Greenberg Traurig, LLP v Monica M Viggiani

WIPO Case No. D2024-0546

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Greenberg Traurig, LLP v. MONICA M VIGGIANI

Case No. D2024-0546

1. The Parties

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

The Respondent is MONICA M VIGGIANI, United States.

2. The Domain Name and Registrar

The disputed domain name <gitlaw.cloud> is registered with Hostinger Operations, UAB (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 6, 2024. On February 7, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 8, 2024, 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 (Domain Admin, Privacy Protect LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on February 9, 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 February 13, 2024.

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 February 15, 2024. In accordance with the Rules,
paragraph 5, the due date for Response was March 6, 2024. The Respondent did not submit any response.
Accordingly, the Center notified the Parties of the Respondent’s default on March 8, 2024.

The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on March 12, 2024. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and

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Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the

Rules, paragraph 7.

4. Factual Background

The Complainant is an international law firm that was founded in the United States in 1967. It operates its primary business website at the domain name <gtlaw.com>.

The Complainant is the proprietor of registered trademarks, including the following:

 United States Trademark Registration No. 2810539 for GREENBERG TRAURIG (word mark),

registered on February 3, 2004, for services in class 42, claiming a date of first use in 1991,

 United States Trademark Registration No. 4790133 for GT (word mark), registered on August 11,

2015, for services in class 42, claiming a date of first use of December 31, 2008.

The disputed domain name was registered on January 9, 2024. It does not resolve to an active website. The record contains evidence that mail exchange (“MX”) records have been configured for it, and that the Respondent has used the disputed domain name to generate email messages to the Complainant’s clients.

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.

Notably, the Complainant contends that, since its founding in Miami, Florida in 1967, it has grown to be one of the largest law firms in the world, with 2,200 attorneys across 40 offices internationally. It practices in various areas of law under its GT and GREENBERG TRAURIG marks. The disputed domain name incorporates its GT mark in full, adding the letter the letter “i” between the letters “g” and “t.” The addition of the term “law” does not distinguish the disputed domain name. The Respondent is using the disputed domain name to impersonate the Complainant’s billing department to send a fraudulent invoice to the

Complainant’s client. The Complainant has not authorized the Respondent to use the disputed domain

name for any purpose. The Complainant’s rights in its marks significantly predate the registration of the
disputed domain name, which the Respondent has used to impersonate the Complainant. Finally, the

disputed domain name was registered using a proxy service.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the UDRP requires the Complainant to make out all three of the following:

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

Under paragraph 15(a) of the Rules, “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

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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 respect of a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered to be confusingly similar to the relevant mark for purposes of the first element. WIPO Overview 3.0, section 1.9. The Complainant’s GT mark is recognizable within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. The Panel’s finding on confusing similarity is affirmed by both the similarity to the Complainant’s own primary domain name and the use of the disputed domain name for phishing email communications, making use of the Complainant’s trademark.

Although the addition of other terms (here the term “law”) may bear on assessment of the second and third elements, the Panel finds the addition of such terms does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

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.

Having reviewed the available record, the Panel finds 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 rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

The Panel notes that, at the time of the Complaint and of this Decision, the disputed domain name did not resolve to an active website. On that basis, the Panel is unable to find that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. The evidence does not indicate that the Respondent is commonly known by the disputed domain name or that the Respondent is making legitimate noncommercial or fair use of it. Rather, the evidence indicates that the Respondent was using the disputed domain name to send fraudulent invoices to the Complainant’s client.

Panels have held that the use of a domain name for illegal activity (here, fraud, impersonation) can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1.

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

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

In the present case, the Panel notes that the Respondent intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s mark. The Complainant’s GT mark was registered prior to the registration of the disputed domain name, and the disputed domain

name reflects that mark in its entirety, together with the letter “i” and the industry term “law.” The
Complainant has provided evidence that its mark has been widely used around the world. On this record,
the Panel finds that the disputed domain name was registered in bad faith. WIPO Overview 3.0, section
3.1.4.

Panels have held that the use of a domain name for illegal activity (here, fraud and impersonation) constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds that the Complainant has provided evidence that the Respondent has used the disputed domain name to generate a fraudulent email to the Complainant’s client in an attempt to obtain payment. The Respondent has not attempted to provide a good-faith explanation for such conduct and the Panel does not find it credible that one could exist. On this 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.

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 <gitlaw.cloud> be transferred to the Complainant.

/Ingrīda Kariņa-Bērziņa /

Ingrīda Kariņa-Bērziņa

Sole Panelist
Date: March 26, 2024