The Complainant is Ropes & Gray LLP, United States of America (“United States”), represented internally.
The Respondent is Registration Private, Domains By Proxy, LLC, United States / Scott Hebert, 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 April 19, 2021. On April 20, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 21, 2021, 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 April 22, 2021 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 April 26, 2021. 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 April 28, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 18, 2021. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 28, 2021. The Center appointed Douglas M. Isenberg as the sole panelist in this matter on June 2, 2021. 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 states that it was founded in 1865 and is “an international law firm with 1,400 attorneys and professionals in eleven offices in the United States, Europe and Asia, including Boston, New York, Washington, DC, Chicago, San Francisco, Silicon Valley, London, Seoul, Tokyo, Shanghai, and Hong Kong[, China].” Complainant states, and provides evidence to support, that it is the owner of the trademark ROPES & GRAY, protected by United States. Reg. No. 2,902,936 (registered November 16, 2004) (the “ROPES & GRAY Trademark”). Complainant further states that it uses the domain name The Disputed Domain Name was created on March 12, 2021, and resolves to an inactive website. According to the Complaint, it has been used “to send fraudulent emails as part of a business email compromise scheme.” In support thereof, Complainant provided a copy of an email sent from an address using the Disputed Domain Name, requesting payment for outstanding invoices and containing a signature block purportedly (but falsely) from Complainant. 5. Parties’ Contentions A. Complainant Complainant contends, in relevant part, as follows: - The Disputed Domain Name is confusingly similar to the ROPES & GRAY Trademark because it “incorporates the Complainant’s trademark in its entirety with the only differences being the exclusion of the ampersand, the addition of the hyphen, and the addition of three letters (‘llp’), which conveys a type of business organization, to the end of the mark” and “[t]he addition of ‘llp’ to a mark has been found as confusingly similar in many cases.” - Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “[t]here is no relationship or affiliation between the Complainant and the Respondent giving rise to any license, permission, or other right by which the Respondent could own or use any domain name incorporating the Complainant’s registered ROPES & GRAY mark”; and “[b]oth prior to and subsequent to the date of registration, the Respondent has not used or prepared to use the disputed Domain Name with any bona fide offering of goods or services…, has not been commonly known by the disputed Domain Name…, and has not made any noncommercial or fair use of the disputed Domain Name…. In fact, aside from potential bad faith use of the Domain Name in connection with a phishing and wire fraud scheme…, the Domain Name does not appear to be in use at all, and there is no website associated with the domain name.” - The Disputed Domain Name was registered and is being used in bad faith because, inter alia, “Respondent’s registration of the disputed Domain Name that is confusingly similar to the Complainant’s famous mark and domain name without any relationship to them is itself sufficient evidence of bad faith registration and use”; and “Respondent’s clear intent is to mislead or to deceive the Complainant’s current and prospective clients, and/or to tarnish the Complainant Ropes & Gray’s mark and reputation, as Respondent has used the disputed Domain Name to send fraudulent emails as part of a business email compromise scheme.” B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed 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 Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith. Policy, paragraph 4(a). A. Identical or Confusingly Similar Based upon the trademark registration cited by Complainant, it is apparent that Complainant has rights in and to the ROPES & GRAY Trademark. As to whether the Disputed Domain Name is identical or confusingly similar to the ROPES & GRAY Trademark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e., “ropesgray-llp”) because “[t]he applicable Top-Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test”. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.1. The Disputed Domain Name contains the ROPES & GRAY Trademark in its entirety, absent only the spaces and ampersand, which are not permitted characters in a domain name, plus the addition of the letters “llp,” an abbreviation for “limited liability company.” As set forth in section 1.7 of WIPO Overview 3.0, “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.” Multiple previous panels have found that the addition of “llp” to a disputed domain name does nothing to alleviate confusing similarity. See, e.g., Sidley Austin LLP v. Domain Administrator, See PrivacyGuardian.org / Bien, Bien Tran,WIPO Case No. D2019-2708 (finding Accordingly, the Panel finds that Complainant has proven the first element of the Policy B. Rights or Legitimate Interests Complainant has argued that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “[t]here is no relationship or affiliation between the Complainant and the Respondent giving rise to any license, permission, or other right by which the Respondent could own or use any domain name incorporating the Complainant’s registered ROPES & GRAY mark”; and “[b]oth prior to and subsequent to the date of registration, the Respondent has not used or prepared to use the disputed Domain Name with any bona fide offering of goods or services…, has not been commonly known by the disputed Domain Name…, and has not made any noncommercial or fair use of the disputed Domain Name…. In fact, aside from potential bad faith use of the Domain Name in connection with a phishing and wire fraud scheme…, the Domain Name does not appear to be in use at all, and there is no website associated with the domain name.” WIPO Overview 3.0, section 2.1, states: “[w]hile the overall burden of proof in UDRP proceedings is on the complainant, 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.” In addition, panels have categorically held that the use of a domain name for illegal activity (i.e., Respondent’s fraudulent emails) can never confer rights or legitimate interests on a respondent. See section 2.13 of the WIPO Overview 3.0. The Panel finds that Complainant has established its prima facie case and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has satisfied the second element of the Policy. C. Registered and Used in Bad Faith Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s 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 registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b). As set forth above, Complainant has alleged (and Respondent has not disputed) that Respondent has used the Disputed Domain Name “to send fraudulent emails as part of a business email compromise scheme.” In support thereof, Complainant provided a copy of an email sent from an address using the Disputed Domain Name, requesting payment for outstanding invoices and containing a signature block purportedly (but falsely) from Complainant. This type of activity, commonly known as phishing, is “manifestly considered evidence of bad faith.” WIPO Overview 3.0, section 3.1.4. Accordingly, the Panel finds that Complainant has proven the third element 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 Douglas M. Isenberg
Sole Panelist
Date: June 15, 2021
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