The Complainant is Dunn and Dunn, P.C. (aka Charles Dunn Law, P.C.) of Boston, Massachusetts, United States of America, represented by Christopher R. Lavoie, United States of America.
The Respondent is W P, The Cloud Corp of George Town, Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 1, 2018. On February 2, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 6, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 February 12, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 4, 2018. The Respondent sent several email communications to the Center on March 21, 23 and 27, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 5, 2018.
The Center appointed Nicholas Smith as the sole panelist in this matter on March 21, 2018. 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
The Complainant is a professional corporation under the laws of the Commonwealth of Massachusetts, established on February 23, 1998. It operates as a law firm. On December 12, 2000 it registered the Domain Name from which it operated a website until January 23, 2018. The Complainant apparently does not own any registered trade marks but has used the company name Charles J. Dunn, Jr. P.C. since February 1998.
The Domain Name was acquired by the Respondent on January 23, 2018. It presently redirects to an inactive website but prior to the commencement of the proceeding redirected to a website (“Respondent’s Website”) providing pornographic material. In January 2018 a representative of the Complainant inquired about the purchase of the Domain Name, which was offered for sale for 9,800 dollars (presumably US dollars). 5. Parties’ Contentions A. Complainant
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant registered the Domain Name in December 2000. The Complainant holds no registered trade marks but has used the company name of Charles J. Dunn Jr. P.C. since February 1998 in connection with its operation of a law firm. The Domain Name was used for a website advertising the Complainant’s services and was also placed on the Complainant’s stationary, business cards, and other marketing material. Since the Respondent took over the Domain Name the Domain Name has redirected to pornographic sites. The Respondent has offered to sell the Domain Name to the Complainant for USD 9,800.
There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Respondent has a well-documented history of purchasing domain names for profit and has no intent to use the Domain Name in connection with a bona fide offering of goods and services; rather he is using the Domain Name for a pornographic website.
The Domain Name was registered and is being used in bad faith. The Respondent is a well-known cybersquatter who purchased the Domain Name to extort money from the Complainant. This amounts to bad faith registration and use under the Policy. B. Respondent
Following the appointment of the Panel, on March 22, 2018, the Respondent sent several emails which inter alia requested that the case be dismissed on the basis that the Complainant had let its registration of the Domain Name expire, refused to purchase the Domain Name from the Respondent, and that the Respondent had never used the Domain Name in any manner.
The Respondent did not otherwise reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant seeks to assert trade mark rights in its name Charles J. Dunn Jr. P.C. (the “Dunn Mark”) or the Domain Name (the “Domain Mark”).
The Complainant does not own a registered trade mark for the Dunn Mark or the Domain Mark. It is therefore necessary for it to show that it has common law or unregistered trade mark rights in the Dunn Mark or the Domain Mark.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) records, under section 1.3 that:
“To establish unregistered or common law trade mark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services.
Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys. (Particularly with regard to brands acquiring relatively rapid recognition due to a significant Internet presence, panels have also been considering factors such as the type and scope of market activities and the nature of the complainant’s goods and/or services.)
Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint; conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning. In cases involving unregistered or common law marks that are comprised solely of descriptive terms which are not inherently distinctive, there is a greater onus on the complainant to present evidence of acquired distinctiveness/secondary meaning.
As noted in section 1.1.2 [of the WIPO Overview 3.0], for a number of reasons, including the global nature of the Internet and Domain Name System, the fact that secondary meaning may only exist in a particular geographical area or market niche does not preclude the complainant from establishing trade mark rights (and as a result, standing) under the UDRP.
Also noting the availability of trade mark-like protection under certain national legal doctrines (e.g., unfair competition or passing-off) and considerations of parity, where acquired distinctiveness/secondary meaning is demonstrated in a particular UDRP case, unregistered rights have been found to support standing to proceed with a UDRP case including where the complainant is based in a civil law jurisdiction.
The fact that a respondent is shown to have been targeting the complainant’s mark (e.g., based on the manner in which the related website is used) may support the complainant’s assertion that its mark has achieved significance as a source identifier.”
In the present case the Complainant has used the Domain Mark for over 17 years as a distinctive identifier of the Complainant’s legal services. During the 17 years, the Domain Mark has been advertised on company stationery, business cards and other marketing material. While there is limited evidence in the Complaint of the Complainant’s size or geographical reach, the fact that secondary meaning may only exist in a particular geographical area or market niche does not preclude the complainant from establishing trade mark rights (and as a result, standing) under the UDRP.
