The Complainant is Nelson Mullins Riley & Scarborough LLP, United States of America (“United States”), represented by Nelson Mullins Riley & Scarborough, L.L.P., United States.
The Respondent is Contact Privacy Inc. Customer 1246819098, Canada / Debbi Scott, United States. 2. The Domain Name and Registrar
The Disputed Domain Name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 3, 2020. On June 3, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 3, 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. On June 7, 2020, the Center sent an email communication to the Parties in English and French regarding the language of the proceeding. On the same date, the Center sent an email communication to the Complainant providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. On June 10, 2020, the Complainant filed an amended Complaint and requested that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding 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 June 16, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 6, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 10, 2020. The Center appointed Angela Fox as the sole panelist in this matter on July 20, 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 The Complainant is a law firm, founded in 1897, with more than 800 professionals across 25 offices in the United States. Since at least as early as 1987 and 1999, respectively, the Complainant adopted and has extensively and continuously used the trading names “Nelson Mullins Riley & Scarborough” and “Nelson Mullins” in connection with its legal services business. The Complainant owns the following United States trademark registrations: - United States Trademark Reg. No. 3757228 for NELSON MULLINS RILEY & SCARBOROUGH LLP, registered on March 9, 2010 in Class 45 for “legal services”; - United States Trademark Reg. No. 3754391 for NELSON MULLINS, registered on March 2, 2010 in Class 45 for “legal services”; - United States Trademark Reg. No. 5361314 for , registered on December 19, 2017, in Class 45 for “legal services”. The Disputed Domain Name was registered on April 1, 2020 in the name of a privacy shield. The Complainant filed evidence to show that on the same day the Disputed Domain Name was registered, the Respondent sent an email to one of the Complainant’s clients posing as a partner in the Complainant’s office in Greenville, South Carolina, requesting payment of an attached invoice purportedly from the Complainant, in which the payment instructions had been digitally altered to those of a different payee. It appears from the record that the client flagged this to the Complainant, who then investigated and subsequently filed this Complaint. The Disputed Domain Name does not resolve to any website. 5. Parties’ Contentions A. Complainant The Complainant submits that the Disputed Domain Name is identical or confusingly similar to its registered trademarks for marks comprising or incorporating NELSON MULLINS. In particular, the Complainant submits that the only difference between the Disputed Domain Name and the trademark NELSON MULLINS is the substitution of the letter “v” for “u” in “mullins”, in order to create a misspelling of that name which closely resembles the original. The Complainant further avers that the Respondent has no rights or legitimate interests in the Disputed Domain Name, because (1) the Respondent is not known by it; (2) the Complainant has not authorized the Respondent to use its trademarks in any way; (3) the Respondent does not have any connection or affiliation with the Complainant; (4) the Respondent has not made any bona fide use of the Disputed Domain Name nor engaged in any demonstrable preparations to use it in connection with a bona fide offering of goods or services; and (5) the Respondent’s use of the Disputed Domain Name is in furtherance of an illegal activity. Finally, the Complainant submits that the Disputed Domain Name was registered and has been used in bad faith. The Complainant points to the Respondent’s alleged use of the Disputed Domain Name in connection with phishing activity on the very same day on which it was registered as evidence that the Disputed Name was both registered and used in bad faith. The Complainant submits that the impersonation by the Respondent of the Complainant demonstrates a bad faith intention to create confusion with the Complainant and to deceive one of the Complainant’s clients in furtherance of a fraudulent activity. B. Respondent The Respondent did not reply to the Complainant’s contentions and is in default. No exceptional circumstances explaining the default have been put forward. Therefore, in accordance with paragraphs 14 (a) and (b) of the Rules, the Panel will decide the Complaint and shall draw such inferences as it considers appropriate from the Respondent’s default. 