WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Gerben Law Firm, PLLC v. Whois Privacy Corp.

Case No. D2018-1851

1. The Parties

The Complainant is Gerben Law Firm, PLLC of Washington, D.C., United States of America (“United States”), internally represented.

The Respondent is Whois Privacy Corp. of Nassau, Bahamas.

2. The Domain Name and Registrar

The disputed domain name <gerbentrademark.com> is registered with Internet Domain Service BS Corp (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 14, 2018. On August 14, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 17, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details of the registrant.

The Center verified that 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 August 22, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 11, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 12, 2018.

The Center appointed Assen Alexiev as the sole panelist in this matter on September 26, 2018. 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 United States trademark law firm and is one of the top trademark application filers with the United States Patent and Trademark Office. It has provided legal services under the brand GERBEN since 2008 and has registered for its clients over four thousand trademarks over the past ten years.

The Complainant owns the following registered trademarks (the “GERBEN trademark”):

- the trademark GERBEN, with United States trademark registration No. 4,727,792, registered on April 28, 2015 for services in International Class 45;

- the trademark GERBEN LAW FIRM PLLC, with United States trademark registration No. 4,727,051, registered on April 28, 2015 for services in International Class 45;

- the trademark G GERBEN LAW FIRM PLLC and design, with United States trademark registration No. 4,098,954, registered on February 14, 2012 for services in International Class 45;

- the trademark GERBEN LAW FIRM PLLC, with United States trademark registration No. 4,113,211, registered on March 13, 2012 for services in International Class 45;

The Complainant is also the owner of the <gerbenlaw.com> domain name, registered on September 16, 2006.

The disputed domain name was registered on April 15, 2018.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain name is confusingly similar to the GERBEN trademark.

According to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain name. After the Respondent registered the disputed domain name on April 15, 2018, it began operating a clone of the Complainant’s official website at “www.gerbenlaw.com” and started sending false cease-and-desist letters to Amazon sellers, impersonating the Complainant’s law firm. The Respondent is not known by the name “gerben” does not practice trademark law, and fraudulently used the Complainant’s GERBEN trademark to attempt to impersonate the Complainant.

The Complainant contends that the Respondent has registered and used the disputed domain name in bad faith. Over twelve years after the Complainant registered its domain name <gerbenlaw.com> in 2006, the Respondent registered the disputed domain name which is confusingly similar to the GERBEN trademark and used it to send fraudulent enforcement letters to sellers on Amazon. The Complainant discovered this after the targeted sellers contacted the Complainant to ask about the fraudulent claims made by the Respondent while impersonating the Complainant. According to the Complainant, the Respondent has intentionally impersonated the Complainant by creating a website that was a clone of the Complainant’s official website’s home page and has attempted to confuse consumers as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and the entity that operates it.

B. Respondent

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

6. Discussion and Findings

Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:

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

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

(iii) the Respondent has registered and is using the disputed domain name in bad faith.

In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.

By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…”

In this proceeding, the Respondent has not used the opportunity provided to it under the Rules and has not submitted a Response addressing the contention of the Complainant and the evidence submitted by it.

A. Identical or Confusingly Similar

The Complainant has provided evidence and has thus established its rights in the GERBEN trademark.

The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level Domain (“gTLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” gTLD section of the disputed domain name.

The relevant part of the disputed domain name is therefore the section “gerbentrademark”, which contains the elements “gerben” and “trademark”. The Complainant’s GERBEN trademark is recognizable within the disputed domain name and the addition of the term “trademark” 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”): “[w]here the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements.”

In view of the above, the Panel finds that the disputed domain name is confusingly similar to the GERBEN trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

While the overall burden of proof in UDRP proceedings is on a complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, 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. See section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name, stating that the Respondent is operating a clone of the Complainant’s official website at the disputed domain name and is sending false cease-and-desist letters to third parties, impersonating the Complainant. The Complainant further states that the Respondent is not known by the name “gerben” and does not practice trademark law. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

The Respondent has not alleged that is has rights and legitimate interests in the disputed domain name and has not disputed the Complainant’s allegations in this proceeding.

The disputed domain name incorporates the Complainant’s GERBEN trademark in its entirety with the addition of the element “trademark”, which refers to the services offered by the Complainant. This makes it likely that Internet users may regard the disputed domain name as being the official online location of the Complainant. This likelihood of confusion is further increased by the content of the Respondent’s website at the disputed domain name and by the use of the disputed domain name for sending cease-and-desist letters impersonating the Complainant.

On the basis of the above, the Panel is satisfied that the Respondent, being well aware of the Complainant, is likely to have registered and used the disputed domain name in an attempt to exploit the popularity of the GERBEN trademark to mislead Internet users that the Respondent is the Complainant. In the Panel’s view, such conduct is illegitimate and cannot be regarded as giving rise to rights and legitimate interests of the Respondent in the disputed domain name.

Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

The provisions of paragraph 4(b) of the Policy are without limitation, and bad faith registration and use may be found on grounds otherwise satisfactory to the Panel.

As discussed above, the disputed domain name fully incorporates the GERBEN trademark and is confusingly similar to it. The Respondent does not deny that its website is a clone of the Complainant’s website and that it has used the disputed domain name to send false cease-and-desist letters to third parties representing itself as the Complainant.
On the basis of the above, and in view of the considerations of the Panel set out in the section related to rights and legitimate interests, the Panel accepts that the Respondent has registered and used the disputed domain name with knowledge of the Complainant and targeting the GERBEN trademark in an attempt to confuse Internet users that they are dealing with the Complainant. On the basis of the above, the Panel accepts that this conduct of the Respondent amounts to bad faith registration and use of the disputed domain name.

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 <gerbentrademark.com> be transferred to the Complainant.

Assen Alexiev
Sole Panelist
Date: October 8, 2018