Hanson Bridgett LLP v Qwerty Zeng
WIPO Case No. D2023-2152
•10-07-2023
ARBITRATION
AND
| MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
Hanson Bridgett LLP v. Qwerty Zeng
Case No. D2023-2152
1. The Parties
The Complainant is Hanson Bridgett LLP, United States of America (“United States” or “US”), self- represented.
The Respondent is Qwerty Zeng, Norway.
2. The Domain Name and Registrar
The disputed domain name <hansonbrldgett.org> is registered with PDR Ltd. d/b/a
PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 13, 2023. On connection with the disputed domain name. On May 17, 2023, 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.
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 May 31, 2023. In accordance with the Rules, paragraph 5, the due date for Response was June 20, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 23, 2023.
The Center appointed Zoltán Takács as the sole panelist in this matter on June 29, 2023. 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.
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4. Factual Background
Founded in 1958, the Complainant is a law firm headquartered in the Unites States. The Complainant
employs over 200 attorneys in offices across California, offering legal services to thousands of clients across
California, and supporting a variety of multi-jurisdictional practices across the United States.
The Complainant states in the Complaint that it possesses enforceable common-law trademark rights in the
HANSON BRIDGETT mark in connection with its legal services, since:
| - | it has extensively used the HANSON BRIDGETT mark and close variants in the United States exclusively since 1958 as indicators of source in connection with its legal services, including via its primary web presence at “ |
| - | it is recognized as an “AmLaw 200 law firm” in the American Lawyer Magazine’s list of US law firms, ranked 101 through 200 by gross revenue, and |
| - | it owns the domain name <hansonbridgett.com>, which it uses as its official website and email root in the marketing and advertising of its services since its registration, November 12, 1997. |
Additionally, the Complainant is owner of the figurative trademarks registered by the United States Patent and Trademark Office on December 29, 2009 under numbers 3731869 and 3731870 for legal services and online information services in the field of law.
The Complainant submits that due to the above mentioned long standing use, recognition and success the enforceable trademark meaning.
The Respondent registered the disputed domain name on April 13, 2023 and used it to create a fake email address, impersonating an employee of the Complainant and attempting to solicit payment of fraudulent invoices.
5. Parties’ Contentions
A. Complainant
The Complainant contends that the disputed domain name, which incorporates the entirety of its HANSON
BRIDGETT trademark is confusingly similar to it. The only difference is that the letter “i” in the word element
“Bridgett” of the disputed domain name is replaced with a visually confusing letter “l”, which is a clear case of
typosquatting.
The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed
domain name and is unable to rely on any of the circumstances set out in paragraphs 4(c)(i), (ii), or (iii) of the
Policy.
The Complainant contends that the Respondent’s use of the actual name of one of its accounting personnel in sending deceptive emails in order to solicit payment of fraudulent invoices amounts to bad faith registration and use of the disputed domain name.
The Complainant requests that the disputed domain name be transferred from the Respondent to the
Complainant.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
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6. Discussion and Findings
Paragraph 15(a) of the Rules requires that the Panel’s decision be made “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”.
A complainant must evidence each of the three elements required by paragraph 4(a) of the Policy in order to succeed on the complaint, namely that;
(i) the 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 domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy, there are two requirements which the Complainant must establish, first that it has rights in a trademark or service mark, and second that the disputed domain name is identical or confusingly similar to the trademark or service mark.
The Complainant relies on the unregistered HANSON BRIDGETT mark, as well as on its above mentioned figurative trademarks and the domain name <hansonbridgett.com>.
Based on the evidence submitted by the Complainant the Panel accepts that as a result of the above
mentioned long standing and extensive use and recognition of its name as its principal business identifier the
Complainant has established common-law rights in the unregistered HANSON BRIDGETT mark for the
purpose of the Policy (see section 1.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP
Questions, Third Edition (“WIPO Overview 3.0”).
Having determined the presence of the Complainant’s trademark rights, the Panel next assesses whether the disputed domain name is identical or confusingly similar to the Complainant’s trademark.
