WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Donnelly Minter & Kelly, LLC v. Host Master, 1337 Services LLC
Case No. D2021-1380
1. The Parties
The Complainant is Donnelly Minter & Kelly, LLC, United States of America (“United States”), represented by Myers Wolin, LLC, United States.
The Respondent is Host Master, 1337 Services LLC, Saint Kitts and Nevis.
2. The Domain Name and Registrar
The disputed domain name <dmklawgroup.net> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 4, 2021. On May 5, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 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 the Complainant on May 12, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 12, 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 the Respondent of the Complaint, and the proceedings commenced on May 21, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 10, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 14, 2021.
The Center appointed Antony Gold as the sole panelist in this matter on June 22, 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
The Complainant is a law firm which was established in 2014 and is based in New Jersey, United States. It has traded since inception as “Donnelly Minter & Kelly LLC” and is the owner of a pending application for a United States service mark for DONNELLY MINTER & KELLY, Serial Number 90582504, filed on March 16, 2021 in class 45. Additionally, the Complainant owns and operates the domain name <dmklawgroup.com> which resolves to a website providing information about the Complainant and its services.
The disputed domain name was registered on February 4, 2021. It resolves to a website the appearance and content of which has been copied from the Complainant’s website. The copying includes, by way of example only, the detailed written descriptions of the Complainant, the partners in its practice and the services it offers to clients, the Complainant’s distinctive cross-shaped logo, the colour, size and layout of the text and the accompanying photographs.
5. Parties’ Contentions
The Complainant says that the disputed domain name is identical or confusingly to a trade mark or service mark in which it has rights. In support of this claim it refers both to its pending application for DONNELLY MINTER & KELLY and to the domain name which is used for its own website, namely <dmklawgroup.com>. The Respondent has scraped the contents of the Complainant’s website in order to purport to provide identical services from identical legal professionals.
The Complainant asserts also that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is using the disputed domain name in order to impersonate the Complainant, tarnish its goodwill and defraud the public. There is no indication on the Respondent’s website that it is undertaking legitimate business transactions. The email addresses and contact information on its website are identical to the corresponding information contained on the Complainant’s website. Moreover, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Lastly, the Complainant says that the disputed domain name was registered and is being used in bad faith. The sole objective of the Respondent is to use the disputed domain name in order to trade on the Complainant’s goodwill and defraud the public. The disputed domain name can only be used for the purpose of intentionally attracting Internet users to the Respondent’s website for illegal commercial gain and creating a likelihood of confusion with the Complainant’s trade mark as to its apparent affiliation with the Complainant. The confusion caused to the public as to the source of the services ostensibly provided will give significant illegitimate value to the Respondent.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Dealing, first, with the Respondent’s failure to file a response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate.
Paragraph 4(a) of the Policy provides that the Complainant proves each of the following three elements in order to succeed in its Complaint:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the 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.
A. Identical or Confusingly Similar
For the purpose of considering the first element, the generic Top Level Domain (“gTLD”) component of the disputed domain name, namely “.net”, is disregarded as this is a technical requirement of registration.
In support of its contention that the disputed domain name is confusingly similar to a trade mark in which it has rights, the Complainant has sought to rely on its pending service mark application forDONNELLY MINTER & KELLY. Two issues require consideration in this respect.
First, the Complainant’s service mark application has not yet proceeded to grant and a pending application, is not a right for the purposes of the first element. However, whilst the information provided in the Complaint as to the nature and extent of the Complainant’s use of “Donnelly, Minter & Kelly” is limited, the Panel notes that the Complainant has been trading as “Donnelly, Minter & Kelly LLC”, being a reasonably-sized full service law firm, for approximately 7 years and that its website records that it is recognized in a third party guide to legal services. For these reasons, the Panel proceeds on the basis that the Complainant has acquired unregistered trade mark rights in DONNELLY MINTER & KELLY for the purposes of the Policy.
Additionally, as the domain name used by the Complainant, <dmklawgroup.com>, was registered by the Complainant in 2014 and appears to have been in continuous use since that date for the purpose of providing Internet users with information about the Complainant and its services, the Complainant may also have acquired unregistered trade mark rights in DMKLAWGROUP, this being a term to which the disputed domain name is identical. However, the Panel makes no specific finding in this respect as this is not a point which has been directly advanced by the Complainant, nor is it necessary to do so for the purpose of determining whether the Complainant has satisfied the first element.
Second, the comparison under the first element is between DONNELLY MINTER & KELLY and “dmklawgroup”. Even allowing for the fact that domain names sometimes comprise obvious contractions or acronyms of a registrant’s trade mark, a straightforward visual comparison may not necessarily lead to a consideration that the disputed domain name is confusingly similar to DONNELLY MINTER & KELLY.
However, section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”) explains, however, that the test under the first element is; “to assess whether the mark is recognizable within the disputed domain name. (This may also include recognizability by technological means such as search engine algorithms.)”.
