Greenberg Traurig, LLP v Romeo Golib

WIPO Case No. D2024-2073

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Greenberg Traurig, LLP v. Romeo Golib

Case No. D2024-2073

1. The Parties

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

Respondent is Romeo Golib, United States.

2. The Domain Name and Registrar

The disputed domain name <gltbtlaw.com> (the “Domain Name”) is registered with NameCheap, Inc. (the

“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 16, 2024. On May 20, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 20, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent (Privacy service provided by Withheld for Privacy ehf Kalkofnsvegur 2) and contact information in the Complaint. The Center sent an email to Complainant on May 21, 2024, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on May 24, 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 Respondent of the Complaint,
and the proceedings commenced on May 27, 2024. In accordance with the Rules, paragraph 5, the due
date for Response was June 16, 2024. Respondent did not submit any response. Accordingly, the Center
notified Respondent’s default on June 18, 2024.

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The Center appointed Robert A. Badgley as the sole panelist in this matter on June 21, 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

According to the Complaint:

“Founded in 1967 in Miami, Florida, Complainant Greenberg Traurig LLP (‘GT’ or ‘Complainant’) has grown to be one of the largest multi-practice law firms in the world with more than 2200 attorneys across 40 offices in the United States, Latin America, Europe, Asia, and the Middle East. GT 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. Both GT as a firm and lawyers at GT are consistently
recognized in widely distributed 6 legal publications such as U.S. News Best Lawyers, Best Lawyers In
America, Law360, The Legal 500 and Super Lawyers Magazine.”

Complainant owns the domain name <gtlaw.com> and uses that domain name to host its commercial website. This site has received more than 400,000 visitors in the past three months, according to a study annexed to the Complaint.

Complainant has used the trademarks GREENBERG TRAURIG and GT for several years. Complainant also for the marks GREENBERG TRAURIG and/or GT.
holds the following trademark registrations with the United States Patent and Trademark Office (“USPTO”):

USPTO Reg. No. 2,810,539 for GREENBERG TRAURIG, registered on February 3, 2004, and USPTO Reg.

The Domain Name was registered on May 8, 2024. The Domain Name currently does not resolve to an
actual website. For a time, however, the Domain Name resolved to a landing page containing pay-per-click

(“PPC”) hyperlinks, including “Lemon Law Attorney”; “Family and Law Attorney”; and “Legal Attorneys”.

Moreover, Complainant alleges (and supports with documentary evidence annexed to the Complaint):

“Respondent is using the Disputed Domain Name to impersonate an attorney at the Complainant’s law firm.
[Name Redacted or “NR”] is an attorney who works for Complainant. His profile on the GT Website is
available at [redacted] and his official email address is [NR]@gtlaw.com. […] Respondent sent emails to a
client of Complainant from an email address created on the Disputed Domain Name, [NR]@gltbtlaw.com
(the “Fraudulent Email Messages”). Notably, the email address is almost identical to [NR’s] real email
address and follows the format Complainant uses in its official email addresses—the attorney’s full name and
the letter of their first name. In the Fraudulent Email Messages, Respondent impersonated [NR] and

attempted to get Complainant’s client to wire funds to a fraudulent bank account. […]”

Respondent did not deny any of the foregoing allegations or evidence submitted by Complainant.

5. Parties’ Contentions

A. Complainant

Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the
Domain Name.

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B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the
Domain Name:

(i)        the Domain Name is identical or confusingly similar to a trademark or service mark in which

Complainant has rights; and

(ii)       Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii)      the Domain Name has been 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
Complainant’s trademark and the Domain Names. WIPO Overview of WIPO Panel Views on Selected
UDRP Questions, Third Edition (“WIPO Overview 3.0”) 1.7.

The Panel concludes that Complainant has rights in the trademark GT through registration and use demonstrated in the record. The Panel also concludes, on the record presented here, that the Domain Name is confusingly similar to the GT mark. The Domain Name entirely incorporates the GT mark and adds the descriptive term “law,” as well as three additional letters interspersed within the Domain Name (“l”, “b”, and “t”).