6. Discussion and Findings Language of Proceedings WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states: “Pursuant to paragraph 11 of the UDRP Rules, unless otherwise agreed by the parties, the default language of the proceeding is the language of the registration agreement, subject to the authority of the panel to determine otherwise. Noting the aim of conducting the proceedings with due expedition, paragraph 10 of the UDRP Rules vests a panel with authority to conduct the proceedings in a manner it considers appropriate while also ensuring both that the parties are treated with equality, and that each party is given a fair opportunity to present its case.” The default language of proceeding in this case is French. The Complainant has requested that English be the language of proceeding. Noting that there is no objection by the Respondent to English being the language of proceeding, and noting the use of the Disputed Domain Name for issuance of phishing emails drafted in English (see further below), the Panel finds that the appropriate language of proceeding is English in this matter. Substantive Issues Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the panel finds that: (i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (ii) the respondent has no rights or legitimate interests in the domain name; and (iii) the domain name has been registered and is being used in bad faith. All three elements must be present before a complainant can succeed in an administrative proceeding under the Policy. A. Identical or Confusingly Similar The Disputed Domain Name differs from the Complainant’s federally registered United States trademark NELSON MULLINS by only a single letter, namely the substitution of a “v” for the “u” in MULLINS. This change is very minor and the letter “v” is moreover visually very similar to “u”, such that it could easily be mistaken for that letter. It is common experience that the human eye often reads what the brain expects, and English speakers encountering the Disputed Domain Name are likely to read it as the combination of the common surnames, NELSON and MULLINS. Indeed, the Respondent’s registration of the disputed domain name appears to constitute “typosquatting,” namely the registration of domain names that consist of common or predictable misspellings of third-party trademarks in order to attract Internet traffic intended for a complainant (see inter alia Wachovia Corporation v. American Consumers First,WIPO Case No. D2004-0150; Red Bull GmbH v. Grey Design,WIPO Case No. D2001-1035; Playboy Enterprises International Inc. v. SAND WebNames – For Sale,WIPO Case No. D2001-0094; and Telstra Corporation Ltd. v. Warren Bolton Consulting Pty. Ltd.,WIPO Case No. D2000-1293). The Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s registered NELSON MULLINS trademark. B. Rights or Legitimate Interests The burden of proving absence of a right or legitimate interest in a domain name falls on complainants, but panels have long recognised that the information needed to prove such a right or legitimate interest is normally in the possession of respondents. In order to avoid requiring complainants to prove a negative, which will often be impossible, panels have typically accepted that once a complainant has established a prima facie case that a respondent lacks rights or legitimate interests, the respondent carries the burden of showing that it does indeed have such a right or interest (see, inter alia, Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110). In the present case, the Complainant has put forward a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name. There is nothing on the record to indicate that the Respondent might have such a right or legitimate interest, nor has the Respondent attempted to make one out. The Complainant has not authorised the Respondent to use the Disputed Domain Name, nor is there any evidence that the Respondent has ever been commonly known by it. Moreover, the evidence on record indicates that the Respondent has used the Disputed Domain Name for an apparent phishing scam, which is very far from giving rise to any right or legitimate interest in the Disputed Domain Name on the part of the Respondent. Indeed, on the contrary, it signals that whatever interest the Respondent might have had in the Disputed Domain Name could not be legitimate. The Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name. C. Registered and Used in Bad Faith The Disputed Domain Name is confusingly similar to the Complainant’s NELSON MULLINS trademark, and the evidence on record indicates that the Respondent used the Disputed Domain Name, on the very same day on which it was registered, in order to impersonate the Complainant while attempting to perpetrate a fraud on one of the Complainant’s clients, even to the point of masquerading as one of the Complainant’s partner attorneys and attaching a digitally altered invoice purportedly from the Complainant, with altered payment details. These facts indicate that the Respondent registered the Disputed Domain Name in full knowledge of the Complainant and its business, and with the intention to use the Disputed Domain Name in the commission of a fraud. Use of a domain name in connection with a phishing scheme has been found by other panels to constitute evidence of registration and use in bad faith (see e.g Accor SA v. Domain Admin, C/O ID#10760, Privacy Protection Service INC d/b/a PrivacyProtect.org / Yogesh Bhardwaj,WIPO Case No. D2017-1225). The Panel concludes that the Disputed Domain Name was registered and has been used 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, Angela Fox
Sole Panelist
Date: August 13, 2020
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