WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Herzog, Fox & Neeman v. Job
Case No. DCO2021-0034
1. The Parties
The Complainant is Herzog, Fox & Neeman, Israel, internally represented.
The Respondent is Job, United Arab Emirates.
2. The Domain Name and Registrar
The disputed domain name <herzoglaw-il.co> (the “Domain Name”) 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 May 10, 2021. On May 10, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 11, 2021, 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 the Complainant on May 11, 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 17, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 6, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 7, 2021.
The Center appointed Jeremy Speres as the sole panelist in this matter on June 10, 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 uncontested facts are as follows. The Complainant, founded almost 50 years ago, is one of the largest law firms in Israel. The Complainant provides legal services to multinational and domestic clients in numerous practice areas, including commercial and corporate law, intellectual property, technology, banking and financing, internet and ecommerce, mergers and acquisitions, tax and real estate. The Complainant has received many awards over the years.
In September 2020, the Complainant announced a rebrand from HFN to HERZOG which was widely publicised to its clients and the public. As part of the rebrand the Complaint registered the domain name <herzoglaw.co.il> in March 2019, which the Complainant uses as its primary website. The website at that domain name went live in September 2020. The Complainant also applied for Israeli trade mark registration No. 318316 HERZOG HERZOG FOX & NEEMAN H in class 45 for legal services consisting of the following mark, which proceeded to registration in November 2019:
The Domain Name was registered on April 3, 2021 by the Respondent, and, as at the filing of the Complaint and the drafting of this decision, the Domain Name was suspended and did not resolve to an active website.
5. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to the Complainant’s trade mark, that the Respondent lacks rights or legitimate interests, and that the Domain Name was registered and has been used in bad faith, and stands to be transferred to it under the Policy, given that it has been used to send emails impersonating some of the Complainant’s partners for the purpose of soliciting fraudulent payments from the Complainant’s clients.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant’s evidence establishes that it used the HERZOG, FOX & NEEMAN mark extensively for many years. Subsequent to the September 2020 rebrand, the Complainant used the HERZOG mark extensively too, having publicised the rebrand widely, including to its clients. The Panel therefore accepts that the Complainant enjoyed common law rights in the HERZOG, FOX & NEEMAN and HERZOG marks. In addition, the Complainant owns a trade mark registration for a mark in which HERZOG is the dominant element.
Where a dominant feature of a mark is recognisable within the domain name, as in this case, the domain name will normally be considered confusingly similar to the mark (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 1.7).
The Complainant has satisfied the standing requirement under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent (WIPO Overview 3.0 at section 2.1). Here, there is a prima facie case, which the Respondent has failed to rebut.
The Complainant’s evidence establishes that the Domain Name has been used to send emails impersonating some of the Complainant’s partners for the purpose of fraudulently soliciting payments from the Complainant’s clients. Previous UDRP panels have categorically held that use of a domain name for illegal activity (e.g., impersonation or other types of fraud) can never confer rights or legitimate interests (WIPO Overview 3.0 at section 2.13.1).
The Domain Name is confusingly similar to the Complainant’s well-known mark and the Complainant has certified that the Domain Name is unauthorised by it. There is no evidence that any of the circumstances set out in paragraph 4(c) of the Policy pertain. The Respondent’s name, per the WhoIs data revealed by the Registrar, bears no resemblance to the Complainant’s mark for the purposes of paragraph 4(c)(ii) of the Policy. Without the benefit of a Response, the Panel is not aware from the evidence in the case file of any trade marks in the name of the Respondent, or of any other circumstances that could give rise to rights or legitimate interests for the Respondent, and therefore assumes there are none or else the Respondent would have put those forward.
The Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
In addition, UDRP panels may undertake limited factual research into matters of public record (WIPO Overview 3.0 at section 4.8). The Panel has independently established that the Respondent has been found to have perpetrated the same type of fraudulent scheme in a prior case decided under the Policy. See Bryan Cave Leighton Paisner LLP v. Job, WIPO Case No. D2020-0592. The same modus operandi was employed against another law firm whose partners were impersonated. The Panel has also independently run a reverse WhoIs search on the Respondent’s email address, revealing many domain names that had been registered at some point by the Respondent, which are obvious cases of cybersquatting involving other law firms. A few examples of many include <genedasvislaw.com> (see “www.genedavislaw.com”), <rks‑law.net> (see “www.rks-law.com”) and <pfklaw.net> (see “www.pfklaw.com”).
It is thus clear that the Respondent is a serial cybersquatter who has engaged in a pattern of bad faith registration and use of third party trade marks for commercial gain. This case is merely a continuation of that pattern. As the WIPO Overview 3.0 makes clear at sections 3.2.1 and 3.2.2, a pattern of bad faith conduct is relevant in assessing bad faith generally.
Under the Rules, paragraph 14(b), a panel may draw inferences from the respondent’s default where a particular conclusion is prima facie obvious, where an explanation is called for but is not forthcoming, or where no other plausible conclusion is apparent (WIPO Overview 3.0 at section 4.3).
The Complainant has satisfied paragraph 4(a)(iii) of the Policy.
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 <herzoglaw-il.co> be transferred to the Complainant.
Date: June 15, 2021