According to section 1.7 of the WIPO Overview 3.0, the standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the domain name. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name.
The Complainant’s HANSON BRIDGETT mark is evidently recognizable in the disputed domain name. The only difference between the trademark and the disputed domain name is substitution of the letter “i” in the word element “Bridgett” of the disputed domain name by the letter “l”.
The Panel considers this obvious misspelling of the Complainant’s trademark a clear example of typosquatting. According to section 1.9 of the WIPO Overview 3.0, a domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by UDRP panels to be confusingly similar to the relevant mark for the purpose of the first element. This stems from the fact that the domain name contains sufficiently recognizable aspects of the relevant mark.
According to section 1.11.1 of the WIPO Overview 3.0, the applicable Top-Level Domain (“TLD”) in a domain name (in this case “.org”) is viewed as a standard registration requirement and as such is generally disregarded under the first element confusingly similar test.
The Panel finds that the disputed domain name is therefore confusingly similar to the Complainant’s trademark and that the first ground of the Policy is established.
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B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, a respondent may demonstrate its rights or legitimate interests in a domain name by showing any of the following circumstances, in particular but without limitation:
(i) before any notice of the dispute, its use of, or demonstrable preparation to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services;
(ii) it has been commonly known by the domain name;
(iii) it is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
According to section 2.1 of the WIPO Overview 3.0, while 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 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 the relevant evidence demonstrating its 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.
In the present case, the Complainant has submitted sufficient and uncontested evidence that it holds enforceable prior rights in the HANSON BRIDGETT trademark.
The Complainant has never authorized the Respondent to use its trademark, in a domain name, or otherwise.
There is no evidence that the Respondent is commonly known by the disputed domain name.
The Respondent used the disputed domain name to create a fake email address, impersonate the
Complainant’s employee in deceptive emails it sent in attempts to solicit payment of fraudulent invoices.
UDRP panels have categorically held that use of a domain name for impersonation or other types of fraud
can never confer rights of legitimate interests on a respondent (see section 2.13.1. of the WIPO Overview
3.0).
The Respondent failed to respond, and by doing so failed to offer the Panel any type of evidence set forth in paragraph 4(c) of the Policy, or otherwise counter to the Complainant’s prima facie case and the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name in accordance with
paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of factors which, if found by the panel to be present, shall be evidence of registration and use of a domain name in bad faith. This non-exclusive list includes:
(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
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(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 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 your website or location or of a product or service on your website or location.
The Complainant’s trademark, misspelled variant of which the disputed domain name fully incorporates is
inherently distinctive. A basic Internet search against the disputed domain name returns solely the
Complainant and its business.
These facts and circumstances, in addition to the fact that the Respondent attempted to impersonate the Complainant’s employee in the fraudulent emails sent in view of the Panel show that the Respondent knew of the Complainant’s business and trademark at the time of obtaining the disputed domain name and chose to register it to target the Complainant’s trademark within the meaning of paragraph 4(b)(iv) of the Policy.
Furthermore, for the reasons discussed above the Panel considers the Respondent’s obvious misspelling of the Complainant’s trademark in the disputed domain name is a clear case of typosquatting registration which is in itself evidence of bad faith (see National Association of Professional Baseball Leagues, Inc., d/b/a Minor League Baseball v. John Zuccarini, WIPO Case No. D2002-1011).
Also, the Respondent attempted to impersonate the Complainant through use of the disputed domain name in sending of fake emails on behalf of one of the Complainant’s employee in order to commit financial fraud. Such conduct is disruptive of the Complainant’s business and constitutes bad faith under the Policy (see
section 3.4 of the WIPO Overview 3.0 and Graybar Services Inc. v. Graybar Elec, Grayberinc Lawrenge,
WIPO Case No. D2009-1017).
For the reasons set out above, the Panel finds that the disputed domain name was registered and is being used in bad faith within the meaning of paragraph 4(a)(iii) 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 <hansonbrldgett.org> be transferred to the Complainant.
/Zoltán Takács/
Zoltán Takács
Sole Panelist
Date: July 10, 2023
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