Complainant is Kramer Law Firm, P.A. Attorneys and Counselors at Law of Maitland, Florida, United States of America, represented by Michael L. Leetzow, P.A., United States of America.
Respondents1 are BOA Online of New York, New York, United States of America; and Mark Heuvel of "Johannesburg", United States of America. 2. The Domain Names and Registrar
The disputed domain names and (the "Disputed Domain Names") are registered with Melbourne IT Ltd (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 26, 2016. On February 26, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On February 27, 2016, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details, and disclosing additional contact information associated with . The Center sent an email communication to Complainant on March 2, 2016 providing the contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on March 3, 2016.
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 Respondent of the Complaint, and the proceedings commenced on March 4, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 24, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on April 1, 2016.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on April 6, 2016. 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 states that it is "a full-service law firm operating out of its offices in Central Florida"; that it "has been in business since 2005"; that it "is a successful law firm that has received numerous accolades and awards, including recognition in U.S. News and World Report's Best Law Firms"; and that it "has extensive name recognition and engages in a multitude of marketing endeavors that include outdoor, print, radio, television and Internet-based marketing."
Complainant states, and provides evidence to support, that it is the owner of a federal trademark registration for a mark that prominently contains the text "KRAMER LAW FIRM", U.S. Reg. No. 4,213,059 (registered September 25, 2012), for use in connection with "legal services" (the "KRAMER LAW FIRM Trademark").
Complainant states, and provides evidence to support, that "[t]he Respondent is soliciting persons located outside the US by email using the email address of […]@ and […]@. The emails are being sent to people to solicit clients with the promise of recovering some $15,812,664.00 from two Bank of America accounts that will be 'confiscated shortly.' However, the targets must first pay $24,000.00 with another $7,000.00 due a later date."
The Disputed Domain Name was created on November 24, 2015; and the Disputed Domain Name was created on January 15, 2016. Neither resolves to an active website. 5. Parties' Contentions A. Complainant
Complainant contends, in relevant part, as follows:
- The Disputed Domain Names are confusingly similar to the KRAMER LAW FIRM Trademark because they "take the main component of Complainant's mark" and "use[] a blatant knock-off of Complainant's registered mark."
- Respondent has no rights or legitimate interests in respect of the Disputed Domain Names because, inter alia, "Respondent is not currently and has never been known under the KRAMER LAW FIRM name to Complainant's knowledge"; Respondent is not related to Complainant's business, is not one of its agents, and does not have any business with it"; "Complainant has never given anyone outside of the law firm permission to register [any] domain name"; Respondent "is apparently using the domain name[s] to support email addresses to send and receive emails in furtherance of its scam"; and "it is clear that [Respondent's] enterprise is to scam the email recipients out of $24,000 under Complainant's name and has, to Complainant's own knowledge already received at least $12,000.00."
- The Disputed Domain Names were registered and are being used in bad faith because "Respondent is using the domain names in email addresses" and "Respondent is using the logo, name and address of the Complainant to illegally acquire funds from unsuspecting people." B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and (iii) the Disputed Domain Names have been registered and are being used in bad faith. Policy, paragraph 4(a). A. Preliminary Issue: Consolidation
The Disputed Domain Names are, nominally, registered to different registrants ( to BOA Online and to Mark Heuvel).
However, given the arguments provided by Complainant, e.g. that the Registrar has verified that both registrants use almost identical email addresses and that both Disputed Domain Names are used for the same purpose, it is clear to the Panel that they are subject to common control.
In these circumstances the Panel accepts Complainant's consolidated Complaint against multiple Respondents, and accordingly will proceed to a decision as to both Disputed Domain Names. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 4.16. B. Identical or Confusingly Similar
Based upon the trademark registration cited by Complainant, it is apparent that Complainant has rights in and to the KRAMER LAW FIRM Trademark.
As to whether the Disputed Domain Names are identical or confusingly similar to the KRAMER LAW FIRM Trademark, the relevant comparison to be made is with the second-level portion of these domain names only (i.e., "kramerlawfirm"), as it is well established that the Top-Level Domain (i.e., ".info" and ".org") may be disregarded for this purpose. See WIPO Overview 2.0, paragraph 1.2 ("The applicable top-level suffix in the domain name (e.g., '.com') would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark.")
Although the U.S. registration for the KRAMER LAW FIRM Trademark cited by Complainant contains design elements, because "figurative, stylized or design elements in a trademark are generally incapable of representation in a domain name, such elements are typically disregarded for the purpose of assessing identity or confusing similarity, with such assessment generally being between the alpha-numeric components of the domain name, and the dominant textual components of the relevant mark." WIPO Overview 2.0, paragraph 1.11. As a result, because the dominant textual component of the registration for the KRAMER LAW FIRM Trademark contains the text "Kramer Law Firm", the panel considers that the Disputed Domain Names are identical or confusingly similar to this text.
Accordingly, the Panel finds that Complainant has proven the first element of the Policy. C. Rights or Legitimate Interests
Complainant has argued that Respondent has no rights or legitimate interests in respect of the Disputed Domain Names because, inter alia, "Respondent is not currently and has never been known under the KRAMER LAW FIRM name to Complainant's knowledge"; Respondent is not related to Complainant's business, is not one of its agents, and does not have any business with it"; "Complainant has never given anyone outside of the law firm permission to register [any] domain name"; Respondent "is apparently using the domain name[s] to support email addresses to send and receive emails in furtherance of its scam"; and "it is clear that [Respondent's] enterprise is to scam the email recipients out of $24,000 under Complainant's name and has, to Complainant's own knowledge already received at least $12,000.00."
Under the Policy, "a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP." WIPO Overview 2.0, paragraph 2.1.
The Panel finds that Complainant has established its prima facie case and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has satisfied the second element of the Policy. D. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy:
(i) circumstances indicating that the respondent has registered or the respondent has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or
(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; or
(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 the respondent's 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 the registrant's website or location. Policy, paragraph 4(b).
In this case, Complainant appears to argue that bad faith exists pursuant to paragraph 4(b)(iv), given that the Disputed Domain Names have been used in connection with what Complainant has described as a scam "to improperly and illegally solicit money from unsuspecting people located in the UK" – something that Respondent has not denied. While this scam is not, as Complainant has noted, a "typical" case of phishing, it is nevertheless clearly a way in which "Internet fraudsters impersonate a business" – something that the U.S. Federal Trade Commission associates with phishing activities.2 Numerous UDRP panels have found such impersonation to constitute bad faith, even if the relevant domain names are used only for email. See, e.g., Terex Corporation v. Williams Sid, Partners Associate,WIPO Case No. D2014-1742 ("Respondent was using the disputed domain name in conjunction with…an email address for sending scam invitations of employment with Complainant"); and Olayan Investments Company v. Anthono Maka, Alahaji, Koko, Direct investment future company, ofer bahar,WIPO Case No. D2011-0128 ("although the disputed domain names have not been used in connection with active web sites, they have been used in email addresses to send scam emails and to solicit a reply to an 'online location'").
Accordingly, the Panel finds that Complainant has proven the third element 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 Names and be transferred to Complainant.
Douglas M. Isenberg
Sole Panelist
Date: April 11, 2016
1 Except where otherwise indicated, the Panel will refer to a single Respondent.
2 "Phishing," Federal Trade Commission, "/articles/0003-phishing" (visited April 11, 2016).
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