The Complainant is Faegre Baker Daniels, LLP, United States of America (“United States”), represented by Stephanie A. Gumm, United States.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc. / Douglas Ocenasek, United States.
The disputed domain name <faegreb.com> is registered with NameCheap, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 31, 2019. On November 1, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 1, 2019, 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 November 4, 2019, 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 November 7, 2019.
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 November 11, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 1, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 2, 2019.
The Center appointed Evan D. Brown as the sole panelist in this matter on December 13, 2019. 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.
The Complainant is a well-known law firm. It owns the trademark FAEGRE BAKER DANIELS, which is subject to a number of trademark registrations, including United States Reg. No. 4,289,916, registered on February 12, 2013. It uses the term FaegreBD in the domain name of its main website, namely, <faebrebd.com> and as its social media username (e.g., @faegrebd on Twitter). The Respondent registered the disputed domain name on October 3, 2019. It has used the disputed domain name to send fraudulent email messages impersonating the Complainant and at least one of its attorneys.
The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s trademarks; that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied: (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 has been registered and is being used in bad faith.
This element requires the Panel to consider two issues: first, whether the Complainant has rights in a relevant mark; and, second, whether the disputed domain name is identical or confusingly similar to that mark.
The Panel finds the Complainant has established rights in the FAEGRE BAKER DANIELS mark based on the Complainant’s use of the mark as well as trademark registrations in various jurisdictions around the world. And it has established rights in the mark FAEGREBD mark through use of that mark since at least as early as 2012.
The disputed domain name is confusingly similar to these marks. In particular, the only difference between the disputed domain name and the FAEGREBD mark results from a minor misspelling. Such insignificant modifications to trademarks are commonly referred to as “typosquatting”, as such conduct seeks to wrongfully take advantage of errors by Internet users. See, Six Continents Hotels, Inc. v. null John Zuccarini d/b/a Country Walk, WIPO Case No. D2003-0161. “Domain names which constitute typo-squatting are confusingly similar by definition; it is this similarity which makes them attractive.” Dell Computer Corp. v. Clinical Evaluations, WIPO Case No. D2002-0423; see also American Home Products Corporation v. Privateer Ltd., WIPO Case No. D2000-0455 (<addvil.com> held confusingly similar to ADVIL).
For the foregoing reasons, the Panel finds that this first element of the Policy has been satisfied.
The Complainant has successfully shown, prima facie, that the Respondent lacks rights or legitimate interests in the disputed domain name. The use of the disputed domain name to fraudulently impersonate the Complainant and at least one of its attorneys is a clear example of a respondent lacking rights or legitimate interests. See, e.g., Advance Magazine Publishers Inc. v. Registration Private, Domains By Proxy LLC / Phillip Watson, WIPO Case No. D2016-1582. The Respondent has not submitted any evidence that overcomes this prima facie showing. Accordingly, this second element of the Policy has been satisfied.
The Policy requires a complainant to establish that the disputed domain name was registered and is being used in bad faith. The facts of this case demonstrate that the Respondent registered the disputed domain name for commercial gain or otherwise to interfere in the business of the Complainant, and to trade on the Complainant’s goodwill and reputation. By impersonating the Complainant and at least one of its attorneys, the Respondent’s actions likely constituted fraud. For these reasons, the Panel finds that the disputed domain name was registered and is being used in bad faith.
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 <faegreb.com> be transferred to the Complainant.
Evan D. Brown
Sole Panelist
Date: December 26, 2019