WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Greenberg Traurig LLP v. Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf / The Carr, The Carr Group

Case No. D2021-3436

1. The Parties

The Complainant is Greenberg Traurig LLP, United States of America (“United States”), represented internally.

The Respondent is Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf, Iceland / The Carr, The Carr Group, Australia.

2. The Domain Name and Registrar

The disputed domain name <gtlaw-us.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 October 17, 2021. On October 18, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 18, 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 October 19, 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 October 20, 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 October 21, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 10, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 16, 2021.

The Center appointed Mihaela Maravela as the sole panelist in this matter on November 23, 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.

The Registrar confirmed that the language of the Registration Agreement is English.

4. Factual Background

According to the information provided by the Complainant, it was founded in 1967 in Miami, Florida and has grown to be one of the largest multi-practice law firms in the world with more than 2,200 attorneys across 40 offices in the United States, Latin America, Europe, Asia, and the Middle East. The Complainant has had an office in the United States since at least 1967. The Complainant and its lawyers are consistently recognized in widely distributed legal publications such as U.S. News Best Lawyers, Best Lawyers in America, Law360, The Legal 500 and Super Lawyers Magazine.

The Complainant has registered several trademarks consisting of GT or GREENBERG TRAURIG including the United States trademark registration for GREENBERG TRAURIG No. 2810539 registered on February 3, 2004 and the United States registration for GT No. 4790133 registered on August 11, 2015.

The Complainant is also the owner of the domain name <gtlaw.com> that it uses as an official website.

The disputed domain name was registered on August 2, 2021 and according to information from the Complainant it directed at the date of the Complaint to a page with pay-per-click (“PPC”) links to services in the legal field. At the date of the decision the website at the disputed domain name does not resolve.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the disputed domain name is confusingly similar to the Complainant’s trademarks as it incorporates the Complainant’s trademarks in full, changing the trademark only by adding the geographic term “US”, a hyphen, and the generic Top-Level Domain (“gTLD”).

With respect to the second element, the Complainant argues that the Respondent is not commonly known by the disputed domain name, it has not used or prepared to use the disputed domain name in connection with a bona fide offering of goods or services, and it has not been authorized, licensed, or otherwise permitted by the Complainant to register and/or use the disputed domain name. The Complainant also argues that the Respondent is using the disputed domain name to resolve to a PPC parking webpage advertising hyperlinks for competing legal services, such as “Attorneys”, “Legal Help”, “Lawyer Accident and Injury”, and “Nearest Accident Lawyer” and that the Respondent has also configured the disputed domain name with MX records enabling the Respondent to send emails from “[...]@gtlaw-us.com” email addresses. The Complainant concludes that the Respondent lacks rights or legitimate interests in the disputed domain name.

As regards the third element, the Complainant argues that the Respondent had knowledge of the Complainant’s trademarks at the registration of the disputed domain name and that the mere fact that the Respondent has registered a domain name that incorporates the well-known trademark of the Complainant is alone sufficient to give rise to an inference of bad faith. The Complainant also argues that the Respondent uses the disputed domain name in bad faith to divert Internet traffic intended for the Complainant to websites featuring advertising for legal services in competition with the Complainant. According to the Complainant, such use demonstrates registration and use in bad faith pursuant to Policy, paragraph 4(b)(iv). In addition, the Complainant contends that the disputed domain name has active MX records and that emails could be sent with the purpose to impersonate official correspondence from the Complainant. Moreover, the Complainant argues that the Respondent has engaged in a pattern of registering domain names consisting of well-known trademarks to impersonate the respective complainant for commercial gain.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Notwithstanding the fact that no Response has been filed, the Panel shall consider the issues present in the case based on the statements and documents submitted by the Complainant.

“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 15(a) of the Rules.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following elements:

(i) the disputed domain name is identical or confusingly similar to a trademark 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 was registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has provided evidence of its rights over the GT and GREENBERG TRAURIG trademarks. The trademark GT is reproduced in its entirety in the disputed domain name. The addition of the word “law”, the geographic term “us” and a hyphen does not prevent a finding of confusing similarity with the Complainant’s trademark GT, which is recognizable in the disputed domain name. The fact that a domain name wholly incorporates a complainant’s trademark is sufficient to establish identity or confusing similarity for the purpose of the Policy, despite the addition of other words to such marks. The addition of an additional term (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

It is well accepted by UDRP panels that a gTLD, such as “.com”, is typically ignored when assessing whether a domain name is identical or confusing similar to a trademark. See section 1.11 of the WIPO Overview 3.0.

This Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademarks and therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate the respondent’s rights or legitimate interests in the disputed domain name:

(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate non-commercial 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.

The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview 3.0, which states: “[…] 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.”

According to the unrebutted evidence put forward by the Complainant, at the date of the Complaint the Respondent was using the disputed domain name to host a parked page comprising PPC links to competing services, in the legal field. According to section 2.9 of the WIPO Overview 3.0. “Applying UDRP paragraph 4(c), panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users.” The Complainant submitted that the Respondent has not been authorized, licensed, or otherwise permitted by the Complainant to register and/or use the disputed domain name. This evidence indicates that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services within the circumstances of paragraph 4(c)(i) of the Policy. As the PPC links at the disputed domain name operate for the commercial gain of the Respondent or of the operators of those linked websites, or both, such use cannot amount to a legitimate noncommercial or fair use of the disputed domain names within the circumstances of paragraph 4(c)(iii) of the Policy. See Government Employees Insurance Company (“GEICO”) v. 林彦晓 (Yan Xiao Lin), WIPO Case No. D2021-2026.

Also, there is no evidence that the Respondent is commonly known by the disputed domain name.

Furthermore, the nature of the disputed domain name carries a risk of implied affiliation and cannot constitute a fair use as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. The geographic term “us” and the term “law” which describes the activity of the Complainant are seen as tending to suggest sponsorship or endorsement by the trademark owner. See section 2.5.1 of the WIPO Overview 3.0.

The Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent failed to rebut that prima facie case because he did not respond to the Complainant’s contentions.

With the evidence on file, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

According to paragraph 4(a)(iii) of the Policy, the Complainant must establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith.

The disputed domain name was registered many years after the Complainant has obtained registration of its GT and GREENBERG TRAURIG trademarks. The website associated with the disputed domain name contained links related to the services offered by the Complainant. Under these circumstances, the Panel considers that the Respondent has registered the disputed domain name with knowledge of the Complainant and its trademark and that it targeted that trademark.

As regards the use of the disputed domain name, from the evidence put forward by the Complainant and not rebutted by the Respondent, it results that the disputed domain name redirected Internet traffic to a website displaying PPC advertisements for Complainant related services. Given the confusing similarity between the Complainant’s GT trademark and the disputed domain name and that the PPC links operate for the commercial gain of the Respondent or of the operators of those linked websites, or both, the Panel considers that the disputed domain name is intended to attract Internet users by creating a likelihood of confusion with the Complainant’s GT trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites or other online location of a service offered on such other online location within the terms of paragraph 4(b)(iv) of the Policy. An additional element is the DNS setup of the disputed domain name (with active MX records).

Moreover, the Respondent used a privacy shield. While the Respondent’s use of a privacy service will not in itself constitute bad faith under the Policy, the Panel may still take it into account and draw adverse inferences. The use of the privacy shield in this case together with other elements gives rise to the suspicion that the privacy shield was used to mask the identity of the true registrant and to obstruct proceedings commenced under the Policy. Further, the Respondent’s failure to respond to the Complainant’s cease-and-desist letter and to the Complaint is additional evidence of bad faith.

The disputed domain name currently leads to an inactive website. The non-use of a domain name does not prevent a finding of bad faith (See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; WIPO Overview 3.0, section 3.3).

In the Panel’s view, the circumstances of the case represent evidence of registration and use in bad faith of the disputed domain name. The Respondent failed to bring evidence as to the contrary. Consequently, the Panel concludes that the condition of paragraph 4(a)(iii) of the Policy is fulfilled.

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 <gtlaw-us.com> be transferred to the Complainant.

Mihaela Maravela
Sole Panelist
Date: December 7, 2021