WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Latham & Watkins LLP v. Domain Hostmaster Customer ID: 01528735113163, Whois Privacy Services Pty Ltd / Mike Patterson
Case No. D2016-2169
1. The Parties
Complainant is Latham & Watkins LLP of Los Angeles, California, United Sates of America (“United States”), self-represented.
Respondent is Domain Hostmaster Customer ID: 01528735113163 of Fortitude Valley, Queensland, Australia / Mike Patterson of Cumming, Georgia, United States.
2. The Domain Name and Registrar
The disputed domain name <lathamwatkins.com> (the “Domain Name”) is registered with Fabulous.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 27, 2016. On October 27, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 28, 2016, 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 October 28, 2016 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 November 1, 2016.
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 November 4, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 24, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent of its default on November 25, 2016.
The Center appointed John C. McElwaine as the sole panelist in this matter on December 5, 2016. 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, Latham & Watkins LLP, is one of the world’s largest law firms with over 2,000 attorneys in thirteen different countries and with thirty-three offices worldwide.
Complainant owns trademark registrations for marks consisting of or containing the term “Latham & Watkins” in several countries, including a United States trademark registration for LATHAM & WATKINS, U.S. Registration No. 2,413,795, registered on December 19, 2000, in Class 42 for “providing information in the field of law via a website on global computer networks and legal services”.
Complainant also owns numerous domain names consisting of or incorporating its LATHAM & WATKINS mark.
The Domain Name was created on January 13, 2005. The Domain Name resolves to a parked webpage hosting pay-per-click links related to Complainant.
5. Parties’ Contentions
Complainant is a global general practice law firm founded in 1934 in Los Angeles, California. Complainant is routinely ranked among the best law firms in the world in leading legal publications such as The American Lawyer, MergerMarket, Chambers, and Asia Legal Business.
With respect to the first element, Complainant alleges that it has registered trademark rights in the LATHAM & WATKINS mark by virtue of multiple trademark registrations throughout the world, including in the United States, China, the European Union, Japan, Singapore and the United Arab Emirates. In the United States, Complainant specifically owns an incontestable United States federal trademark registration for LATHAM & WATKINS and alleges to have established common-law rights to the LATHAM & WATKINS mark through extensive use and promotion of such mark since at least as early as 1934. Collectively, these registered and common law trademarks rights are referred to herein as the “LATHAM & WATKINS mark”. Complainant additionally asserts that the LATHAM & WATKINS mark is well-known and famous throughout the United States and internationally. In addition, Complainant has also registered and owns numerous domain names consisting of or incorporating its LATHAM & WATKINS mark, including <latham.com>, <latham.jp>, <lathamandwatkins.jp>, <lathamandwatkins.cn>, <lathamandwatkins.fr>, <lathamandwatkins.mobi>, <lathamwatkins.eu>, <lathamwatkins.be>, <lathamwatkins.es> and <lathamwatkins.mobi>.
Complainant points out that that the ampersand character is commonly used in the names of legal services firm, but cannot be used a character in a domain name, and is frequently deleted. Complainant asserts that the Domain Name is identical to the LATHAM & WATKINS mark except for the omission of the ampersand character.
With respect to the second element of the Policy, Complainant contends that it has not provided Respondent with any authorization, license, or permission to use the LATHAM & WATKINS mark or to register the Domain Name. Complainant also alleges that Respondent has not been commonly known by the name “Latham Watkins”. Moreover, Complainant asserts that Respondent cannot claim any rights to the Domain Name because LATHAM & WATKINS is a strong and famous mark and there is no reason why Respondent would register a domain name containing the LATHAM & WATKINS mark except to trade off Complainant’s goodwill and reputation. Lastly, Complainant contends that Respondent is not making a bona fide offering of goods and services through the website hosted at the Domain Name or fair use of the domain name. Instead, it is asserted that the Domain Name is being used for commercial gain to link to a webpage that displays pay-per-click or sponsored links, including some links to competitors of Complainant.
