WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Morrison & Foerster LLP v. Robert Paisola

Case No. D2016-0713

1. The Parties

Complainant is Morrison & Foerster LLP of San Francisco, California, United States of America ("United States"), internally represented.

Respondent is Robert Paisola of Las Vegas, Nevada, United States.

2. The Domain Name and Registrar

The disputed domain name <mofolaw.com> 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 April 11, 2016. On April 12, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 12, 2016, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On April 15, 2016, Complainant submitted an amended Complaint.

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 April 22, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 12, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on May 13, 2016.

The Center appointed Lynda J. Zadra-Symes as the sole panelist in this matter on May 18, 2016. 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 is an international law firm that operates across a global network of 17 offices located in the United States, Asia and Europe.

In the 1970's, Complainant purposely chose "mofo" as its teletype address used to send overseas cables. Complainant later decided to use it as Complainant's IP address.

Complainant owns at least three current United States Patent and Trademark Office ("USPTO") registrations for its MOFO marks:

Registration No. 2,481,879 registered August 28, 2001 for use in connection with legal services;

Registration No. 2,922,853 registered February 1, 2005 for use in connection with educational services, namely conducting seminars in the field of law;

Registration No. 3,616,394 registered May 5, 2009 for use in connection with clothing items, namely,

T-shirts, sweatshirts, jackets, hats and caps.

Complainant registered the domain name <mofo.com> on October 30, 1992, and operates a website at that domain name.

The disputed domain name <mofolaw.com> was registered on July 29, 2013.

5. Parties' Contentions

A. Complainant

Complainant contends that the disputed domain name is identical or confusingly similar to Complainant's trademark, that Respondent has no rights or legitimate interests in the disputed domain name and that Respondent has registered and used the disputed domain name in bad faith.

B. Respondent

Respondent did not reply to Complainant's contentions.

6. Discussion and Findings

Complainant has the burden of proving each of the following three elements under paragraph 4(a) of the Policy in order to be entitled to a transfer of the disputed domain name:

(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) That Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) That the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Complainant owns several USPTO trademark registrations for the mark MOFO. The disputed domain name incorporates Complainant's MOFO mark in its entirety. The addition of "law" to the domain name does not add any distinguishing feature. Rather, it is descriptive of Complainant's legal services.

The Panel finds that the disputed domain name is identical or confusingly similar to Complainant's trademark rights.

B. Rights or Legitimate Interests

Based on previous UDRP decisions, "a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such a prima facie case is made, the burden shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP". See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1.

Complainant's allegations in the Complaint and evidence submitted on this issue are sufficient to make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name.

Respondent has not made use of the disputed domain name in connection with a bona fide offering of goods or services. Complainant contends that Respondent has been using "[…]@mofolaw.com" as an email address and misrepresenting that Respondent is associated with Complainant. Complainant also contends that between January 2014 until at least March 13, 2016, Respondent has redirected the disputed domain name to Complainant's actual website located at "www.mofo.com", without Complainant's permission.

Respondent has not been commonly known by the disputed domain name, but is identified as an individual by a different name.

Respondent is not making any legitimate noncommercial or fair use of the disputed domain name.

Respondent has not submitted any evidence showing that he has any rights or legitimate interests in the disputed domain name.

The Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

Bad faith may be shown where the respondent is aware of a complainant's well-known trademark and has no connection to the owner of the trademark and no authorization and no legitimate purpose to utilize the mark. See America Online Inc. v. Chinese ICQ Network, WIPO Case No. D2000-0808.

Complainant contends that Respondent has been using "[…]@mofolaw.com" as an email address and misrepresenting that Respondent is associated with Complainant. Complainant further contends that, as part of this ruse, Respondent has redirected the disputed domain name to Complainant's actual website, "www.mofo.com". The use in the disputed domain name of "legal" and "law" in connection with Complainant's identical MOFO trademark indicates that Respondent was aware of Complainant's trademark rights at the time of registering and using the domain name, which he has done without the permission of Complainant.

Respondent has failed to respond to Complainant's contentions.

The Panel finds that the disputed domain name has been registered and 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 <mofolaw.com> be transferred to Complainant.

Lynda J. Zadra-Symes
Sole Panelist
Date: June 6, 2016