name primarily to disrupt the business of a competitor (see Policy, paragraph 4(b)(iii)).
(4) Using the domain name to intentionally attempt to attract, for commercial gain, Internet users to [respondent’s] web site or other on-line location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] web site or location or a product or service on [the respondent’s] web site or location, (see Policy, paragraph 4(b)(iv)).
Complainant’s rights in its mark predate Respondent’s registration of the disputed domain name. The email communications submitted by Respondent show that Respondent had actual knowledge of Complainant’s trademark rights and intended for the recipients to believe that the communications were from Complainant when in fact they were not. The evidence also suggests that Respondent is using the disputed domain name as part of a scheme to deceive others into believing that he is providing legal Complainant’s services as part of a scheme to defraud.
The Panel finds that Complainant has established that Respondent has registered and is using the disputed domain name in bad faith. 7. Decision
For all 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, be transferred to the Complainant.
Debra J. Stanek
Sole Panelist
Dated: April 3, 2011
1 Complainant submitted what it represented were copies of its applications to register the mark in Saudi Arabia, which appear to be in Arabic. The language of these proceedings is English. Because, as a general matter, an application to register a trademark does not establish rights in the mark, the Panel did review these documents. However, the Panel calls Complainant’s attention to paragraph 11 of the Rules and suggests that if materials in a language other than the language of the proceeding are sufficiently important to be included with the submission, then they ought to be translated into the language of the proceedings.
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