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 Dean Coon, Dean Coon Partners Inc., United Kingdom.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 27, 2021. On September 28, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 29, 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 the Complainant on September 29, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 29, 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 the Respondent of the Complaint, and the proceedings commenced on October 13, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 2, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 4, 2021.
The Center appointed William A. Van Caenegem as the sole panelist in this matter on November 10, 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 BackgroundThe Complainant is a diversified law firm with more than 800 attorneys, policy advisors, and professionals across 25 offices. It is one of the largest law firms in the United States and globally. It has long used the NELSON MULLINS RILEY & SCARBOROUGH and NELSON MULLINS service marks in connection with the marketing, advertising, promotion, and provision of legal services.
The Complainant owns the registered United States trademarks NELSON MULLINS RILEY & SCARBOROUGH LLP No. 3757228, registered on March 9, 2010 in Class 45 for Legal services; United States trademarks NELSON MULLINS No. 3754391 registered on March 2, 2010 in Class 45 for Legal services; and United States trademarks NM Nelson Mullins (Device Mark) No. 5361314 registered on December 19, 2017 in Class 45 for Legal services.
The Complainant registered and has continually used the
The Respondent in this matter was initially masked by a privacy service but was revealed to be Dean Coon, Dean Coon Partners Inc. and the disputed domain name was registered on September 2, 2021. The disputed domain name is said to have been registered in furtherance of a business email compromise (“BEC”) attack directed at one of Complainant’s clients.
5. Parties’ Contentions A. ComplainantThe Complainant asserts that one day after the registration date of the disputed domain name, the Respondent intercepted an email chain between one of Complainant’s clients and one of Complainant’s Administrative Assistants. The Respondent used the disputed domain name to pose as the Administrative Assistant’s email and began conversing with Complainant’s client. Further interference with the correspondence between the Complainant and its client followed whereby the Respondent posed as an Administrative Assistant of the Complainant and sought thereby to redirect payments to itself in a fraudulent manner. The Complainant details the correspondence concerned in the Complaint. The Complainant then filed an abuse complaint with the relevant Registrar on September 10, 2021. The Registrar did not action the complaint.
As indicated above, the Complainant obtained a United States federal service mark registration for NELSON MULLINS, United States Registration No. 3754391, on March 2, 2010. That registration is incontestable under 15 U.S.C. § 1065, the Complainant asserts. According to the Complainant, it is well established that a domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first UDRP element. Here the only difference between the Complainant’s registered trademark and the disputed domain name is the addition of an ‘n’ after the ‘m’ in MULLINS. Therefore, the disputed domain name and the Complainant’s trademark are unquestionably confusingly similar. In any case, UDRP panels have consistently held that if a domain name “wholly incorporates a complainant’s trademark”, then the disputed domain name at issue is identical or confusingly similar, the Complainant points out.
Further the Complainant contends that the Respondent has no prior rights or legitimate interest in the disputed domain name because the Respondent is not known by the disputed domain name; the Complainant has not authorized the Respondent to use the NELSON MULLINS trademarks in any way; the Respondent does not have any connection or affiliation with the Complainant; the Respondent has not made a bona fide use of the domain name nor engaged in any demonstrable preparations to use it in connection with a bona fide offering of goods or services; and the Respondent’s use of the disputed domain name is in furtherance of an illegal activity. The Respondent is also not commonly known by the name ‘NelsonMullins’. Furthermore, the disputed domain name was registered intentionally to capitalize on the reputation and goodwill associated with the Complainant’s trademarks in order to facilitate the Respondent’s BEC attack against the Complainant’s client, described above. Such activity can never vest rights or legitimate interests.
The Complainant also points out that prior UDRP panels have consistently recognized that registration of domain names which are used in furtherance of BEC attacks are in bad faith, as is subsequent use of such domain names. According to the Complainant, there can be no doubt that the Respondent knew of and intentionally chose to register the disputed domain name, which is virtually identical to the Complainant's NELSON MULLINS trademarks, with the bad faith intent to target a firm client in furtherance of the Respondent’s phishing/business email compromise fraud attack.
The disputed domain name was for these reasons registered and used in bad faith, the Complainant contends.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings A. Identical or Confusingly SimilarThe disputed domain name is not identical to the trademarks of the Complainant. However, it only differs in a minor and virtually unnoticeable detail which has the appearance of a spelling error. In any case the distinctive trademark of the Complainant is immediately recognizable in the disputed domain name. Therefore, the disputed domain name is confusingly similar to the Complainant’s relevant marks.
Therefore, the Panel holds that the disputed domain name is confusingly similar to the Complainant’s registered trademark NELSON MULLINS.
B. Rights or Legitimate InterestsThere is no evidence of any legitimate use by the Respondent, nor of use that could be described as giving rise to a legitimate interest in the disputed domain name. The Respondent did not file any response to the Complaint. The disputed domain name was in fact used to further a fraudulent impersonation scheme whereby the Respondent hoped to redirect payment from the Complainant’s clients to its own account. This type of activity is exactly the opposite of any activity that would give rise to legal rights or legitimate interests in the disputed domain name.
Therefore, the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad FaithIt appears to be unquestionable that the Respondent deliberately chose to register the disputed domain name in the perfect knowledge of the Complainant’s rights in NELSON MULLINS. The latter trademark is highly distinctive and unlikely to be arrived at and registered by accident. The subsequent utilization of the disputed domain name, to attempt to defraud the Complainant and its client, further demonstrates that the disputed domain name was registered in deliberate bad faith. The fact that the Respondent then used it to impersonate an employee of the Complainant and send deceptive correspondence further illustrates the overall bad faith of the Respondent. It clearly registered the disputed domain name with a fraudulent scheme in mind, which it then tried to effectuate immediately after registration.
Therefore, the Panel holds that the disputed domain name was registered and used in bad faith.
7. DecisionFor 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
William A. Van Caenegem
Sole Panelist
Date: November 22, 2021