In the abstract, the Panel notes that as to concluding that the GT mark is confusingly similar to the Domain Name, GT is prima facie different from “gltbt.” (The additional word “law” does not typically figure in this analysis.) In this case, though, Respondent’s own conduct (plus the inclusion of a term in the Complainant’s industry) affirms that and the Domain Name is confusingly similar to the GT mark for purposes of this proceeding. Respondent himself used the Domain Name to create a fake email in order to impersonate an employee of Complainant in furtherance of a fraudulent scheme. The fact that Respondent chose this particular Domain Name in aid of his fraudulent impersonation scheme also suggests that in Respondent’s view there is confusing similarity between the GT mark and the Domain Name.

Although the content of a Respondent’s website is generally viewed as irrelevant to the “confusing similarity” analysis, in some instances such content may be considered by panels where it appears that a respondent is seeking to target a complainant’s trademark. WIPO Overview 3.0, section 1.15. In such circumstances, it

may be said that the respondent himself evidently believed the domain name to be confusingly similar to the
complainant’s mark, else he would not have registered that domain name. Put another way, in such
circumstances the respondent has conceded that the domain name is confusingly similar to the subject
trademark.

For similar reasons, the Panel here considers Respondent’s use of the Domain Name to create a fake email address purportedly attributable to an actual Complainant employee for purposes of fraudulently impersonating Complainant to be a concession by Respondent that the Domain Name is confusingly similar to Complainant’s GT mark.

Complainant has established Policy paragraph 4(a)(i).

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B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the
Domain Name, among other circumstances, by showing any of the following elements:

(i)        before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to

use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering
of goods or services; or

(ii)       you [Respondent] (as an individual, business, or other organization) have been commonly known by

the Domain Name, even if you have acquired no trademark or service mark rights; or

(iii)      you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without

intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at
issue.

The Panel concludes, on this undisputed record, that Respondent lacks rights or legitimate interests in respect of the Domain Name. Respondent has not come forward to explain any possible legitimate reason for registering the Domain Name. On the record presented here, the Panel concludes that Respondent clearly targeted Complainant and its GT mark when registering the Domain Name, and Respondent used the Domain Name for improper commercial gain in at least two respects. First, Respondent’s website featured PPC links related to the legal profession (where Complainant has a major presence). Second, Respondent pursued a fraudulent scheme to defraud clients of Complainant.

As Complainant has argued, the use of a domain name to impersonate a complainant in furtherance of fraud establishes that respondents have no legitimate interests in disputed domain names. See Arkema France v. Pepi Robert, WIPO Case No. D2014-1055 (use of a domain name to send email messages attempting to

make a fraudulent order for goods to take advantage of the credit and reputation of the complainant
establishes no legitimate rights of respondent in the disputed domain name). Similarly, the use of PPC
hyperlinks which improperly trade on the renown of a complainant cannot invest a respondent with a

legitimate interest vis-à-vis a domain name.

Complainant has established Policy paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:

(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily

for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant
who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable
consideration in excess of its documented out of pocket costs directly related to the Domain Name; or

(ii)       that 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 Respondent has
engaged in a pattern of such conduct; or

(iii)      that Respondent has registered the Domain Name primarily for the purpose of disrupting the business

of a competitor; or

(iv)      that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial

gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion
with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website
or location or of a product or service on Respondent’s website or location.

The Panel concludes that Respondent registered and used the Domain Name in bad faith under the Policy. The Panel incorporates its discussion above in the “Rights or Legitimate Interests” section. On this record, the Panel finds that Respondent targeted Complainant’s mark when registering the Domain Name, and did so for fraudulent purposes, in violation of the above-quoted Policy paragraph 4(b)(iv).

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Complainant has established Policy paragraph 4(a)(iii).

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 Domain Name <gltbtlaw.com> be transferred to Complainant.

/Robert A. Badgley/
Robert A. Badgley
Sole Panelist
Date: July 3, 2024