WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pearl Cohen Zedek Latzer Baratz LLP v. Kerry Burden
Case No. D2020-2559
1. The Parties
The Complainant is Pearl Cohen Zedek Latzer Baratz LLP (hereinafter “Complainant”), United States of America (“United States” or “US”), internally represented.
The Respondent is Kerry Burden, United States (hereinafter “Respondent”).
2. The Domain Name and Registrar
The disputed domain name <pearl-cohen.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 October 2, 2020. On October 2, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 3, 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 sent an email communication to Complainant on October 12, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint to complete Respondent’s contact details on October 13, 2020.
The Center verified that the Complaint together with the amendment to 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 October 19, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 8, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 10, 2020.
The Center appointed M. Scott Donahey as the sole panelist in this matter on November 18, 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 a law firm based in New York and providing legal services to leading innovation-driven enterprises. The firm is both nationally and internationally known for its practice of intellectual property and technology law. The firm has offices in Israel, the United States, and the United Kingdom, and is one of the largest patent firms in Israel. It has more than 200 attorneys and 350 professionals worldwide. Complainant is the registrant of the domain name <pearlcohen.com>, which it registered on May 8, 2013. Complaint, Annex 1. Complainant is also the registrant of the service mark PEARL COHEN No. 5867206, registered with the United States Patent and Trademark Office (USPTO) on September 24, 2019, and first used in commerce in December 2014. Complaint, Annex 4. The trademark and domain name have been in continuous use in connection with Complainant’s provision of legal services.
Respondent registered the disputed domain name <pearl-cohen.com> on May 31, 2020, well after Complainant’s first use of the PEARL COHEN mark in commerce and eight months after the registration of the PEARL COHEN trademark with the USPTO. Complaint, Annex 2. Respondent has not used the disputed domain name in connection with any bona fide offering of goods or services. Rather, Respondent has used the disputed domain name to generate emails to Complainant’s clients, mimicking Complainant’s email addresses, email signature blocks, and Complainant’s coloring, seeking payments owing to Complainant, in one case successfully obtaining monies due and owing to Complainant. Complaint, Annex 6.
5. Parties’ Contentions
Complainant asserts that the disputed domain name is confusingly similar to Complainant’s registered trademark. Complainant argues that Respondent has no rights or legitimate interests in respect of the disputed domain name. Finally, Complainant contends that the disputed domain name has been registered and is being used in bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
“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.”
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and,
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and,
(iii) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name consists of Complainant’s registered trademark PEARL COHEN, with a hyphen inserted between the two words in the mark, i.e., “pearl-cohen” and the generic Top-Level Domain (“gTLD) “.com”. Accordingly, the Panel has no difficulty in finding that the disputed domain name is confusingly similar to Complainant’s trademark.
B. Rights or Legitimate Interests
While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.
In the present case Complainant alleges that Respondent has no rights or legitimate interests in respect of the disputed domain name and Respondent has failed to assert any such rights. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
Respondent is using the disputed domain name to contact Complainant’s clients, purporting to originate from Complainant, and seeking payment of monies owed to Complainant. At least one such attempt resulted in payment being made to the registrant of the disputed domain name. Respondent is thus engaged in phishing, resulting in the receipt by Respondent of monies due and owing to Complainant. Accordingly, the Panel finds that the disputed domain name has been registered and is being used 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 disputed domain name <pearl-cohen.com> be transferred to Complainant.
M. Scott Donahey
Date: November 18, 2020