Complainant is K&L Gates, LLP of Pittsburgh, Pennsylvania, United States of America ("United States"), represented by CSC Digital Brand Services Group AB, Sweden.
Respondent is Global Domain Privacy of Bergamo, Italy / Macianne Pakinston, Norlan links consultants of Cleveland, Ohio, United States. 2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") is registered with Register.IT SPA (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 9, 2018. On July 9, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 11, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on July 11, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on July 13, 2018.
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 July 18, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 7, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on August 9, 2018.
The Center appointed John C. McElwaine as the sole panelist in this matter on August 14, 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
Complainant, K&L Gates LLP, is a fully integrated global law firm with lawyers located across five continents. Complainant owns trademark registrations for the mark K&L GATES in the United States, the European Union, and an International Registration designating 45 additional countries in which protection for the mark has been granted (the "K&L GATES trademark" or the "K&L GATES mark"). The earliest registration for the K&L GATES mark was issued on April 12, 2007. Complainant is the owner of the domain name . Complainant registered the domain name on September 15, 2006.
The Domain Name was registered by Respondent Macianne Pakinston, Norlan Links Consultants on March 31, 2018. The Domain Name does not resolve to an active website. 5. Parties' Contentions A. Complainant
Complainant contends that it is the owner of common law and registered trademark rights in the K&L GATES trademark worldwide. Complainant further asserts that as a result of its worldwide trademark registrations and extensive recognition for excellence by industry peers, consumers, and the broader global community, the K&L GATES mark is a well-known mark worldwide in connection with Complainant's legal services.
As it pertains to the first element of the Policy, Complainant contends that the Domain Name is a purposeful misspelling of Complainant's K&L GATES trademark, and as such, is essentially identical to Complainant's mark. Complainant further asserts that Respondent's transposition of letters in Complainant's mark is a prototypical example of typosquatting and does nothing to alleviate a likelihood of confusion.
With respect to the second element of the Policy, Complainant contends that Respondent does not have any rights or legitimate interests in the Domain Name because Respondent is not a licensee, distributor or authorized agent of Complainant, Respondent is not known by the Domain Name, as indicated by the WhoIs record, and Respondent's use of the Domain Name is not a bona fide offering of goods or services in that passive holding of a domain name is not a bona fide offering of goods or services.
Lastly, as it pertains to the third element of the Policy, Complainant contends that when taken on balance, Respondent registered and is using the Domain Name in bad faith because Respondent knew of or should have known of Complainant's K&L GATES trademark, because of the worldwide notoriety of the K&L GATES trademark and Respondent is passively holding of the Domain Name without any rights or legitimate interests in the Domain Name. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
Even though Respondent has defaulted, paragraph 4 of the Policy requires that, in order to succeed in this UDRP proceeding, Complainants must still prove their assertions with evidence demonstrating:
(i) the Domain Name is 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 Domain Name; and
(iii) the Domain Name has been registered and are being used in bad faith.
Because of Respondent's default, the Panel may accept as true the reasonable factual allegations stated within the Complaint, and may draw appropriate inferences therefrom. See St. Tropez Acquisition Co. Limited v. AnonymousSpeech LLC and Global House Inc.,WIPO Case No. D2009-1779; Bjorn Kassoe Andersen v. Direction International,WIPO Case No. D2007-0605; see also paragraph 5(f) of the Rules ("If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint"). Having considered the Complaint, the Policy, the Rules, the Supplemental Rules and applicable principles of law, the Panel's findings on each of the above cited elements are as follows. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires Complainants show that the Domain Names are identical or confusingly similar to a trademark or service mark in which the respective Complainant has rights. Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.2.1. Here, Complainant has provided evidence of ownership of registrations for the mark K&L GATES in the United States, the European Union, and an International Registration designating 45 additional countries around the world. Furthermore, Complainant has put forward evidence establishing substantial use of the K&L GATES trademark worldwide. The Panel finds that Complainant owns valid trademark rights in the K&L GATES trademark which significantly predate the registration of the Domain Name.
