ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Shehadeh Giannamore, PLLC v. jake meiles Case No. D2024-1423 1. The Parties The Complainant is Shehadeh Giannamore, PLLC, United States of America (“United States”), internally represented, United States. The Respondent is jake meiles, United States. 2. The Domain Name and Registrar The disputed domain name is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 3, 2024. On April 3, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 5, 2024, 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 (Redacted for Privacy, Privacy service provided by Withheld for Privacy ehf) and contact information in the Complaint. The Center sent an email communication to the Complainant on April 9, 2024, 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 April 10, 2024. 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 April 11, 2024. In accordance with the Rules, paragraph 5, the due date for Response was May 1, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 2, 2024.
page 2 The Center appointed Evan D. Brown as the sole panelist in this matter on May 11, 2024. 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. It asserts rights in the mark SHEHADEH GIANNAMORE which it uses in connection with legal services. The Complainant claims common law rights in the mark though it has filed an application to register the mark which is still pending with the United States Patent and Trademark Office (“USPTO”). In connection with the filing of that application, the Complainant asserts that it began using the SHEHADEH GIANNAMORE mark at least as early as November 2, 2015. The Complainant asserts that it has been using its mark in commerce continuously since that time. The Complainant’s website at “www.giannamore-law.com” and “www.sglawfl.com” identifies Katherine Giannamore as a principal of the firm. The domain name was created on March 15, 2012, and according to Web Archive it has been used by Katherine Giannamore since at least April 27, 2012. 1 The domain name was created on May 31, 2016, and according to Web Archive it has been used since at least December 2, 2016 as the Complainant’s website. According to the WhoIs information, the disputed domain name was registered on January 25, 2024. The Respondent has not used the disputed domain name in connection with an active website and the Complainant submitted a copy of a page provided by the website building platform Wix.com at the disputed domain name indicating that the disputed domain name “isn’t connected to a website yet.” The Panel’s search of a publicly available database revealed that the Respondent has configured MX Records for the disputed domain name, indicating that the Respondent may be using the disputed domain name to send and receive email messages. 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s trademark; that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied: (i) the disputed 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 respect of the disputed domain name, and (iii) the disputed domain name has been registered and is being used in bad faith. The Panel finds that all three of these elements have been met in this case. 1Section 4.8 of WIPO Overview 3.0 provides that “it has been accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision.”
page 3 A. Identical or Confusingly Similar This element requires the Panel to consider two issues: first, whether the Complainant has rights in a relevant mark; and, second, whether the disputed domain name is identical or confusingly similar to that mark. This element under the Policy functions primarily as a standing requirement. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. The Panel finds the Complainant has unregistered or common law rights in the SHEHADEH GIANNAMORE mark for purposes of the Policy based on how the Complainant has used that mark in commerce. Though the Complainant does not have a registration for the mark, the Panel notes that the “Wayback Machine” site shows the mark in use on the Complainant’s website at least as early as December 2016. The Panel credits the Complainant’s unrebutted assertion that it has used that mark since at least as early as November 2015. The disputed domain name is clearly a deliberate targeting of the Complainant’s firm name and trademark. This is further evidence by how the Respondent has included the first name of one of the partners in the disputed domain name. Consistent with UDRP panel practice, the Panel finds that the Respondent has deliberately targeted the Complainant’s mark, and this fact supports a finding that the Complainant’s mark has achieved significance as a source identifier for purposes of the Policy. WIPO Overview 3.0, sections 1.3. The disputed domain name incorporates the SHEHADEH GIANNAMORE mark in its entirety with the word “Katherine” which does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s mark. WIPO Overview 3.0, section 1.8. The SHEHADEH GIANNAMORE mark remains recognizable for a showing of confusing similarity under the Policy. Accordingly, the Panel finds that the Complainant has established this first element under the Policy. B. Rights or Legitimate Interests The Panel evaluates this element of the Policy by first looking to see whether the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. If the Complainant makes that showing, the burden of production of demonstrating rights or legitimate interests shifts to the Respondent (with the burden of proof always remaining with the Complainant). See WIPO Overview 3.0, section 2.1; AXA SA v. Huade Wang, WIPO Case No. D2022-1289. On this point, the Complainant asserts, among other things, that: the Respondent has no intention to offer any goods or services in relation to the disputed domain name and has not been commonly known by the disputed domain name. The Panel finds that the Complainant has made the required prima facie showing. The Respondent has not presented evidence to overcome this prima facie showing. And nothing in the record otherwise tilts the balance in the Respondent’s favor. The finding of a lack of rights or legitimate interests is further supported by the observation that the Respondent is likely using the disputed domain name to send and receive email messages. Such conduct, noting the composition of the disputed domain name, is likely in furtherance of fraudulent or otherwise nefarious activity that aligns with an intention common among cybersquatters. Accordingly, the Panel finds that the Complainant has established this second element under the Policy. C. Registered and Used in Bad Faith It is clear that the Respondent has targeted the Complainant in registering the disputed domain name. In these circumstances, absent a showing by the Respondent of any possible good faith intention, the Panel finds such targeting to support bad faith registration. Though the Respondent does not appear to have used the disputed domain name in connection with an active website, the Panel nonetheless finds bad faith use of
page 4 the disputed domain name. The passive holding of a domain name comprised of a mark and another word very closely associated with the Complainant does not lend itself to being explained by any good faith action of the Respondent. And in any event, the Respondent has stayed silent in these proceedings. Further, bad faith use is supported by the observation that the Respondent has configured MX Records for the disputed domain name which creates the risk that the Respondent may use the disputed domain name to send and receive fraudulent email messages. Noting the composition of the disputed domain name, this is a strong indicator of 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 be transferred to the Complainant. /Evan D. Brown/ Evan D. Brown Sole Panelist Date: May 25, 2024
Full & Egal Universal Law Academy