An additional relevant factor in determining whether the Complainant has rights is the Respondent in acquiring the Domain Name, has clearly targeted the Complainant’s Domain Mark, which supports the assertion by the Complainant that the Domain Mark has acquired some secondary meaning. While the evidence in the Complaint is limited, on balance the Panel finds that the Complainant does have sufficient common law or unregistered trade mark rights in the Domain Mark arising from its 17 years use to satisfy the requirements under the Policy.
The Panel finds the Domain Name is identical to the Complainant’s Domain Mark. Consequently the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any 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 trade mark 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 trade mark or service mark at issue.”
The Respondent is not affiliated with the Complainant in any way. The Respondent has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the Domain Mark or a mark similar to the Domain Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a legitimate noncommercial fair use.
The Domain Name is presently under maintenance but prior to the commencement of the proceeding linked to a website offering pornographic services. The use of the Domain Mark to direct visitors to website unconnected with the Complainant offering pornographic services does not amount to use for a bona fide offering of goods and services.
The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has failed to rebut that prima facie case and establish that it has rights or legitimate interests in the Domain Name under the Policy. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy. C. Registered or Subsequently Used in Bad Faith
For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or 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 trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its 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 trade mark 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 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 the Respondent’s website or location. (See, Policy, paragraph 4(b)).
The Panel finds that the Respondent most likely was aware of the Complainant and its reputation in the Domain and Dunn Mark at the time the Respondent registered the Domain Name. There is no obvious explanation (and none is provided) for the Respondent registering the Domain Name and linking it to a pornographic site other than to take advantage of any reputation that existed in the Domain Mark. Furthermore, even if the Respondent did not have direct knowledge of the Complainant, the Respondent would have been aware of the traffic that the Domain Name was generating at the time it decided to acquire the Domain Name. It would be implausible that a professional domain name trader such as the Respondent would not have reviewed traffic details and search engine results before valuing and acquiring the Domain Name. (see, Sumol+Compal Marcas, S.A. v. BuyD,WIPO Case No. D2013-0566).
The Respondent’s conduct in registering the Domain Name in these circumstances when it lacked rights and legitimate interests of its own is registration in bad faith.
The WIPO Overview 3.0, section 3.1.2, records that:
“UDRP panels have held that establishing a pattern of bad faith conduct requires more than one, but as few as two instances of abusive domain name registration.
This may include a scenario where a respondent, on separate occasions, has registered trade mark-abusive domain names, even where directed at the same brand owner.
A pattern of abuse has also been found where the respondent registers, simultaneously or otherwise, multiple trade mark-abusive domain names corresponding to the distinct marks of individual brand owners.”
The Panel finds that the Respondent registered the Domain Name in order to prevent the Complainant from reflecting its Domain Mark in a corresponding domain name. The Respondent has been the unsuccessful party in at least 7 prior UDRP disputes, each involving the Respondent registering a domain name that had either recently expired or closely corresponded with the name of commercial enterprises and then seeking to sell the Domain Name back to the complainant [in that case] for a sum in excess of the Respondent’s
out-of-pocket registration costs. This evidence is sufficient to show a pattern of conduct in registering domain names in order to prevent trade mark holders from reflecting their marks in a corresponding domain names. The Policy, paragraph 4(b)(ii), provides that this circumstance is evidence of registration and use of a domain name in bad faith.
In particular the Panel refers to the panel’s findings in Little Acorns Fostering Ltd. v. W P, The Cloud Corp / Al Perkins,WIPO Case No. D2017-1776, which state, in regards to the Respondent, that:
“The Panel would also add that it is unfortunate that the business practices of Mr. Perkins appear to have carried on for the most part unchecked for many years, notwithstanding the multiple findings made against him in UDRP proceedings and the brazen nature of his conduct. Particularly, concerning is that Mr. Perkins seems intent on taking advantage of the fact that frequently it will make more commercial sense for a victim of his cybersquatting activities to pay him monies to retrieve the Domain Name than to incur the legal fees and the cost associated with proceedings under the Policy. It is a point he expressly made in inter-party correspondence referred to in the Michael Heald [WIPO Case No. D2017-0959], and also appears to underlie his email to the Center (again set out above) in which he suggested the Complainant was ‘dumb’ in having paid for a complaint when they could have ‘bought the [Domain Name] cheaper’ from him.”
Accordingly, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith 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 Domain Name be transferred to the Complainant.
Nicholas Smith
Sole Panelist
Date: April 6, 2018
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