Greenberg Traurig, LLP v A B

WIPO Case No. DCO2024-0059

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Greenberg Traurig, LLP v. A B

Case No. DCO2024-0059

1. The Parties

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

The Respondent is A B, United States.

2. The Domain Name and Registrar

The disputed domain name <gtllaw.co> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 3, 2024. On September 4, 2024, the Center emailed the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, the Registrar emailed to the Center its verification response disclosing the registrant and contact information for the disputed domain name, which differed from the named Respondent (Redacted for Privacy, Privacy service provided by Withheld for Privacy ehf) and contact information in the Complaint. The Center emailed the Complainant on September 11, 2024, 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 the same day.

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 September 18, 2024. In accordance with the Rules, paragraph 5, the due date for Response was October 8, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 9, 2024.

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The Center appointed William F. Hamilton as the sole panelist in this matter on October 10, 2024. 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 multi-practice law firm with over 2,200 attorneys across 40 offices in the United States, Latin America, Europe, Asia, and the Middle East. The Complainant offers clients a broad range of legal services, including legal services in the fields of insurance, intellectual property, labor and employment, corporate, litigation, international trade, entertainment, real estate, energy, environmental, cybersecurity, health care, tax, public finance, and government law. The Complainant’s lawyers are recognized in numerous publications, such as U.S. News Best Lawyers, Best Lawyers In America, Law360, The Legal 500, and Super Lawyers Magazine. The Complainant owns and operates a website posted on the <gtlaw.com> domain name at the URL “www. gtlaw.com” (the “GT Website”).

The Complainant owns the United States Registration No. 4,790,133, registered on August 11, 2015, for the mark GT (the “Mark”). The Complainant has used the Mark and other related design and word trademarks since at least 2008. In addition to the United States registrations listed above, The Complainant has also obtained trademark registrations for the Mark and other related design and word trademarks in over 30 countries.

The disputed domain was registered on December 11, 2023, and resolves to a website offering pay-per-click (“PPC”) links to competitive legal services. The Respondent failed to respond to the Complainant’s January 30, 2024, cease and desist letter.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

The Complainant asserts the disputed domain name is confusingly similar to the Mark because the disputed domain name consists of the Mark plus the letter “l” and the word “law”. The Complainant contends that the Complainant never authorized the Respondent to use the disputed domain name, that the Respondent is not generally known by the disputed domain name, never operated a business under the disputed domain name, has not advertised the disputed domain name, and never engaged in any bona fide commercial activity in

connection with the disputed domain name. The Complainant asserts that the Respondent knew of the Mark
and registered and used the disputed domain name in bad faith to disrupt the Complainant’s business, to
lure unsuspecting Internet visitors to its website offering pay-per-click competitive services, and potentially

phish information.

B. Respondent

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

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6. Discussion and Findings

Under paragraph 4(a) of the Policy, to succeed the Complainant must satisfy the Panel that:

(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 disputed domain name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

It is well-accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. The Complainant has shown rights in the Mark for the purposes of the Policy by virtue of the Mark’s registration. WIPO Overview 3.0, section 1.2.1.

The Panel finds that the disputed domain name is confusingly similar to the Complainant’s Mark because the disputed domain name incorporates the Mark in its entirety and merely adds the letter “l” plus the descriptive word “law.” Confusing similarity may be established for the purposes of the Policy where the relevant mark is recognizable in the domain name. WIPO Overview 3.0, section 1.7. In this case, the Mark is clearly

recognizable in the disputed domain name, notwithstanding the differences between the disputed domain
name and the Mark.

The Top-Level Domain (“TLD”) of the disputed domain name, in this case “.co”, may be disregarded for the purposes of assessment under the first element, as it is viewed as a standard registration requirement. See WIPO Overview 3.0, section 1.11.1 and Monster Energy Company, a Delaware Corporation v. J.H.M. den

Ouden, WIPO Case No. D2016-1759.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult 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 (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

The Panel finds on the evidence that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has expressly disavowed providing the Respondent with permission to use the disputed domain name or the Mark. There is no evidence that the Respondent has made a bona fide offering of goods or services under the disputed domain name or is commonly known by the disputed domain name. The Respondent has failed to provide evidence showing rights or legitimate interests in the disputed domain name.

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The disputed domain name is confusingly similar to the Mark, and resolves to a PPC website, the links of which offer services in competition with the Complainant’s legal services. It will likely cause Internet users to believe that the disputed domain name resolves to a website sponsored, affiliated, or owned by the Complainant. Such use of a disputed domain name, in and of itself, cannot establish rights or legitimate interests.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

Under paragraph 4(b) of the Policy, bad faith may be established by any one of the following non-exhaustive scenarios:

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for

the purpose of selling, renting, or otherwise transferring the domain name 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii)       the respondent has 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 the respondent has
engaged in a pattern of such conduct; or

(iii)      the respondent has registered the domain name primarily for the purpose of disrupting the business of

a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.

The Respondent registered and used the disputed domain name to mislead Internet users into believing it is affiliated with, sponsored by, or owned by the Complainant. It then redirects these confused users through pay-per-click links to competing websites offering legal services, falling within the meaning of paragraph 4(b)(iv) of the Policy.

Furthermore, the disputed domain name has active mail exchange (“MX”) records, enabling the Respondent to send emails using the domain, which recipients may reasonably believe originated from the Complainant. Although there is no direct evidence of such misuse, the potential for abuse is significant, especially given

the lack of any bona fide reason for registering the disputed domain name. Tetra Laval Holdings & Finance S.A. v. Himali Hewage, WIPO Case No. D2020-0472 (active MX records indicated that the disputed domain name may be used for fraudulent email communications); Ares Management LLC v. juandaohanjing (上海锐 思人力资源有限公司), WIPO Case No. D2020-3254 (active MX records create a grave risk of phishing and
spamming activities); WIPO Overview 3.0, section 3.4.

Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy.

The Panel finds that the Complainant has established the third element of the Policy.

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7. Decision

For the foregoing reasons, by paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <gtllaw.co> be transferred to the Complainant.

/William F. Hamilton/
William F. Hamilton
Sole Panelist
Date: October 24, 2024