While the Domain Name is not identical to the K&L GATES trademark, the Domain Name is virtually identical but for the transposition of the letters "e" and "s" in GATES. It is well established, and the Panel agrees, that the transposition of letters in a mark is a common typographical variant and such common typographical variants typically give rise to a finding of confusing similarity. See e.g. Volvo Trademark Holding AB v. Unasi, Inc.,WIPO Case No. D2005-0556 (transposition of the letters "l" and "o" in the domain name ). Furthermore, the absence of the ampersand symbol in the Domain Name does not create a material difference between the K&L GATES trademark and the Domain Name because the ampersand is not a valid character for domain names in the DNS system, as domain names may only consist of letters, digits, and hyphens. This Panel agrees that the deletion of the ampersand does not prevent a finding of confusing similarity. See Hunton & Williams v. American Distribution Systems, Inc. et al.,WIPO Case No. D2000-0501 (finding that "" was the functional equivalent of the service mark HUNTON & WILLIAMS).
Accordingly, the Panel finds that the Domain Name is confusingly similar to Complainant's K&L GATES trademark in which Complainant has valid trademark rights. Therefore, Complainant has satisfied Paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Under the Policy, paragraph 4(a)(ii), Complainant has the burden of establishing that Respondent has no rights or legitimate interests in the Domain Name. Complainant needs only make a prima facie showing on this element, at which point the burden of production shifts to Respondent to present evidence that it has rights or legitimate interests in the Domain Name. If Respondent has failed to do so, Complainant is deemed to have satisfied its burden under paragraph 4(a)(ii) of the Policy. See Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc.,WIPO Case No. D2010-1141; see also Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party,WIPO Case No. D2000-1415; Inter-Continental Hotels Corporation v. Khaled Ali Soussi,WIPO Case No. D2000-0252.
The Policy, paragraph 4(c), provides a non-exhaustive list of circumstances in which a respondent could demonstrate rights or legitimate interests in a contested domain name:
"(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."
Complainant contends that Respondent is not commonly known by the Domain Name, that Complainant has not licensed, authorized or permitted Respondent to register the Domain Name, and that Respondent has failed to make any use of the Domain Name and has not demonstrated any attempt to make legitimate use of the Domain Name.
With respect to Complainant's contention that Respondent is not commonly known by the Domain Name, the Panel notes that the WhoIs information lists Respondent as "Macianne Pakinston, Norlan Links Consultants" and the Panel therefore finds, based on the record and the lack of evidence otherwise, that Respondent is not commonly known by the Domain Name. See Moncler S.p.A. v. Bestinfo,WIPO Case No. D2004-1049 ("the Panel notes that the Respondent's name is "Bestinfo" and that it can therefore not be "commonly known by the Domain Name.") The Panel would further take notice of the fact that "klgatse" is not a word and is almost certainly an intentional misspelling of the K&L GATES trademark.
As it pertains to Complainant's contention that Complainant has never licensed or otherwise provided authorization for Respondent to use the K&L GATES trademark or to register the Domain Name. Although Respondent has been properly notified of the Complaint by the Center, Respondent failed to submit any response on this point. The silence of a respondent may support a finding that it has no rights or legitimate interests in respect of the domain name. See Alcoholics Anonymous World Services, Inc., v. Lauren Raymond,WIPO Case No. D2000-0007; Ronson Plc v. Unimetal Sanayi ve Tic.A.S.,WIPO Case No. D2000-0011. Additionally, previous UDRP panels have found that when respondents have not availed themselves of their rights to respond to complainant, it can be a further inference in appropriate circumstances that respondents have no rights or legitimate interests in the domain name at issue. See AREVA v. St. James Robyn Limoges,WIPO Case No. D2010-1017; Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim,WIPO Case No. D2003-0269.
