WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Clare Locke LLP v. Gene Camarata / Eburg City
Case No. D2021-2788
1. The Parties
Complainant is Clare Locke LLP, United States of America (“United States”), represented internally.
Respondent is Gene Camarata, United States / Eburg City, United States.
2. The Domain Name and Registrar
The disputed domain name <clarelock.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 24, 2021. On September 2, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same day, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on September 10, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on September 15, 2021, and an amended Complaint on September 16, 2021.
The Center verified that the Complaint together with the amendment to the Complaint and amended Complaint and the amendment to the 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 September 17, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 7, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 14, 2021.
The Center appointed Robert A. Badgley as the sole panelist in this matter on October 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.
On October 21, 2021, Respondent sent an email to the Center, asking for a “continuance to respond,” citing “ongoing COVID-19 conditions and its hindrance to accessing an adequate computer at a public library to even review the documents.” In this email, Respondent also observed that there is no United States trademark registration for CLARE LOCKE.
On October 25, 2021, the Panel issued Procedural Order No. 1, which stated:
“The Panel has reviewed the submissions from the Parties in this case. Pursuant to paragraphs 10 and 12 of the UDRP Rules, the Panel issues the following order:
Respondent shall have until Wednesday, November 3, 2021, to file a Response to the Complaint. No further extensions will be granted.
All communications from the Parties are to be exclusively with the Center.”
On November 4, 2021, Respondent submitted a one-page Response with no annexes. The substantive entirety of Respondent’s Response is set forth in the next section below. In its discretion, the Panel decided to consider this slightly tardy Response.
4. Factual Background
Complainant Clare Locke LLP is a law firm based in Alexandria, Virginia. Complainant has represented a number of high-profile clients in civil litigation, often in the context of defamation claims. Annexed to the Complaint are voluminous documents establishing that Complainant has been a prominent defamation law firm for several years, and it has been recognized as such in various publications and media broadcasts. Complainant operates a website at “www.clarelocke.com”.
In early 2021, Complainant filed a number of high-profile, and widely publicized, defamation suits arising from alleged conduct surrounding the November 2020 United States Presidential election.
Complainant asserts that it enjoys common law trademark rights in the mark CLARE LOCKE in connection with its provision of legal services.
The Domain Name was registered on February 10, 2021. The Domain Name resolves to a parking page apparently set up by the Registrar. The parking page includes a number of hyperlinks, such as “Front Entry Doors” and “Front.” The page also contains a link stating, “Get This Domain.”
Complainant alleges as follows:
“Respondent’s bad-faith purpose in [registering the Domain Name] has been made clear by a series of emails and phone calls that he has placed to the founders and employees of Clare Locke LLP in the months since he registered the disputed domain. Respondent has included Clare Locke LLP clients and even members of prominent media outlets on several of those emails, while divulging confidential and privileged information. Respondent used the domain to create a catch-all clarelock.com email account specifically designed to intercept emails intended for Clare Locke LLP attorneys where the sender inadvertently dropped the final ‘e’ in clarelocke.com. Because Clare Locke LLP is a law firm, these emails often include sensitive, confidential, and privileged information. Respondent has then engaged in a pattern of forwarding those intercepted emails to the intended Clare Locke LLP recipient – in some cases copying the law firm client and even members of the media – and implicitly or explicitly demanded money from Clare Locke LLP in order to cease these outrageous activities and transfer the domain.”
In one instance, on June 2, 2021, Respondent intercepted an email message which ‘Client 2’ had mistakenly sent to Respondent’s catch-all address, since Client 2 had omitted the final ‘e’ in the Clare Locke lawyer’s email address. Respondent forwarded Client 2’s email to the particular Complainant lawyer, as well as the two founding partners of Clare Locke LLP, and asserted that he was performing a valuable service to Complainant. Respondent suggested to Complainant that, instead of funding some bogus charity, ‘what about providing funding to me’.”
Complainant asserts that Respondent engaged in similar conduct vis-à-vis McDonald’s Corporation, as is reflected in a prior 2019 decision under the UDRP (McDonald’s Corporation v. Eburg City (“Gene C.”), WIPO Case No. D2019-2164), in which the panel found Respondent to have acted in bad faith. This dispute ultimately made its way into the United States federal court system, where a federal judge held that Respondent’s “demonstrated use of the Disputed Domain Names to capture misdirected emails and then forward those emails to McDonald’s with a request for payment” constituted a “pattern of bad faith conduct” on Respondent’s part. See Camarata v. McDonald’s Corp., No. C19-6236JLR, 2021 WL 1109187 at *6 (W.D. Wash. Mar. 23, 2021).
