WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Paul Clote a/k/a Paul David Clote and Paul D. Clote v. Domains By Proxy, LLC / Clote Nomore

Case No. D2019-3002

1. The Parties

The Complainant is Paul Clote a/k/a Paul David Clote and Paul D.Clote, United States of America (“United States”), self-represented.

The Respondent is Domains By Proxy, LLC, United States / Clote Nomore, United States.

2. The Domain Name and Registrar

The disputed domain name <paulclote.com> (the “Domain Name”) is registered with Wild West Domains, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 5, 2019. On December 5, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 9, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 18, 2019, 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 December 18, 2019. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed a second amended Complaint on December 23, 2019.

The Center verified that the Complaint and amended Complaints 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 January 7, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 27, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 30, 2020.

The Center appointed W. Scott Blackmer as the sole panelist in this matter on February 17, 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 lawyer licensed for the past 42 years in the state of Texas, United States, currently practicing with the law firm of McGinnis Lochridge in Houston, Texas. His services are advertised online on the firm’s website at “www.mcginnislaw.com”. The Complainant also owns the domain name <clotelaw.com>, created in February 2002, which he currently uses for email.

The Complainant claims common law protection for PAUL CLOTE as a service mark. For 42 years, the Complainant has been known professionally as “Paul Clote”, “Paul David Clote”, or “Paul D. Clote”. For some 27 years, he practiced as “Paul Clote, Attorney at Law” or “The Law Office of Paul D. Clote”, before becoming a partner in the law firm of McGinnis Lochridge in September 2016. He continues to practice in Houston and across the state of Texas. Emails to his address in the <clotelaw.com> domain, which he has used since 1989, are forwarded to his email account in the <mcginnislaw.com> domain. The telephone number he has used since 1989 for “Paul Clote, Attorney at Law” is forwarded to McGinnis Lochridge. For at least 25 years, the Complainant has been a paid sponsor of daily or weekly radio news, weather, and other programs in Houston, publicly attributed to “Paul D. Clote, Attorney at Law” or “Paul D. Clote, Attorney/Mediator/Arbitrator”. The record shows that the Complainant has been recognized repeatedly for professional excellence in state and national publications in the years 2007-2019.

The Registrar reports that the Domain Name was created on April 8, 2019. The Domain Name was registered in the name of the domain privacy service listed above. After receiving notice of this dispute, the Registrar identified the registrant as the Respondent “Clote Nomore”, with a postal address in Tallahassee, Florida, United States. The Respondent has not replied to communications in connection with this dispute.

The Domain Name resolves to a website consisting of a single page headed “Paul Clote Reviews”, followed by the invitation to “Write about your experience with:” and the Complainant’s own publicity photo (apparently copied without permission from the McGinnis Lochridge website or from a published directory). Beneath this is a lengthy one-star “review” by Eric Jones, which is actually an advertisement and link for a marketing company called “Talk with Lead”. This “review” has nothing visibly to do with the Complainant and does not mention him. Only after this advertisement are there several negative reviews of the Complainant posted by persons that, according to the Complaint, he has never heard of. Some of these reviews are generic diatribes against lawyers (“criminals hiding behind law degrees”), while others mention types of legal services that are not included in the Complainant’s practice, such as divorce, personal bankruptcy, and loan modification. At the bottom of the page, the website displays the Complainant’s name and home address, inaccurately listing it as the “office” address. No information is provided concerning the person operating the website.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the Domain Name is identical to his name, which is protected as a common law trademark, and that the Respondent has no rights or legitimate interests in using the Domain Name to mislead the public and libel him. The Complainant finds bad faith in this effort to cause confusion, damage the Complainant’s reputation, and interfere with his business.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

Under paragraph 15(a) of the Rules, “[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”.

A. Identical or Confusingly Similar

The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the domain name”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. Where the Complainant relies on an unregistered mark, it is necessary “to show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services”, for example, with evidence concerning the duration and nature of use of the mark and with media and industry recognition. Id.,section 1.3. The Complaint includes such evidence here, over a period of decades including frequent broadcast advertising, supporting a finding that the Complainant’s personal name has become a distinguishing mark associated with legal services in the Houston, Texas area. See id.,section 1.5 (personal names used in a trademark/source-identifying sense).

The Complainant’s name is not common, and the Domain Name incorporates the simplest form of the Complainant’s name in its entirety. The generic Top-Level Domain (“gTLD”) “.com” “is viewed as a standard registration requirement” and as such is normally disregarded under the first element. Id., section 1.11.2. The Panel finds that the Domain Name is confusingly similar to the Complainant’s common law service mark.

Accordingly, the Panel concludes that the Complainant has established the first element of the Complaint.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the respondent may establish rights or legitimate interests in a domain name, by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) that the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Since a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1. The Complainant has demonstrated trademark rights and a lack of permission to incorporate the Complainant’s mark in the Domain Name. The Respondent has not come forward with any claims of rights or legitimate interests. Although a criticism site may reflect a legitimate interest (although this is more questionable when the domain name does not itself suggest criticism – see WIPO Overview 3.0, section 2.6.2), the criticism must be genuine and the site must not be a pretext for commercial activity. Here, the first and most substantial “review” is merely a commercial advertisement unrelated to the Complainant, and the reviews appear to be falsely generated makeweights unrelated to the Complainant’s actual practice.

The Respondent has not laid claim to a legitimate interest in criticism, and the Panel does not find persuasive evidence of a genuine criticism site in perusing the website associated with the Domain Name. The Panel concludes that the Complainant prevails on the second element of the Complaint.

C. Registered and Used in Bad Faith

The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following (in which “you” refers to the registrant of the domain name):

“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

The Complainant’s mark is not a dictionary term but a personal name associated with a long-established legal practice, with which the Respondent is clearly familiar. The Respondent is not known, and the name used for the Domain Name registration, “Clote Nomore” (most likely a play on “no more”) appears to be fictitious and simply a malicious jibe at the Complainant, like much of the content of the associated website. The site has been used to advertise the services of a marketing company, which meets the example of bad faith in the Policy, paragraph 4(b)(iv), whether or not that company is associated with the unknown Respondent. Otherwise, the site has been used to publish negative remarks about the Complainant that are meaninglessly generic or patently groundless, as they have nothing to do with the kinds of law that he practices. The fact that the Respondent obscures its identity on the website and in this proceeding contributes to an inference of bad faith, as does the Respondent’s misleading publication of the Complainant’s photo and “office” address on a purported “review” website, giving a false impression of association with the Complainant. This conduct does not satisfy the tests for a genuine criticism site, as discussed in the preceding section, and must be viewed as bad faith within the meaning of the Policy.

The Panel concludes that the Complainant has established the third element of the Complaint.

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 Domain Name, <paulclote.com>, be transferred to the Complainant.

W. Scott Blackmer
Sole Panelist
Date: March 2, 2020