WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Morrison & Foerster LLP v. Contact Privacy Inc. Customer 1248688468 / Name Redacted

Case No. D2021-0533

1. The Parties

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

Respondent is Contact Privacy Inc. Customer 1248688468, Canada / Name Redacted.1

2. The Domain Name and Registrar

The disputed domain name <mofodc.com> is registered with Google LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 20, 2021. On February 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 22, 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 February 24, 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 March 1, 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 March 3, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 23, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 24, 2021.

The Center appointed Scott R. Austin as the sole panelist in this matter on April 1, 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 states in its Complaint and provides evidence in the respective annexes sufficient to support that Complainant is an international law firm of over 1,000 lawyers in 16 offices located throughout the world, including Washington, D.C., United States. Complainant’s lawyers advise clients across a broad range of industries and legal practices and its clients include large financial institutions, Fortune 100 companies, and leading technology and life sciences companies among others. Complainant states that since at least as early as 1975 it has used the trademark MOFO in connection with its legal service (the “MOFO Mark”).

Complainant also submits that based on the results of interviews with general counsel and other decision-makers at more than 500 leading companies, it is also regularly included on BTI Consulting Group’s prestigious list of “Power Elite” law firms for its legal services provided under the MOFO Mark.

Complainant has secured ownership of the following trademark registrations for the MOFO Mark:

United States Trademark Registration No. 2,481,879, MOFO, registered on August 28, 2001 for legal services under International Class 42, and claiming a first use date of October 10, 1975.

United States Trademark Registration No. 2,922,853, MOFO, registered on February 1, 2005 for educational services, namely conducting seminars in the field of law under International Class 41, and claiming a first use date of August 1, 2001.

United States Trademark Registration No. 3,616,394, MOFO, registered on May 5, 2009 for clothing items, namely, T-shirts, sweatshirts, jackets, hats, and caps under International Class 25, and claiming a first use date of January 1, 1977.

Since October 30, 1992, Complainant’s official domain name <mofo.com> has been in use from which Complainant operates its official website at “www.mofo.com” (“MOFO Website”).

The disputed domain name was registered on November 16, 2020, and has been used as part of an elaborate scheme to conduct fraudulent email activity by posting content to legal directories with attorney biographies and photos and emails impersonating employees of Complainant attempting to obtain payments and information from Complainant’s clients through a phishing scheme, as shown in the record submitted by Complainant.

5. Parties’ Contentions

A. Complainant

Complainant contends that the disputed domain name is identical or confusingly similar to Complainant’s trademark; that Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

To succeed, Complainant must demonstrate that all the elements listed in paragraph 4(a) of the Policy have been satisfied: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (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.

The standard of proof under the Policy is often expressed as the “balance of the probabilities” or “preponderance of the evidence” standard. Under this standard, an asserting party needs to establish that it is more likely than not that the claimed fact is true. See, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.2.

A. Identical or Confusingly Similar

Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant has demonstrated its rights because it has shown that it is the holder of multiple valid and subsisting trademark registrations for the MOFO Mark. See Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen, WIPO Case No. D2014-0657.

Prior UDRP panels have held “the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks”. Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.

The disputed domain name incorporates Complainant’s MOFO Mark in its entirety, but appends the geographically descriptive abbreviation “dc” for the District of Columbia, in reference to Complainant’s Washington, D.C. office. The disputed domain name, therefor, encompasses its registered MOFO Mark adding only a two letter geographical abbreviation which could easily be mistaken by consumers searching for Complainant’s legal services as a reference to its “DC” office location.

Prior UDRP panels have found that the mere addition of a geographical term or its accepted abbreviation is insufficient to distinguish a disputed domain name from a complainant’s trademark for purposes of the first element of the Policy. See, Delta Dental Plans Association v. ICS INC., WIPO Case No. D2014-0474. The addition of the Top-Level domain (“TLD”) “.com” is irrelevant in determining whether the disputed domain name is confusingly similar. See, Research in Motion Limited v thamer Ahmed Alfarshooti, WIPO Case No. D2012-1146; WIPO Overview 3.0, section 1.11.

Complainant’s MOFO Mark is readily recognizable as incorporated in its entirety into the disputed domain name and for that reason the Panel finds the disputed domain name confusingly similar to the MOFO Mark in which Complainant has rights.

Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Under the second element of the Policy, a complainant is first required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. If a complainant makes that showing, the burden of production on this element shifts to the respondent to come forward with relevant evidence of such rights or legitimate interests in the domain name. If the respondent fails to come forward with such evidence, a complainant is generally, deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. See also, Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Respondent is in default and thus has not attempted to come forward to show any rights or legitimate interests in the disputed domain name under the Policy at paragraph 4(c).