Lastly, the Panel finds that Respondent is not making any use, let alone bona fide use, of the Domain Name under paragraph 4(c), as the Domain Name resolves to an inactive webpage. It is well established that inaction or passive holding can, in certain circumstances, constitute bad faith use. See CBS Broadcasting Inc. v. Edward Enterprises,WIPO Case No. D2000-0242. Here, with no explanation from Respondent concerning its intent, passive holding of the Domain Name, which incorporates a misspelling of the well-known K&L GATES trademark, does not amount to a bona fide use.
Based on the foregoing, Complainant has made a prima facie showing of Respondent's lack of any rights or legitimate interests and Respondent has failed to come forward to rebut that showing. As provided for by paragraph 14 of the Rules, the Panel may draw such inference from Respondent's default as it considers appropriate. The Panel finds that Respondent does not have rights or legitimate interests in the Domain Name and that Complainant has met its burden under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, Complainant must show that Respondent registered and is using the Domain Name in bad faith. A non-exhaustive list of factors constituting bad faith registration and use is set out in paragraph 4(b) of the Policy.
Complainant contends that Respondent's registration and use of the Domain Name was in bad faith and is evidenced by (i) the fact that Respondent knew or should have known of Complainant's trademark rights in the K&L GATES mark; and (ii) Respondent is not actually using or is passively holding the Domain Name.
Bad faith registration can be found where a respondent "knew or should have known" of a complainant's trademark rights and nevertheless registered a domain name in which it had no rights or legitimate interests. See Accor v. Kristen Hoerl,WIPO Case No. D2007-1722. Based on Complainant's submissions, which were not rebutted by Respondent, Respondent must have known of Complainant's K&L GATES mark when Respondent registered the Domain Name because, as detailed above, the Domain Name is virtually identical to the K&L GATES mark, but for the transposition of the "e" and "s" and the required omission of the ampersand. Furthermore, and as also detailed above, Respondent is not commonly known by the Domain Name and does not have any rights or legitimate interests in the Domain Name. Accordingly, on the record there is no explanation or legitimate interests to justify Respondent's choice to register the Domain Name. With no response from Respondent, this claim is undisputed and the Panel can infer bad faith.
Furthermore, the fact that the Domain Name does not resolve to a website and is being passively held does not obviate a finding of bad faith. When a domain name is being passively held, the question of bad faith use does not squarely fall under one of the aforementioned non-exhaustive factors set out in paragraph 4(b) of the Policy. The three member panel, in Magazine Publishers Inc. and Les Publications Conde Nast S.A. v. ChinaV,WIPO Case No. D2005-0615, made the following observations in its determination that the respondent was acting in bad faith:
"(i) the complainant's trademark has a strong reputation and is widely known, as evidenced by its substantial use in the United States of America and in other countries;
(ii) the respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name;
(iii) the respondent registered the domain name in 1999, and seems not to have been using the domain name;
(iv) the respondent did not reply to the complainant's communications before the proceedings; and
(v) the respondent did not reply to the complainant's contentions."
Complainant's submitted evidence established that the K&L GATES mark is well-known in the United States and, in multiple other countries in which Complainant operates. Respondent has not offered any evidence to rebut this conclusion. Furthermore, by virtue of its failure to respond to the Complaint, Respondent has provided no evidence of its intended use of the Domain Name. In fact, Respondent is not using the Domain Name in any manner to demonstrate a bona fide use or potential use. In light of these factors, the Panel finds that Respondent's passive holding of the Domain Name satisfies the requirement of paragraph 4(a)(iii) of the Policy that the Domain Name was registered and is being used in bad faith by Respondent.
For the reasons set forth above, the Panel finds that Complainant has met its burden of showing that Respondent 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 disputed domain name, , be transferred to Complainant.
John C McElwaine
Sole Panelist
Date: August 27, 2018
Full & Egal Universal Law Academy