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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Morrison & Foerster LLP v. PrivacyGuardian.org / Paulet Jean

Case No. D2019-1060

1. The Parties

The Complainant is Morrison & Foerster LLP, United States of America (“United States”), self-represented.

The Respondent is PrivacyGuardian.org, Canada / Paulet Jean, France.

2. The Domain Name and Registrar

The disputed domain name <morrisonandfosterllp.com> (the “Disputed Domain Name”) is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 8, 2019. On May 8, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 8, 2019, 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 May 10, 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 May 11, 2019.

The Center verified that the Complaint together with the amendment to the Complaint/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 May 15, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 4, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 5, 2019.

The Center appointed Steven A. Maier as the sole panelist in this matter on June 11, 2019. 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 an international law firm.

The Complainant is the owner of trademark registrations for MORRISON & FOERSTER including United States trademark number 1665352 registered on November 19, 1991, for legal services in Class 42.

The Disputed Domain Name was registered on May 4, 2019.

According to evidence submitted by the Complainant, the Disputed Domain Name has resolved to a website which appears to be operated by a Canadian law firm named Morrison & Foster LLP.

5. Parties’ Contentions

A. Complainant

The Complainant submits that it has traded under the name and trademark MORRISON & FOERSTER since at least 1975. It states that it operates 17 offices in the United States, Europe, and Asia and that it employs over 1,000 lawyers to service its clients, which include leading corporations and institutions and Fortune 100 companies.

The Complainant submits that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which it has rights. It states that the Disputed Domain Name is effectively identical to its trademark MORRISON & FOERSTER save that it omits the letters “er” as they first appear in FOERSTER.

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. It states that it has never licensed or authorized the Respondent to use its trademark MORRISON & FOERSTER, that the Respondent has not commonly been known by that name and that the Respondent is making neither bona fide commercial use nor legitimate noncommercial or fair use of the Disputed Domain Name.

The Complainant submits that the Disputed Domain Name has been registered and is being used in bad faith. In particular, the Complainant contends that the Disputed Domain Name itself comprises an obvious misspelling of the Complainant’s own name and trademark and therefore constitutes “typosquatting”. The Complainant submits that the Respondent’s website does not represent a genuine law firm, that the contact details provided on the website are false and that the text of the Respondent’s “About Us” page has been copied wholesale from another, legitimate, law firm. Further, the Complainant submits evidence that the Respondent has sent emails from an email address “[...]@morrisonandfosterllp.com” to the Complainant’s clients, which it submits is an attempt to elicit information from them by way of a deceptive “phishing” exercise.

The Complainant requests the transfer of the Disputed Domain Name.

B. Respondent

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

6. Discussion and Findings

In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:

(i) that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(iii) that the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has established that it is the owner of the registered trademark MORRISON & FOERSTER. The Panel finds the Complainant’s trademark to be distinctive and that the Disputed Domain Name is highly similar to that trademark, omitting only the first pair of letters “er” found in FOERSTER. The Panel finds that the necessary substitution of the term “and” for the ampersand in the Complainant’s trademark, the addition of the term “llp”, and the generic Top-Level Domain (“gTLD”) “.com” are of no material significance for the purpose of comparison and, therefore, that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

B. Rights or Legitimate Interests

In the view of the Panel, the Complainant’s submissions referred to above give rise to a prima facie case for the Respondent to answer that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. However, the Respondent has not participated in this administrative proceeding and has not provided any explanation for the registration of the Disputed Domain Name or its use as described above, whether in accordance with any of the criteria set out in paragraph 4(c) of the Policy or otherwise. Having no other evidence of any rights or legitimate interests on the Respondent’s part, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

C. Registered and Used in Bad Faith

The Panel accepts the Complainant’s submissions that the Disputed Domain Name is nearly identical to the Complainant’s distinctive name and trademark and that it has been used for the purposes of a bogus website and to send deceptive emails to the Complainant’s clients. In the circumstances, the only inference that the Panel can reasonably draw is that the Respondent both registered and has used the Disputed Domain Name in the knowledge of the Complainant’s business and trademark and with the intention of misleading Internet users and recipients of its emails. Specifically, the Panel finds that, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website (paragraph 4(b)(iv) of the Policy). The Panel therefore finds that the disputed domain name has been registered and is being used in 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, <morrisonandfosterllp.com> be transferred to the Complainant.

Steven A. Maier
Sole Panelist
Date: June 25, 2019

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