With respect to the third element of the Policy, Complainant first asserts that Respondent’s registration of the Domain Name was in bad faith because there is sufficient evidence that Respondent knew, or at a minimum should have known, of Complainant’s LATHAM & WATKINS mark. It is asserted that Respondent’s use of pay-per-click links to competing legal service providers demonstrates a clear attempt to capitalize on Complainant’s trademark rights at the time of registration of the Domain Name. Complainant next asserts that Respondent’s use of the Domain Name containing Complainant’s distinctive and famous LATHAM & WATKINS mark in its near entirety is alone evidence of “opportunistic bad faith”. Lastly, Complainant alleges that Respondent is using the Domain Name for the purpose of creating confusion among consumers who are looking for Complainant’s legal services by displaying pay-per-click links on the website located at the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Even though Respondent has defaulted, paragraph 4 of the Policy requires that, in order to succeed in this UDRP proceeding, Complainant must still prove its assertions with actual evidence demonstrating:
(i) the 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
Because of Respondent’s default, the Panel may accept as true the factual allegations stated within the Complaint, and may draw appropriate inferences therefrom. See St. Tropez Acquisition Co. Limited v. AnonymousSpeech LLC and Global House Inc., WIPO Case No. D2009-1779; Bjorn Kassoe Andersen v. Direction International, WIPO Case No. D2007-0605; see also paragraph 5(f) of the Rules (“If a respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint.”). Having considered the Complaint, the Policy, the Rules, the Supplemental Rules and applicable principles of law, the Panel’s findings on each of the above cited elements are as follows.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires Complainant show that the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
Complainant has established rights in the LATHAM & WATKINS mark as evidenced by its trademark registrations, its long-standing use of the LATHAM & WATKINS mark in connection with legal services, its registration of multiple domain names consisting of the LATHAM & WATKINS mark and the significant marketing and accolades that Complainant has received.
The Domain Name <lathamwatkins.com> is confusingly similar to Complainant’s LATHAM & WATKINS mark because it contains Complainant’s LATHAM & WATKINS mark in its entirety, minus only the ampersand character. The ampersand character cannot be used as a part of a domain name and the Panel takes notice that it is commonly removed from legal services firms’ domain names. This Panel agrees that the deletion of the ampersand does not materially distinguish the Domain Name. See Hunton & Williams v. American Distribution Systems, Inc. et al., WIPO Case No. D2000-0501 (finding that <huntonwilliams.com> was the functional equivalent of the service mark HUNTON & WILLIAMS).
The Panel finds that Complainant has met its burden of showing that the Domain Name is confusingly similar to Complainant’s LATHAM & WATKINS mark.
B. Rights or Legitimate Interests
Under the Policy paragraph 4(a)(ii), Complainant has the burden of establishing that Respondent has no rights or legitimate interests in the Domain Name. Complainant need only make a prima facie showing on this element, at which point the burden shifts to Respondent to present evidence that it has some rights or legitimate interests in the Domain Name. If Respondent has failed to do so, Complainant is deemed to have satisfied its burden under paragraph 4(a)(ii) of the Policy. See Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc., WIPO Case No. D2010-1141; see also Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415; Inter-Continental Hotels Corporation v. Khaled Ali Soussi, WIPO Case No. D2000-0252.
Complainant contends that Respondent is not commonly known by the name, “Latham Watkins”. Moreover, Complainant asserts that Respondent is not a licensee of Complainant and Respondent is not otherwise authorized to use the LATHAM & WATKINS mark in the Domain Name. Although Respondent has been properly notified of the Complaint by the Center, Respondent failed to submit any response on this point. The silence of a respondent may support a finding that it has no rights or legitimate interests in respect of the domain name. See Alcoholics Anonymous World Services, Inc., v. Lauren Raymond, WIPO Case No. D2000-0007; Ronson Plc v. Unimetal Sanayi ve Tic.A.S., WIPO Case No. D2000-0011. Additionally, previous UDRP panels have found that when respondents have not availed themselves of their rights to respond to complainant, it can be assumed in appropriate circumstances that respondents have no rights or legitimate interests in the domain name at issue. See AREVA v. St. James Robyn Limoges, WIPO Case No. D2010-1017; Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim, WIPO Case No. D2003-0269.
Under paragraph 4(c) of the Policy, a respondent’s rights or legitimate interests to a domain name may be established by demonstrating any of the following three conditions: (i) before any notice to respondent of the dispute, 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) respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if respondent has acquired no trademark or service mark rights; or (iii) 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. The Panel finds that Respondent has failed to show rights or legitimate interests under any of the three conditions.
First, Respondent is not making a bona fide use of the Domain Name under paragraph 4(c)(i). When Respondent registered the Domain Name, Complainant had decades of established rights in the LATHAM & WATKINS mark. Under the Policy, registration and unauthorized use of another’s trademark in a domain name in connection to a parking page to competitors of complainant does not constitute a bona fide offering of goods and services. See Overstock.com, Inc. v. Metro Media, WIPO Case No. DME2009-0001 (use of disputed domain name consisting of the complainant’s mark in connection with a parked page did not constitute a bona fide offering of goods and services); see Fifth Third Bancorp v. Texas International Property Associates, WIPO Case No. D2007-0537; MasterCard International Incorporated v. Paul Barbell, WIPO Case No. D2007-1139.
