WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nelson Mullins Riley & Scarborough LLP v. Lauren Miller
Case No. D2019-2747
1. The Parties
The Complainant is Nelson Mullins Riley & Scarborough LLP, United States of America (“United States”), internally represented.
The Respondent is Lauren Miller, United States.
2. The Domain Name and Registrar
The disputed domain name <nelsomnullins.com> (the “Disputed Domain Name”) is registered with 101domain GRS Limited (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 8, 2019. On November 11, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 12, 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 November 12, 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 November 12, 2019.
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 November 13, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 3, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 4, 2019.
The Center appointed Lynda M. Braun as the sole panelist in this matter on December 10, 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
Founded in 1897, the Complainant has grown over the past 120 years into a diversified law firm of more than 800 attorneys, policy advisors, and professionals across 25 offices in the United States, serving clients in more than 100 practice areas.
The Complainant currently owns the following federal trademark registrations in the United States:
March 9, 2010
International class 45: Legal services
NELSON MULLINS (word mark)
March 2, 2010
International class 45: Legal services
NELSON MULLINS (stylized mark)
December 19, 2017
International class 45: Legal services
The above trademarks are hereinafter collectively referred to as the “NELSON MULLINS Mark”.
The Complainant registered and has continually used the <nelsonmullins.com> domain name since at least as early as April 12, 1997, which resolves to the Complainant’s official website at “www.nelsonmullins.com” to promote and market its legal services throughout the United States.
The Respondent registered the Disputed Domain Name on October 29, 2019. The Disputed Domain Name resolved to a landing page that stated: “[f]uture home of...[nelsomnullins.com]”.1 On October 31, 2019, just two days after registering the Disputed Domain Name, the Respondent initiated a series of emails to one of the Complainant’s clients, impersonating the Complainant’s Chief Executive Officer. In the email, the Respondent provided the client with instructions for making a USD 130,000 payment via a wire transfer. The Respondent’s series of emails continued until November 7, 2019, when it was discovered that the emails were part of a phishing scheme perpetrated by the Respondent. The Complainant submitted an abuse complaint to the Registrar, after which the Registrar suspended the Respondent’s hosting services pertaining to the Disputed Domain Name.
5. Parties’ Contentions
The Complainant contends that since at least as early as 1987 and 1999, respectively, the Complainant adopted and has extensively and continuously used the NELSON MULLINS RILEY & SCARBOROUGH and NELSON MULLINS common law marks in connection with the marketing, advertising, promotion, and rendering of the Complainant’s legal services. The Complainant contends that due to its long use in commerce and significant marketing, the NELSON MULLINS service mark has acquired a substantial amount of reputation and goodwill in the marketplace, which consumers recognize as belonging exclusively to the Complainant.
The following are the Complainant’s contentions:
- the Disputed Domain Name is confusingly similar to the Complainant’s trademark in which the Complainant has rights;
- the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name;
- the Disputed Domain Name was registered and is being used in bad faith; and
- the Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)(i-iii)):
(i) the Disputed 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 Disputed Domain Name; and
(iii) the Disputed Domain Name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark. The Panel concludes that the Disputed Domain Name is confusingly similar to the NELSON MULLINS Mark.
It is uncontroverted that the Complainant has established rights in the NELSON MULLINS Mark based on its years of use as well as its federally registered trademarks for the NELSON MULLINS Mark. The general rule is that “registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive”. See CWI, Inc. v. Domain Administrator c/o Dynadot, WIPO Case No. D2015-1734. The Respondent has not rebutted this presumption, and therefore the Panel finds that the Complainant has enforceable rights in the NELSON MULLINS Mark.
The Disputed Domain Name <nelsomnullins.com> consists of a misspelling of the NELSON MULLINS Mark, followed by the generic Top-Level Domain (“gTLD”) “.com”. This misspelling is an example of typosquatting, a situation in which a domain name includes a misspelled registered trademark. Here, the use of a juxtaposition of the letters “n” and “m” does not operate to prevent a finding of confusing similarity between the NELSON MULLINS Mark and the Disputed Domain Name. See, e.g., ALH Group Pty Ltd v. Naveen Mathur, WIPO Case No. D2015-2004; see also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), at section 1.9, which states 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 element …”. This is especially true in the present case where the letters “m” and “n” are very close to each other on a typical “qwerty” keyboard, meaning that if one were to use the second finger of one’s right hand, a single slip of the finger would result in an Internet user who intended to visit the Complainant’s website at “www.nelsonmullins.com” visiting the Respondent’s website instead. See Sanofi v. Domains By Proxy, LLC / domain admin, WIPO Case No. D2013-0368.
Furthermore, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182.
Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant.
B. Rights or Legitimate Interests
Under the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See WIPO Overview 3.0, section 2.1.
The Complainant has not authorized, licensed, or otherwise permitted the Respondent to use its NELSON MULLINS Mark. The Complainant does not have any type of business relationship with the Respondent nor is the Respondent making a legitimate noncommercial or fair use of the Disputed Domain Name. Instead, the Panel finds that the Respondent is improperly using the Disputed Domain Name for commercial gain as part of a phishing scheme to deceive the Complainant’s clients into believing that they are being contacted by the Complainant. In this phishing scheme, the Respondent sent emails to the Complainant’s client under the name of the Complainant to fraudulently induce the client to pay the Respondent via wire transfer. Such a phishing scheme cannot be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use of the Disputed Domain Name. See CMA CGM v. Diana Smith, WIPO Case No. D2015-1774.
In this case, the Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent has not submitted any substantive arguments or evidence to rebut the Complainant’s prima facie case.
Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant.
C. Registered and Used in Bad Faith
The Panel finds that the Disputed Domain Name was registered and is being used in bad faith.
First, the Disputed Domain Name was registered a number of years after the Complainant first began using its NELSON MULLINS Mark. The Panel finds it likely that the Respondent had the Complainant’s NELSON MULLINS Mark in mind when registering the Disputed Domain Name.
Second, the Respondent used the Disputed Domain Name to impersonate the Complainant and perpetrate a phishing scheme directed at the Complainant, a strong indication of bad faith. The Respondent’s phishing scheme to send fraudulent emails purporting to come from the Complainant, seeking wired funds, evidences a clear intent to disrupt the Complainant’s business, deceive individuals, and trade off the Complainant’s goodwill by creating an unauthorized association between the Respondent, the Disputed Domain Name, and the Complainant’s NELSON MULLINS Mark. See Banco Bradesco S.A. v. Fernando Camacho Bohm, WIPO Case No. D2010-1552. Such conduct is emblematic of the Respondent’s bad faith registration and use of the Disputed Domain Name. See Petróleo Brasileiro S.A. - Petrobras v. AK Bright, WIPO Case No. D2013-2063 (considering the reputation of the complainant and the emails sent by the respondent using the complainant’s trademark, the respondent is held to have registered and used the disputed domain name in bad faith). See also WIPO Overview 3.0, section 3.4 (email-based phishing scheme to solicit payment of fraudulent invoices by a complainant’s client that use a complainant’s trademark in the disputed domain name are evidence of bad faith).
Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant.
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 <nelsomnullins.com> be transferred to the Complainant.
Lynda M. Braun
Date: December 18, 2019
1 As of the writing of this Decision, the Disputed Domain Name resolves to a page that states: “[s]orry...nelsomnullins.com could not be found.”