WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Greenberg Traurig LLP v. Registration Private, Domains By Proxy, LLC / Jan Matousek

Case No. D2021-2585

1. The Parties

Complainant is Greenberg Traurig LLP, United States of America, represented internally.

Respondent is Registration Private, Domains By Proxy, LLC, United States of America (“United States” or “U.S.”) / Jan Matousek, United States.

2. The Domain Name and Registrar

The disputed domain name <greenbergtraurigllp.com> (the “Disputed Domain Name”) is registered with Wild West Domains, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 9, 2021. On August 10, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 10, 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 August 13, 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 August 13, 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 August 20, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 9, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 10, 2021.

The Center appointed Douglas M. Isenberg as the sole panelist in this matter on September 20, 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 that it was founded in 1967 and is “one of the largest multi-practice law firms in the world with more than 2200 attorneys across 40 offices in the United States, Latin America, Europe, Asia, and the Middle East.” Complainant states, and provides evidence to support, that it is the owner of multiple trademark registrations that consist of or contain GREENBERG TRAURIG, including U.S. Reg. No. 2,810,539 (registered February 3, 2004) (the “GREENBERG TRAURIG Trademark”).

The Disputed Domain Name was created on May 13, 2021, and is used in connection with a monetized parking page that, according to a screenshot provided by Complainant, includes links labeled (among other things) “Zantac Lawsuit Settlement,” “Legal Attorneys,” and “Law Office.” Further, according to Complainant, Respondent “immediately configured [the Disputed Domain Name] with MX records enabling Respondent to send emails from @GreenbergTraurigLLP.com email addresses.”¹

5. Parties’ Contentions

A. Complainant

Complainant contends, in relevant part, as follows:

- The Disputed Domain Name is confusingly similar to the GREENBERG TRAURIG Trademark because it “incorporates the Complainant’s GREENBERG TRAURIG Mark in full, changing the marks only by adding the generic term ‘LLP’ and the generic top-level domain (‘gTLD’) ‘.com’ after the mark.”

- Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, Respondent registered the Disputed Domain Name “without Complainant’s authorization or consent”; neither the Whois data nor Registrar’s information identifies Respondent as “Greenberg Traurig”; “emails sent by Respondent from @GreenbergTraurigLLP.com email addresses could only be used in furtherance of illegal activity, such as phishing targeting Complainant’s employees and clients”; “use of a domain name to impersonate a complainant in furtherance of fraud establishes that respondents have no legitimate interests in disputed domain names”; and “Respondent is using the Infringing Domain Name to divert Internet traffic to a parking website which features advertisements for goods and services in direct competition with Complainant.”

- The Disputed Domain Name was registered and is being used in bad faith because, inter alia, “the mere fact that the Respondent has registered a domain name that incorporates the famous trademark of a well-known company is alone sufficient to give rise to an inference of bad faith”; Respondent’s website associated with the Disputed Domain Name “divert[s] Internet traffic intended for Complainant to websites featuring advertising for goods and services in competition with Complainant”; the establishment of “MX records and email services [is] undoubtedly used to impersonate official correspondence from Complainant,” which “fall[s] squarely into the explicit example of bad faith registration and use found in the Policy at ¶ 4(b)(iv)”; “Respondent appears to have utilized false contact information”; Respondent has not responded to a demand letter from Complainant; and Respondent used a proxy service “to shield its identity and elude enforcement efforts.”

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (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. Policy, paragraph 4(a).

A. Identical or Confusingly Similar

Based upon the trademark registrations cited by Complainant, it is apparent that Complainant has rights in and to the GREENBERG TRAURIG Trademark.

As to whether the Disputed Domain Name is identical or confusingly similar to the GREENBERG TRAURIG Trademark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e., “greenbergtraurigllp”) because “[t]he applicable Top-Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test”. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.1.

The Disputed Domain Name contains the GREENBERG TRAURIG Trademark in its entirety. As set forth in section 1.7 of WIPO Overview 3.0, “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.”

Accordingly, the Panel finds that Complainant has proven the first element of the Policy

B. Rights or Legitimate Interests

Complainant has argued that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, Respondent registered the Disputed Domain Name “without Complainant’s authorization or consent”; neither the Whois data nor Registrar’s information identifies Respondent as “Greenberg Traurig”; “emails sent by Respondent from @GreenbergTraurigLLP.com email addresses could only be used in furtherance of illegal activity, such as phishing targeting Complainant’s employees and clients”; “use of a domain name to impersonate a complainant in furtherance of fraud establishes that respondents have no legitimate interests in disputed domain names”; and “Respondent is using the Infringing Domain Name to divert Internet traffic to a parking website which features advertisements for goods and services in direct competition with Complainant.”

WIPO Overview 3.0, section 2.1, states: “[w]hile the overall burden of proof in UDRP proceedings is on the complainant, 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.”

The Panel finds that Complainant has established its prima facie case and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has satisfied the second element of the Policy.

C. Registered and Used in Bad Faith

Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).

Numerous UDRP panels have found the registration and use of a domain name that is confusingly similar to a complainant’s trademark to constitute bad faith pursuant to paragraph 4(b)(iv) of the Policy where, as here, the disputed domain name is associated with a monetized parking page that contains links for goods or services competing with the complainant. See, e.g., Wal-Mart Stores, Inc. v. Whois Privacy, Inc., WIPO Case No. D2005-0850; Columbia Pictures Industries, Inc. v. North West Enterprise, Inc., WIPO Case No. D2006-0951; and Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Private Whois Service, WIPO Case No. D2011-1753.

Further, Respondent’s failure to respond to Complainant’s demand letter is additional evidence of bad faith. Encyclopedia Britannica v. Zucarini, WIPO Case No. D2000-0330; and RRI Financial, Inc., v. Ray Chen, WIPO Case No. D2001-1242.

Accordingly, the Panel finds that Complainant has proven the third element 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 <greenbergtraurigllp.com> be transferred to Complainant.

Douglas M. Isenberg
Sole Panelist
Date: September 27, 2021

¹ Complainant states that it provided as an annex “[s]creenshots establishing the MX records and mail services configured with the [Disputed] Domain Name,” but the referenced annex includes no such documentation, only an email from an unidentified third party informing Complainant that the Disputed Domain Name “has an MX record that can be used to send emails.”