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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Akerman LLP v. Withheld for Privacy Purposes, Privacy Service / Teresa Swanzy, grpord

Case No. D2021-1120

1. The Parties

The Complainant is Akerman LLP, United States of America (hereinafter, Complainant), represented internally.

The Respondent is Withheld for Privacy Purposes, Privacy Service, Iceland / Teresa Swanzy, grpord (hereinafter “Respondent”), United States of America.

2. The Domain Name and Registrar

The disputed domain name <akermam.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 12, 2021. On April 13, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 13, 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 April 18, 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 April 22, 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 April 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 13, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 14, 2021.

The Center appointed M. Scott Donahey as the sole panelist in this matter on May 25, 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 a law firm with more than 700 lawyers and consultants. The firm has 25 offices in the United States. Complainant was founded more than 100 years ago and is currently ranked among the top 100 law firms in the United States by the American Lawyer publication. It was listed in the Working Mothers list of the 2020 Best Law Firms for women. Complainant has used the AKERMAN mark since its inception and the AKERMAN mark was first registered in the United States on November 15, 2011 (Registration No. 4055042). Complaint, Annex F.

Complainant’s AKERMAN mark has been used continuously and widely in the United States and is recognized in the legal community, especially in businesses requiring legal services. Complainant registered the <akerman.com> domain name in 1996 and has used the domain name continuously thereafter. Complaint, Annex D.

Respondent registered the disputed domain name <akermam.com> on March 25, 2021. On March 25, 2021, Respondent, purporting to be one of the partners in Complainant’s law firm, used the disputed domain name to send several emails to one of Complainant’s clients requesting payment of invoices that Respondent had created and enclosed, and listed bank accounts for payment that were not in any way associated with Complainant. Complaint, Annex G, and Attachment 1 thereto.

5. Parties’ Contentions

A. Complainant

Complainant asserts that the disputed domain name is confusingly similar to Complainant’s trademark and domain name. Complainant contends that Respondent has no rights or legitimate interests in respect to the disputed domain name. Complainant argues that Respondent has registered and is using the disputed domain name in bad faith.

B. Respondent

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 differs from Complainant’s legitimate domain name and its common law and registered trademark AKERMAN by only one letter: Respondent changed the final “n” to an “m” and registered the disputed domain name <akermam.com>. This is not only visually confusingly similar to Respondent’s registered trademark, but as the letter “m” is immediately next to the letter “n” on a standard typewriter, it takes advantage of typographical errors made by unsuspecting typists, who will reach any website that Respondent might create using the disputed domain name, even though to date Respondent has not done so. Accordingly, the Panel finds that the disputed domain name is 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 almost 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. Furthermore, panels have categorically held that the use of a domain name for illegal activity (i.e., in this instance, the impersonation of Complainant in Respondent’s fraudulent email scheme) can never confer rights or legitimate interests on a respondent. See section 2.13 of the WIPO Overview 3.0.

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

Immediately after registering the disputed domain name, Respondent used the disputed domain name in letters sent to one of Complainant’s clients in the name of one of Complainant’s partners, requesting payments of spurious bills for legal services. This is an obvious case of bad faith registration and use. Accordingly, the Panel finds that Respondent has registered and used the disputed domain name in bad faith.

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, <akermam.com>, be transferred to Complainant.

M. Scott Donahey
Sole Panelist
Date: May 30, 2021

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