Greenberg Traurig, LLP v Privacy service provided by Withheld for Privacy

WIPO Case No. D2022-2903

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Greenberg Traurig, LLP v. Privacy service provided by Withheld for Privacy
Purposes / muhammad Shahzad

Case No. D2022-2903

1. The Parties

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

The Respondent is Privacy service provided by Withheld for Privacy Purposes, Iceland / muhammad

Shahzad, United States.

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 5, 2022. On August 8, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 8, 2022, 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on August 9, 2022, 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 August 17, 2022. In accordance with the Rules, paragraph
5, the due date for Response was September 6, 2022. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on September 7, 2022.

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The Center appointed Kathryn Lee as the sole panelist in this matter on September 15, 2022. 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 an American law firm founded in 1967, which has since grown to one of the largest multi- a website at the domain name <gtlaw.com>, which was registered on September 10, 1995.
practice law firms with more than 2,200 attorneys across 40 offices worldwide. The Complainant as a firm
and its lawyers have been recognized in widely distributed legal publications such as U.S. News Best
Lawyers, Best Lawyers in America, Law360, The Legal 500 and Super Lawyers Magazine. The
Complainant has used the trademarks GT and GREENBERG TRAURIG in connection with its legal services,
and owns the United States trademark registrations for GT (Reg. No. 4,790,133, registered on August 11,

2015), GT GREENBERG TRAURIG (Reg. No. 4,790,136, registered on August 11, 2015), and

The Respondent appears to be an individual with an address in the United States.

The disputed domain name was registered on June 17, 2022, and currently does not resolve to any website.

The disputed domain name was used to perpetuate fraud by sending emails to the Complainant’s client.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to the GT trademark in which the Complainant has rights. Namely, the Complainant asserts that the disputed domain name consists of the Complainant’s exact trademark GT and the term “laww”; “laww” is a misspelling of the generic term “law” and increases the likelihood of confusion based on the direct association with the Complainant’s legal services. The Complainant also points out that the disputed domain name is nearly identical to the domain name <gtlaw.com> which the Complainant uses for its official website, except for the additional “w”.

The Complainant confirms that it has not authorized or licensed rights to the Respondent in any respect and contends that the Respondent has no rights or legitimate interests in the disputed domain name. In fact, the Complainant explains that the Respondent used the disputed domain name in furtherance of fraud and to

display pay-per-click links to the Complainant’s competitors, which do not constitute bona fide or legitimate
use. Specifically, the Respondent sent an email to the Complainant’s client, impersonating an attorney
employed by the Complainant, seeking transfer of funds into a particular bank account. The email was sent
from an email address generated from the disputed domain name, which was essentially identical to the
attorney’s official email address in the same name combination with the only difference being the additional
letter “w” in the “gtlaww.com” portion. Further, the pay-per-click links displayed at the disputed domain name
showed links to “law firms” and “legal services” which are the very same services offered by the

Complainant.

Finally, the Complainant contends that the disputed domain name was registered and used in bad faith. The the Complainant and its marks and with the specific objective of impersonating the Complainant and the Complainant’s employee to engage in fraudulent activities, which constitutes bad faith registration. The Complainant also contends that the Respondent’s use of the disputed domain name in furtherance of wire fraud is indisputably bad faith use. In addition, the Complainant asserts that the Respondent used a privacy service to mask its identity which is indicative of bad faith attempt to evade enforcement of legitimate rights

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by the Complainant.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has demonstrated with supporting evidence that it has rights to the trademark GT, registered well before the registration of the disputed domain name. As for the disputed domain name, it contains the GT mark along with the term “laww”. According to WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7, a domain name is considered confusingly similar to a trademark if it “incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name.” In this regard, the GT mark is incorporated in the disputed domain name in full, and is readily recognizable within the disputed domain name. The additional term “laww” does not prevent a finding of confusing similarity (see WIPO Overview 3.0, section 1.8).

For the reasons mentioned above, the Panel finds that the first element has been established.

B. Rights or Legitimate Interests

On the basis of the present record, the Panel finds that the Complainant has made the required allegations to support a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name. Once such a prima facie basis has been established, the Respondent carries the burden of demonstrating its rights or legitimate interests in the disputed domain name. However, the Respondent in this case has chosen to file no substantive response to these assertions by the Complainant, and there is no evidence or allegation in the records that would warrant a finding in favor of the Respondent on this point.

Further, the Respondent used the disputed domain name in an apparent phishing scheme in which the
Respondent passed itself off as the Complainant’s employee and solicited transfer of funds to its own bank
account. The use of a domain name for illegal activity can never confer rights or legitimate interests on the

Respondent. See WIPO Overview 3.0, section 2.13.1.

Additionally, the disputed domain name was at one point linked to a parking page with various pay-per-click
links to the Complainant’s competitors. Such use trade on the reputation and goodwill associated with the
Complainant’s trademark and does not represent a bona fide offering of goods or services. See, e.g., WIPO
Overview 3.0, section 2.9.

For the reasons provided above, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and that the second element has been established.

C. Registered and Used in Bad Faith

The Panel finds that there is sufficient evidence to find bad faith in this case.

First and foremost, the Respondent used the disputed domain name to perpetuate fraud by sending an email from the disputed domain name to the Complainant’s client, soliciting funds to be transferred to what would appear to be the Respondent’s own bank account. The email from the Respondent was disguised as an email from the Complainant’s employee, and the Complainant’s actual address, telephone number, and logo were used in the signature block in order to deceive the recipient into believing that the email actually came from the Complainant’s employee. Using a domain name in a fraudulent activity is manifestly evidence of

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bad faith registration and use. See WIPO Overview 3.0, section 3.1.4 and section 3.4.

Further, considering the fame of the Complainant and its mark, and the use of the disputed domain name in perpetuating fraud, it is quite clear that the Respondent registered the disputed domain name with knowledge of the Complainant’s trademark and the intent to benefit financially from the disputed domain name and the fame and reputation associated with the Complainant’s trademark.

For the reasons given above, the Panel finds that the third and final element has been sufficiently established.

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, <gtlaww.com> be transferred to the Complainant.

/Kathryn Lee/ Kathryn Lee Sole Panelist Date: September 29, 2022