The Complainant is Ropes & Gray LLP, United States of America (“United States”) (“Complainant”), represented by Ropes & Gray LLP, United States.
The Respondent is Domain Administrator, c/o DomainsByProxy.com, United States / Account Recievable, United States (hereinafter referred to, jointly and severally, as “Respondent”). 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 7, 2020. On February 10, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 11, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on February 12, 2020 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 February 13, 2020. 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 February 14, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 5, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 6, 2020. The Center appointed M. Scott Donahey as the sole panelist in this matter on March 11, 2020. 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 is a law firm that was formed in 1865 and has continuously thereafter used the names of its two founders as the name of the law firm, Ropes & Gray, even though the firm presently has more than 1400 attorneys operating from offices in Boston, Chicago, San Francisco, Silicon Valley, New York, Washington, D.C., London, Hong Kong, Shanghai, Seoul, and Tokyo. Complaint Annexes 1 and 7. Complainant has used its name continuously since its founding and has a registered United States Trademark for ROPES & GREY, which registration issued on November 16, 2004. Complaint, Annex 5. Respondent registered the disputed domain name on December 18, 2019, more than 15 years after Complainant registered its trademark, and more than 150 years after Ropes & Grey had been continuously practicing law under the name that it later trademarked. Complaint, Annex 2. Respondent has used the disputed domain name to contact a client of Complainant and asking her to pay a “final invoice” for services performed by Complainant, purportedly sent by one Peter Alpert of Complainant. The letter included an image of a communication between one of Complainant’s employees and the recipient of the email, apparently taken from a prior communication. In response to a request from Complainant, Respondent’s email hosting service blocked the accounts on the disputed domain names based on the “phishing” episode set out above. Complaint, Annex 9R. 5. Parties’ Contentions A. Complainant Complainant contends that the disputed domain name is confusingly similar to its ROPES & GRAY trademark, that Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain has been registered and is being used in bad faith. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A panel shall 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 directs that the complainant must prove each of the following: (i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (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. A. Identical or Confusingly Similar The only differences between the disputed domain name and Complainant’s well known trademark ROPES & GRAY is the absence of the final “s” on the name “Ropes” and the substitution of the English word “and” for the ampersand which is its equivalent. Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark. B. Rights or Legitimate Interests While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1. In the present case, Complainant alleges that Respondent has no rights or legitimate interests in respect of the disputed domain name and Respondent has failed to assert any such rights. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith The disputed domain name was registered long after Complainant had continuously used the trademark and more than 15 years after Complainant had registered its ROPES & GRAY trademark. Respondent sent an email, using the disputed domain name, to a client of Complainant that purported to come from Complainant and seeking payment on an alleged invoice for services purportedly rendered by Complainant. In Internet parlance, Respondent used the email for a “phishing” expedition. Accordingly, the Panel finds that Respondent registered and used the disputed domain name in bad faith. 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 M. Scott Donahey
Sole Panelist
Date: March 12, 2020
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