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WIPO Arbitration and Mediation Center


Ropes & Gray LLP v. Contact Privacy Inc. Customer 1248870845 / Barry Nicholson

Case No. D2021-0011

1. The Parties

Complainant is Ropes & Gray LLP, United States of America (“United States”), internally represented, United States.

Respondent is Contact Privacy Inc. Customer 1248870845, Canada / Barry Nicholson, United States.

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 4, 2021. On January 5, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 5, 2021, 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 January 6, 2021, 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 January 8, 2021.

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 January 11, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 31, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 1, 2021.

The Center appointed Colin T. O'Brien as the sole panelist in this matter on February 8, 2021. 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 an international law firm with 1,400 attorneys and professionals in eleven offices in the United States, Europe, and Asia, including Boston, New York, Washington, DC, Chicago, San Francisco, Silicon Valley, London, Seoul, Tokyo, Shanghai, and Hong Kong. Complainant has always been known by the name and mark Ropes & Gray for over 150 years. Complainant owns a federal registration for ROPES & GRAY, Registration Number 2,902,936, registered on November 16, 2004. Since October 12, 1995, Complainant has owned the <ropesgray.com> domain name and it is the principal domain name used by Complainant.

Respondent registered the Disputed Domain Name on December 10, 2020. The Disputed Domain Name does not resolve to an active webpage and did not at the time of filing the Complaint.

5. Parties’ Contentions

A. Complainant

The Disputed Domain Name shows a clear resemblance to Complainant’s registered ROPES & GRAY mark and <ropesgray.com> domain name. The only differences between Complainant’s registered ROPES & GRAY mark and the Disputed Domain Name are the removal of the ampersand (“&”) and the addition of two letters (“us”) to the end of the second word “gray”, which Complainant argues is in reference to the United States to convey a geographic location. These minor differences are likely to cause confusion, to cause mistake, and to deceive as to the affiliation, connection, or association of Respondent with Complainant.

There is no relationship or affiliation between Complainant and Respondent giving rise to any license, permission, or other right by which Respondent could own or use any domain name incorporating Complainant’s registered ROPES & GRAY mark.

Respondent has not used or prepared to use the Disputed Domain Name with any bona fide offering of goods or services, has not been commonly known by the Disputed Domain Name, and has not made any noncommercial or fair use of the Disputed Domain Name.

Respondent’s clear intent is to mislead or to deceive Complainant’s current and prospective clients, and/or to tarnish Complainant’s ROPES & GRAY mark and its reputation, by sending fraudulent emails using the Disputed Domain Name as part of a business email compromise scheme.

Complainant has previously been the target of a similar typo-squatting incident from Respondent in which, upon information and belief, the prior disputed domain name (<ropesgrays [dot] com>) was used by Respondent as part of a business email scheme to facilitate wire transfer fraud impacting one of Complainant’s clients.

While the Disputed Domain Name now does not resolve to an active website, the passive holding of a domain name does not prevent a finding of bad faith. The presence of the Disputed Domain Name in the hands of Respondent poses an abusive threat hanging over the head of Complainant.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

Complainant has demonstrated it owns registered trademark rights in the ROPES & GRAY mark, that it has used the domain name <ropesgray.com> since 1995, and that no other entity has rights or uses the mark. The addition of “us” and removal of “&” does not prevent a finding of confusing similarity. The ampersand is incapable of being reflected in a domain name and the addition of terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8, and Chernow Communications, Inc. v. Jonathan D. Kimball, WIPO Case No. D2000-0119 (“the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark”).

Accordingly, the Disputed Domain Name is confusingly similar to a mark in which Complainant has rights.

B. Rights or Legitimate Interests

Complainant has presented a prima facie case that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; has not at any time been generally known by the Disputed Domain Name; has not used or made demonstrable preparations to use the Disputed Domain Name; and, is not making a legitimate noncommercial of fair use of the Disputed Domain Name. Complainant has also alleged that Respondent previously attempted to illegitimately deceive potential clients of Complainant by using a confusingly similar domain name to Complainant’s ROPES & GRAY mark. See, Ropes & Gray LLP v. Contact Privacy Inc. Customer 0158624574, WIPO Case No. D2020-2376. The fact that Respondent – at least at the level of the privacy service given that the veracity of the underlying registrant cannot be known with certainty - has previously attempted to scam clients of Complainant using a confusingly similar domain name establishes Respondent has no rights or legitimate interests in the Disputed Domain Name. Even if, for the sake of argument, there would be a different underlying registrant than in the above-cited case, the mere composition of the Disputed Domain Name would undermine any claim to rights or legitimate interests that Respondent may make. The Panel moreover notes that MX records appear to be active.

After a complainant has made a prima facie case, the burden of production shifts to the respondent to present evidence demonstrating rights or legitimate interests in the domain name. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.

Here, Respondent has provided no evidence of any right or legitimate interest in the Disputed Domain Name.

In the absence of any evidence indicating a legitimate reason for registering the Disputed Domain Name, the Panel finds that Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Disputed Domain Name was registered many years after Complainant first registered and used its ROPES & GRAY mark. Given the evidence provided by Complainant, it is clear Respondent undoubtably knew of Complainant’s ROPES & GRAY mark and knew that it had no rights or legitimate interests in the Disputed Domain name. There is no non-benign reason for Respondent to have registered a domain name that is virtually identical to Complainant’s name and trademark.

Further, the use of the Disputed Domain Name by Respondent is in bad faith. Paragraph 4(b)(iv) states that evidence of bad faith may include a respondent’s use of a domain name to intentionally attempt to attract, for commercial gain. Complainant has also alleged that Respondent has previously used a confusingly similar domain name to scam the Complainant’s client. The current passive holding of the Disputed Domain Name, which can nevertheless be used for email purposes and as ammunition to attack the Complaint and its clients, is clearly indicative of bad faith use on the part of Respondent. In sum, there is a clear implausibility of the possibility of Respondent’s good faith use of the Disputed Domain Name, Complainant’s mark is distinctive, Respondent has failed to submit a response, and Respondent has concealed its identity. In the totality of circumstances, the Panel finds bad faith. See WIPO Overview 3.0, section 3.3.

In the absence of any evidence or explanation from Respondent, the Panel finds that the only plausible basis for registering the Disputed Domain Name has been for illegitimate purposes.

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 <ropesgrayus.com> be transferred to Complainant.

Colin T. O'Brien
Sole Panelist
Date: February 19, 2021