Respondent’s website located at the Domain Name consists of a parking page that advertises sponsored listings and related links. Clicking through these advertisements directs the user to either a website on which Complainant’s competitors advertise, or a new page containing additional sponsored listings and related links. Although the Panel recognizes that parking pages may be permissible in some circumstances, as discussed in paragraph 2.6 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), none of those factors are present here. Instead, the Domain Name appears to have been registered with the intent that Internet users searching for Complainant’s website will instead be redirected to Respondent’s parked webpage for commercial gain. Such activity does not provide a legitimate interest in the Domain Name under the Policy. “It is well-established that operating a link farm parking page using a service mark in a domain name, and providing connection to services competitive with the service mark owner, does not establish rights or legitimate interests”. Get Away Today.Com Inc. v. Warren Gilbert, WIPO Case No. DCO2010-0021(collecting cases); Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267 (finding no bona fide use under paragraph 4(c)(i) where respondent had parked the domain name with at a webpage with advertisements generated by the parking company).
As discussed above, Respondent failed to put forth any evidence that it is currently and or ever was commonly known by the name reflected in the Domain Name as to establish a right or legitimate interest in the Domain Name under paragraph 4(c)(ii) of the Policy. The WhoIs data discloses no connection with the name “Latham Watkins”.
Lastly, Respondent is not making a legitimate noncommercial or fair use of the Domain Name under paragraph 4(c)(iii). Instead, Respondent is seeking commercial gain from its use of the Domain Name by establishing a parked page with advertisements that compete with Complainant’s products. Therefore, the Domain Name is used for commercial purposes and paragraph 4(c)(iii) is not applicable. See Overstock.com, Inc. v. Metro Media, WIPO Case No. DME2009-0001 (“respondent’s use of the disputed domain name to establish a parking page was “plainly not ‘noncommercial’”).
Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests and Respondent has failed to come forward to rebut that showing. The Panel has analyzed whether Respondent may possess rights or legitimate interest to the Domain Name. As provided for by paragraph 14 of the Rules, the Panel may draw such inference from Respondent’s default as it considers appropriate. For all these reasons, the Panel accepts that the second element of the Policy is established by Complainant, and Respondent has no rights or legitimate interests in respect of the Domain Name as set forth in the Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, Complainant must show that Respondent registered and is using the Domain Name in bad faith. A non-exhaustive list of factors constituting bad faith registration and use is set out in paragraph 4(b) of the Policy.
Paragraph 4(b)(iv) of the Policy specifies that bad faith exists where a respondent, by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location or of a product or service on its website or location. Here, the Domain Name consists almost entirely of Complainant’s LATHAM & WATKINS mark. The content of the website displayed at the Domain Name establishes that Respondent has targeted Complainant’s goodwill and reputation for Respondent’s pecuniary benefit and that Respondent has placed advertising that directly competes with Complainant on the website linked with the Domain Name. These targeted advertisements divert potential customers of Complainant to third-party sites where competing services are advertised within the meaning of paragraph 4(b)(iv) of the Policy. Such activity constitutes a disruption of Complainant’s business. It is undisputed that Respondent’s only use of the Domain Name is as a parked pay-per-click page. See Lego Juris A/S v. Whois Privacy Services Pty Ltd / Dzone Inc., Yeonju Hong, WIPO Case No. D2012-2442 (finding that respondent was using the domain name as a parked pay-per-click page and was, thus, intentionally attempting to attract, for commercial gain, Internet users by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website).
There is also substantial authority that registration of a domain name that is confusingly similar to a well-known trademark by any entity that has no relationship to that mark, is suggestive of bad faith. Based on Complainant’s submissions, it is clear that Respondent must have known of Complainant’s LATHAM & WATKINS mark at the time of registration of the Domain Name, and therefore Respondent registered the Domain Name in bad faith. With no Response from Respondent, this claim is undisputed. Likewise, as discussed above, Respondent’s continued use of such Domain Name as a per-per-click website is bad faith use.
For these reasons, the Panel holds that Complainant has met its burden of showing that Respondent registered and is using the Domain Name in bad faith.
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 <lathamwatkins.com> be transferred to the Complainant.
John C McElwaine
Date: December 20. 2016