The Panel has noted that, if the letters and words “dmklawgroup”are typed into the Google search engine1 , the top ranking result is for the Complainant’s website at “www.dmklawgroup.com”. The combination of letters and words “dmklawgroup” is therefore technically recognized by Google’s search algorithms as denoting the Complainant and the services it provides under its DONNELLY MINTER & KELLY unregistered mark. In this sense, the Complainant’s mark is recognizable within the disputed domain name.
Furthermore, as explained at section 1.7 of the WIPO Overview 3.0; “….Panels have also found that the overall facts and circumstances of a case (including relevant website content) may support a finding of confusing similarity, particularly where it appears that the respondent registered the domain name precisely because it believed that the domain name was confusingly similar to a mark held by the complainant”. Section 1.15 of the WIPO Overview 3.0 explains that; “… in some instances, panels have however taken note of the content of the website associated with a domain name to confirm confusing similarity whereby it appears prima facie that the respondent seeks to target a trademark through the disputed domain name”. See also; Supercell Oy v. WhoisProxy.com Ltd / Jordan Rash, Application Automation LLC, WIPO Case No. D2015-1445 and Golden Goose S.p.A. v. Phillipp Fischer, WIPO Case No. D2017-1010.
The content of the Respondent’s website clearly indicates that the Respondent has registered the disputed domain name because it believes it to be confusingly similar to the Complainant’s unregistered mark and that it is seeking to target the Complainant through its use of the disputed domain name. This therefore affirms the confusing similarity between the disputed domain name and the Complainant’s DONNELLY MINTER & KELLY mark.
Accordingly, the Panel finds that the Complainant has unregistered trade mark rights in DONNELLY MINTER & KELLY and that the disputed domain name is confusingly similar to this mark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides, without limitation examples of circumstances whereby a respondent might demonstrate that it has rights or legitimate interests in a domain name. In summary, these are if a respondent has used or prepared to use the domain name in connection with a bona fide offering of goods and services, if a respondent has been commonly known by the domain name, or if a respondent has made a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark in issue.
It is unclear exactly why the Respondent has chosen to register the disputed domain name and to use it in order to resolve to a substantially cloned copy of the Complainant’s website. However, the Respondent’s clear intent is to mislead Internet users into thinking that its website is that of the Complainant; use of the disputed domain name in order to impersonate the Complainant self-evidently does not amount to use in connection with a bona fide offering of goods and services.
There is no evidence that the Respondent has been commonly known by the disputed domain name and the second circumstance under paragraph 4(c) of the Policy is therefore inapplicable. The third circumstance is also inapplicable; the Respondent’s website is commercial in character and the composition of the disputed domain name, being confusingly similar to the Complainant’s DONNELLY MINTER & KELLY name and identical (save for the gTLD) to the domain name used by the Complainant, carries a significant risk of implied affiliation with the Complainant, which prevents its use from being considered fair.
The Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name and the burden of production shifts to the Respondent to show that it does have such rights or legitimate interests. In the absence of any response from the Respondent to the Complaint, it has failed to satisfy that burden. The Panel accordingly finds that the Respondent has no rights or legitimate interests with respect to the disputed domain name.
C. Registered and Used in Bad Faith
Given the confusing similarity between the disputed domain name and the Complainant’s mark and fact that the Respondent has created a clone of the Complainant’s website, it is evident that, as at the date of its registration of the disputed domain name, the Respondent was aware of the Complainant and of the capacity of the disputed domain name to attract, and cause confusion to, Internet users. Its registration in these circumstances is in bad faith; see Walgreen Co. v. Muhammad Azeem / Wang Zheng, Nicenic International Group Co., Limited, WIPO Case No. D2016-1607.
Paragraph 4(b) of the Policy sets out, without limitation, circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The circumstance set out in paragraph 4(b)(iv) of the Policy is if a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website.
The use to which the Respondent has put the disputed domain name falls within paragraph 4(b)(iv) of the Policy in that it resolves to a copy of the Complainant’s website which is intended to mislead Internet users into thinking that it is that of the Complainant. The likelihood that Internet users will be misled is increased because of the confusing similarity between the disputed domain name and the Complainant’s DONNELLY MINTER & KELLY mark and the fact that, save for the differing gTLD, the disputed domain name is identical to the Complainant’s own domain name. In these circumstances, there is no conceivable good faith use which the Respondent could make of the disputed domain name, nor has the Respondent attempted to explain or justify its position. These factors collectively point to bad faith registration and use of the disputed domain name; see the decision of the panel in Swarovski Aktiengesellschaft v. WhoisGuard Protected / Peter D. Person, WIPO Case No. D2014-1447 and also Barclays Bank PLC v. PrivacyProtect.org / Sylvia Paras, WIPO Case No. D2011-2011.
For these reasons, the Panel finds that the disputed domain name was 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 <dmklawgroup.net> be transferred to the Complainant.
Date: July 6, 2021
1 As outlined at section 4.8 of the WIPO Overview 3.0, a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision.