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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

SmithValeriote Law Firm LLP v. Adeyeye Samuel, sharpgist

Case No. D2021-3804

1. The Parties

The Complainant is SmithValeriote Law Firm LLP, Canada, represented by Deans Intellectual Property LLC, United Arab Emirates.

The Respondent is Adeyeye Samuel, sharpgist, Nigeria.

2. The Domain Name and Registrar

The disputed domain name <svlawfirm.org> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 14, 2021. On November 15, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 16, 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 November 18, 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 amendment to the Complaint on November 23, 2021.

The Center verified that the Complaint together with 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 the Respondent of the Complaint, and the proceedings commenced on November 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 13, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 14, 2021.

The Center appointed Steven A. Maier as the sole panelist in this matter on December 28, 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 based in Ontario, Canada.

The Complainant has provided evidence that, between February 2018 and the date of the Complaint, it has used the following signs in commerce:

(1) the words SV LAW; and
(2) the logo represented below (“the SV Law Logo”):

logo

The Complainant has traded in the period referred to above from a website at “www.svlaw.ca”.

The disputed domain name was registered on March 12, 2019.

At the date of this Decision, the disputed domain name resolved to a website at “www.svlawfirm.org.” The website is headed with the SV Law Logo and purports to be the website of a law practice based in Dubai, United Arab Emirates. It includes a list of its attorneys and its practice areas.

5. Parties’ Contentions

A. Complainant

The Complainant provides evidence of its use of the words SV LAW and the SV Law Logo between February 2018 and the date of the Complaint, including use in connection with its website and emails, promotional activities including sporting and charity events and for the purposes of social media including Facebook, Twitter and LinkedIn. The Complainant submits that it has earned revenues in excess of CAD 16 million for each of the years 2018, 2019 and 2020 and that its promotional spend has ranged from CAD 196,000 to CAD 247,000 in each of those three years.

The Complainant contends that, as a result of the above matters, the words SV LAW and the SV Law Logo amount to trademarks which identify its business.

The Complainant submits that the disputed domain name is confusingly similar to its SV LAW trademark, differing from it only by the addition of the term “firm”, which is commonly used in connection with legal businesses.

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It contends that the Respondent has used the disputed domain name solely for the purpose of a website which imitates the Complainant’s own website, including its reproduction of the SV LAW trademark and the SV Law Logo, including the tagline EXCELLENCE IN OUR COMMUNITY. The Complainant contends that the Respondent’s website claims expertise in practice areas similar to its own and that the attorney details provided on the Respondent’s website are false. The Complainant provides evidence that four of the five attorneys listed and pictured on the Respondent’s website in fact work for an unrelated law firm based in the United States, and that in two cases the relevant photographs are false.

The Complainant provides evidence that is has received an enquiry about the fifth attorney listed on the Respondent’s website, seeking confirmation that he works for the Complainant, which he does not.

The Panel notes that, despite its submissions referred to above, the Complainant has failed to provide any printouts or other direct evidence of the content of the Respondent’s website, which the Panel considers to be a material omission in the Complaint. The Complainant is therefore fortunate that the Respondent’s website continues at the date of this Decision to reflect the content which it describes.

The Complainant submits that the disputed domain name has been registered and is being used in bad faith. It contends in particular that, by using the disputed domain name, the Respondent has attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s SV LAW trademark and the SV Law Logo as to the origin of the Respondent’s website. The Complainant surmises that the Respondent intends to obtain monies from visitors to its website on account of legal services and disbursements which the Respondent is unable to provide.

The Complainant requests the transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are that:

(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 has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Based on the Complainant’s evidence of its substantial use in commerce of the name SV LAW and the SV Law Logo, the Panel is satisfied that each of these marks has become distinctive of the Complainant and its services to an extent sufficient to give rise to unregistered trademark rights in those marks.

The disputed domain name wholly incorporates the Complainant’s unregistered trademark SV LAW, together with the addition of the dictionary word “firm”, which does not prevent the Complainant’s trademark from being recognizable within the disputed domain name. The Panel therefore finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Complainant contends that the Respondent has used the disputed domain name solely for the purpose of a website which dishonestly imitates the Complainant’s own website for financial gain. In the view of the Panel, the Complainant’s submissions are sufficient to give rise to a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. However, the Respondent has failed to file any Response in this proceeding and has not therefore disputed the Complainant’s assertions. Nor has the Respondent submitted any explanation for its registration and use of the disputed domain name, or evidence of rights or legitimate interests on its part in the disputed domain name, whether in the circumstances contemplated by paragraph 4(c) of the Policy or otherwise. The Respondent’s use of the disputed domain name to impersonate the Complainant and its website does not constitute any bona fide use of the disputed domain name and the Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

In the view of the Panel, there can be no reasonable explanation for the Respondent’s use of the name SV LAW and the SV Law Logo for the purposes of its website other than as a deliberate attempt to impersonate the Complainant’s law firm for commercial gain. The Panel also accepts the Complainant’s evidence, which the Respondent has not sought to dispute, that the attorney details included on the Respondent’s website are false and in fact relate to attorneys employed by another, unrelated, law firm.

The Panel infers in the circumstances that the Respondent registered the disputed domain name with the Complainant’s name, trademarks and business in mind and with the intention of taking unfair advantage of the Complainant’s goodwill by impersonating the Complainant.

The Panel finds further that the disputed domain name is inherently misleading, as inevitably suggesting to Internet users a commercial connection or affiliation with the Complainant. Moreover, the Respondent has clearly used the disputed domain name to impersonate the Complainant and its website, its appropriation of the SV Law Logo and adoption of false attorney details, in particular, placing its dishonest intent beyond reasonable doubt.

The Panel finds in the circumstances that, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website (paragraph 4(b)(iv) of the Policy).

The Panel therefore finds that the disputed domain name has been registered and is being used 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, <svlawfirm.org>, be transferred to the Complainant.

Steven A. Maier
Sole Panelist
Date: January 11, 2022

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