The entire substantive portion of Respondent’s Response is set forth below:
“The domain name of clarelock.com cannot possibly be confused with websites maintained by Complainant. Since there is simply NO website using a domain name similar to that registered by Respondent, there is ZERO possibility of ANYONE trying to access any of Complainant’s websites, and instead mistakenly access one Respondent’s website by confusion.
In Robin Singh Educ. v. Test Masters Educ., 401 SW 3d 95, 97-98 - Tex: Court of Appeals 2011. The court stated:
Appellant’s claim is based solely on the alleged conversion of intangible electronic communications which appellant alleges were mistakenly sent to appellee by potential customers of appellant. However, under Texas law, a tort action for conversion is limited to tangible property. See Express One, 53 S.W.3d at 901 (‘Texas law has never recognized a cause of action for conversion of intangible property except 98*98 in cases where an underlying intangible right has been merged into a document and that document has been converted.’) Because the allegedly misdirected emails are intangible, they cannot support a conversion claim. See id. Therefore, we overrule appellant’s first issue.
The Complainant’s business and domain name are not well known. There is no United States Trademark Registration for Clare Locke as addressed in Morrison & Foerster LLP v. Wick, 94 F.Supp.2d 1125 (D.Colo.2000).
An internet search of ‘clare lock’ indicates a generic and other name usage.”
Given the foregoing Response, the record is undisputed that Respondent has used the Domain Name to set up a catch-all email account for Internet users trying to send emails to Complainant lawyers or staff, and that Respondent has asked Complainant to compensate him for forwarding such misdirected emails to Complainant’s lawyers.
5. Parties’ Contentions
Based on the facts set out above, Complainant contends that it has satisfied each of the three elements required under the Policy for a transfer of the Domain Name.
Respondent’s entire Response was quoted above.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel concludes that Complainant has common law rights in the unregistered trademark CLARE LOCKE through use and acquired distinctiveness demonstrated in the record. Complainant has represented a variety of high-profile companies and individuals, often in the context of defamation lawsuits, and the annexes to the Complaint amply demonstrate that Complainant has become renowned as a national defamation law firm over the past several years. Respondent is simply wrong to suggest that Complainant has not achieved recognition as a leading law firm in the area of defamation law. It is also axiomatic that a complainant need not have a registered trademark to prevail in a UDRP proceeding.
The Panel also concludes that the Domain Name is confusingly similar to that mark. The Domain Name entirely incorporates the CLARE LOCKE trademark – minus the “e” at the end of “LOCKE”. This omission of a single letter does very little to overcome the essential fact, namely, that the mark is clearly recognizable within the Domain Name.
Complainant has established Policy paragraph 4(a)(i).
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name. The undisputed record shows that Respondent has used the Domain Name to create a catch-all email account in order to capture emails intended for Complainant’s lawyers and staff, but misdirected to Respondent because the email sender omitted the final “e” in “Locke” when entering an email address. Complainant asserts, with evidence, and Respondent does not deny, that Respondent forwards the misdirected emails to Complainant and then asks to be compensated for doing so. The Panel sees this as a form of extortion, which is exacerbated because many of the communications with Complainant lawyers are from clients and the communications are intended to be confidential.
Respondent’s conduct cannot be viewed as legitimate. On the contrary, such conduct is a bad-faith attempt to extort money from Complainant.
Complainant has established Policy paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent has registered and used the Domain Name in bad faith. The Panel incorporates its discussion above in the “rights or legitimate interests” section. The Panel finds it obvious that Respondent had Complainant’s CLARE LOCKE trademark in mind when he registered the Domain Name in February 2021. Respondent’s use of the Domain Name – setting up a catch-all email account designed to intercept emails intended for Complainant lawyers and employees – renders this conclusion inescapable.
As respects bad faith use of the Domain Name, the Panel repeats what it said in the previous section. This use of the Domain Name amounts to extortion for commercial gain. Contrary to the argument Respondent seems to be making in his Response, setting up a website is not the only thing one can do with a domain name. This case is an excellent example of that fact. Indeed, the above-quoted paragraph 4(b)(iv) refers to “intentionally attempt[ing] to attract, for commercial gain, Internet users to Respondent’s website or other online location.” Respondent’s catch-all email account is “another online location.”
Respondent has used the Domain Name in bad faith within the meaning of Policy paragraph 4(b)(iv).
Complainant has established Policy paragraph 4(a)(iii).
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <clarelock.com> be transferred to Complainant.
Robert A. Badgley
Date: November 5, 2021