Complainant has established, prima facie, that Respondent lacks rights or legitimate interests in the disputed domain name. First, Complainant asserts it has not authorized or licensed Respondent to use the MOFO Mark in a domain name or otherwise, nor is Respondent a provider of Complainant’s services. Complainant also shows Respondent is not commonly known by the disputed domain name because Respondent is listed in the WhoIs record as Contact Privacy Inc. Customer 1248688468, and a name associated with an employee of Complainant, neither of which bears any resemblance to the disputed domain name whatsoever.

It is generally regarded as prima facie evidence of no rights or legitimate interests if a complainant shows that the disputed domain name is identical or confusingly similar to a complainant’s trademark, that the respondent is not commonly known by the disputed domain name, and that a complainant has not authorized the respondent to use its mark (or an expression which is confusingly similar to its mark), whether in the disputed domain name or otherwise. See, Roust Trading Limited v. AMG LLC, WIPO Case No. D2007-1857.

Complainant has also provided detailed explicit evidence including fake attorney biographies on well-known attorney directories and social media listing email addresses based on the disputed domain name. In fact, Complainant also shows that Respondent has further improperly registered the disputed domain name in the name of an actual employee of Complainant, unbeknownst to that employee. Such evidence shows Respondent’s use of the disputed domain name in connection with fraudulent and malicious conduct to impersonate Complainant as part of a phishing scheme to extract payment and financial information from Complainant’s clients. Prior UDRP panels have held that the use of a domain name for illegal activity (e.g., phishing, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent. See, WIPO Overview 3.0, section 2.13. See also, Springer Nature Limited v. Registration Private, Domains By Proxy, LLC / Collections Springer Nature, WIPO Case No. D2020-0955.

Furthermore, prior UDRP panels have held that domain names that consist of a complainant’s trademark plus an additional term may carry a risk of implied affiliation, and that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner. See WIPO Overview 3.0 , section 2.5.1 . In this case, the Panel finds the disputed domain name carries a risk of implied affiliation.

In view of the above, the Panel finds that Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not submitted any argument or evidence to rebut Complainant’s prima facie case. The Panel determines, therefore, that Respondent does not have rights or legitimate interests in the disputed domain name and that Complainant has successfully met its burden under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Complainant contends that because Respondent has created a domain name that is confusingly similar to Complainant’s MOFO Mark, as well as its <mofo.com> domain name, it is implausible to believe that Respondent did not have actual knowledge of Complainant’s mark when it registered its confusingly similar domain name. UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. See, WIPO Overview 3.0, section 3.1.4.

The Panel also notes here additional factors from which the Panel may infer bad faith registration: (i) Respondent’s incorporation of the geographically descriptive “dc” in the disputed domain inferring an office location of Complainant to confuse consumers, (ii) a strikingly similar string to Complainant’s MOFO Mark and official <mofo.com> domain name, which suggests Respondent targeted Complainant’s mark when it picked the disputed domain name appending only a two letter geographically descriptive difference in the disputed domain name, (iii) the lack of Respondent’s rights to or legitimate interests in the disputed domain name registered to engage in per se illegitimate activity for commercial gain. Given the circumstances of this case, such a showing is sufficient to establish bad faith registration. See, WIPO Overview 3.0, section 3.2.1.

Bad faith use is also clear from Respondent’s illegal conduct as discussed in detail in section 6.B above, sending fraudulent emails under the name of Complainant suggesting an affiliation with Complainant to solicit sensitive, legal business or confidential legal claim information from prospective or existing clients for Respondent’s commercial gain. See, WIPO Overview 3.0, section 3.4; see also, Accenture Global Services Limited v. Yankee, Yankees, WIPO Case No. D2018-0217 and BHP Billiton Innovation Pty Ltd v. Domains By Proxy LLC / Douglass Johnson, WIPO Case No. D2016-0364.

For these reasons, the Panel finds bad faith registration and use, and Complainant has met its burden under paragraph 4(a)(iii) of the Policy.

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 <mofodc.com> be transferred to Complainant.

Scott R. Austin
Sole Panelist
Date: April 15, 2021


1 From the evidence submitted by Complainant it appears reasonably certain that Respondent falsely used the name of a third party when registering the disputed domain name. In light of the potential identity theft, the Panel has redacted Respondent’s name from this decision. However, the Panel has attached as Annex 1 to this decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name of Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this decision shall not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v. FAST-12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788.