The Complainant is Clifford Law Offices, P.C., United States of America (“United States”) (hereinafter, “Complainant”), represented by Beem Patent Law, United States.
The Respondent is Domain Administrator, See PrivacyGuardian.org, United States / Monahan and Fay Johnson, Josiah Macy, United States (hereinafter, “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 August 31, 2020. On September 1, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 1, 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 September 4, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on September 4, 2020. The Center verified that the Complaint together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on September 9, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 29, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 30, 2020. The Center appointed M. Scott Donahey as the sole panelist in this matter on October 29, 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 located in Chicago, Illinois, United States. Complainant frequently acts for clients in aviation litigation, personal injury, and wrongful death cases. It has been identified as one of the 50 Elite Firms in the Country by the National Law Journal. Complaint, Annex 5. Complainant has registered the mark CLIFFORD LAW OFFICES with the United States Patent & Trademark Office (“USPTO”) in connection with its provision of legal services on two separate occasions. The earliest registration issued on August 16, 2016, under registration number 5020732. Complaint, Annex 4. Complainant is also the registrant of the domain name Respondent registered the disputed domain name Complainant alleges that the disputed domain name is confusingly similar to Complainant’s registered trademarks. Complainant further asserts that Respondent has no rights or legitimate interests in respect of the disputed domain name. Complainant argues that the disputed domain name has been registered and is being used in bad faith. B. Respondent Respondent did not reply to any of 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 disputed domain name 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 Respondent is using the disputed domain name to resolve to a web site that is strikingly similar to the legitimate web site of Complainant but for the contact information listed for contacting Complainant. While giving Complainant’s correct business address, Respondent substitutes two telephone numbers that do not correspond to those of Complainant. Complaint, Annex 5, at 7. Respondent also adds a fax number that does not exist on Complainant’s web site. Id. Finally, Respondent’s web site contains a Send Email button that does not exist on Complainant’s web site. Id. Accordingly, the Panel finds that the disputed domain name was registered and is being 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 M. Scott Donahey
Sole Panelist
Date: November 3, 2020
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