WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nelson Mullins Riley & Scarborough LLP v. Jamie Feinmesser
Case No. D2020-0585
1. The Parties
Complainant is Nelson Mullins Riley & Scarborough LLP, United States of America (“United States”), represented internally.
Respondent is Jamie Feinmesser, United States.
2. The Domain Name and Registrar
The disputed domain name <nelsonmulliins.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 6, 2020. On March 9, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 10, 2020, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details
The Center verified that the 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 March 12, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 1, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 3, 2020.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on April 15, 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
Complainant is the owner of registration for the word service mark NELSON MULLINS on the Principal Register of the United States Patent and Trademark Office (“USPTO”), registration number 3,754,391, registration dated March 2, 2010, in international class 45, covering legal services. Complainant is the owner of additional NELSON MULLINS-formative marks on the USPTO Principal Register.
Complainant is a law firm based in the United States with twenty-five offices that employs more than 800 professional service providers. Complainant’s gross revenues place it among the top 100 highest grossing law firms in the world. Complainant operates a commercial website at “www.nelsonmullins.com”.
According to the Registrar’s verification, Respondent is registrant of the disputed domain name. According to that verification, the disputed domain name was registered by Respondent on February 11, 2020.
The disputed domain name has not been associated with an active website. On the day the disputed domain name was registered, Respondent used it as domain identifier to originate an email in which the username was identical to that of a partner in Complainant law firm. The email was transmitted to a member of Complainant’s accounting staff directing that USD 400,000 be transferred to a designated third-party account at a major United States bank. The seemingly internal email (originating with the confusingly similar domain and a username identical to a law firm partner) was identified as fraudulent by Complainant and the transfer was not made. Complainant promptly requested the Registrar to suspend Respondent’s services, and the Registrar suspended those services.
The registration agreement between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, one of which is the Center, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
5. Parties’ Contentions
Complainant alleges that it owns rights in the service mark NELSON MULLINS (and related formative marks), and that the disputed domain name is confusingly similar to that service mark.
Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name because: (1) Respondent is not known by the disputed domain name; (2) Complainant has not authorized Respondent to use its service mark in any way; (3) Respondent does not have any connection or affiliation with Complainant; (4) Respondent has not made a bona fide use of the disputed domain name nor engaged in any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services; and (5) Respondent’s use of the disputed domain name is in furtherance of an illegal activity.
Complainant argues that Respondent registered and is using the disputed domain name in bad faith because: (1) using the disputed domain name in connection with a scheme to defraud evidences bad faith; (2) Respondent intentionally adopted Complainant’s service mark in the disputed domain name to target Complainant; (3) Respondent’s registration of Complainant’s well-known mark without having any association with Complainant in itself evidences bad faith, and; (4) providing false contact details is evidence of bad faith.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceeding that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center formally notified the Complaint to Respondent at the email and physical addresses provided in its record of registration. It appears that express courier physical delivery could not be completed to the address provided by the Registrar, because of false and/or incomplete address information provided by Respondent, but courier delivery was forwarded and eventually signed for by a third party. There is no indication in the record of this proceeding of difficulties in transmitting email to the address provided by Respondent. The Center took those steps prescribed by the Policy and the Rules to provide notice to Respondent, and those steps are presumed to satisfy notice requirements.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use and to obtain relief. These elements are that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) 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.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
Complainant has provided evidence of rights in the service mark NELSON MULLINS, including by registration at the USPTO and use in commerce. See Factual Background, supra. Respondent has not challenged Complainant’s assertion of rights. The Panel determines that Complainant has established rights in the service mark NELSON MULLINS.
The disputed domain name differs from Complainant’s service mark only by an additional letter “i” in the term MULLINS to form “mulliins”. Such an addition appears deliberately intended by Respondent to cause confusion among viewers of the disputed domain name who are likely to mistakenly associate it with Complainant’s service mark. The Panel determines that the disputed domain name is confusingly similar to Complainant’s service mark.
The Panel determines that Complainant has established rights in the service mark NELSON MULLINS, and that the disputed domain name is confusingly similar to that service mark.
B. Rights or Legitimate Interests
Complainant’s allegations to support Respondent’s lack of rights or legitimate interests in the disputed domain name are outlined above in section 5A, and the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name.
Respondent has not replied to the Complaint, and has not attempted to rebut Complainant’s prima facie showing of lack of rights or legitimate interests.
Respondent’s use of the disputed domain name in an email address incorporating a username identical to that of a partner in Complainant law firm, and using that email address in an attempt to fraudulently divert funds from Complainant, does not establish rights or legitimate interests in the disputed domain name in favor of Respondent.
Respondent’s use of the disputed domain name does not otherwise manifest rights or legitimate interests.
The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
In order to prevail under the Policy, Complainant must demonstrate that the disputed domain name “has been registered and is being used in bad faith” (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy states that “for the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith”. These include that, “(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] website or location or of a product or service on [the respondent’s] website or location”.
Respondent has used the disputed domain name intentionally for purposes of commercial gain to establish Internet user confusion regarding Complainant as the source of an internal email communication intended to defraud Complainant of funds by diverting them at Respondent’s direction. Respondent was manifestly aware of Complainant’s rights in its service mark when it undertook this action. Such use evidences bad faith.
The Panel determines that Respondent registered and is using the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
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 <nelsonmulliins.com> be transferred to Complainant.
Frederick M. Abbott
Date: April 29, 2020