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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Nelson Mullins Riley & Scarborough LLP v. Perfect Privacy, LLC / Sun Eagle Corporation

Case No. D2020-2788

1. The Parties

The Complainant is Nelson Mullins Riley & Scarborough LLP, United States of America (“United States”), represented internally.

The Respondent is Perfect Privacy, LLC, United Stated / Sun Eagle Corporation, United States.

2. The Domain Name and Registrar

The disputed domain name, <nelsonmulllins.com>, is registered with Register.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 22, 2020. On October 23, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 23, 2020, 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 October 26, 2020, 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 October 26, 2020.

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 October 30, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 19, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on November 20, 2020.

The Center appointed Dennis A. Foster as the sole panelist in this matter on December 2, 2020. 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 a law firm that has been operating in the United States since 1897. The Complainant conducts its operations in connection with the service mark NELSON MULLINS among others. The Complainant has registered that mark with the United States Patent and Trademark Office (“USPTO”) (Registration No. 3754391; registered on March 2, 2010).

The disputed domain name, <nelsonmulllins.com>, is owned by the Respondent, and the date of registration is September 21, 2020. The disputed domain name has been used by the Respondent to conduct phishing activities.

5. Parties’ Contentions

A. Complainant

- The Complainant is an established law firm which came into existence in 1897. In rendering its legal services, the Complainant has used the NELSON MULLINS service mark since 1999. Subsequently, the Complainant obtained a valid registration for that mark from the USPTO.

- Since 1997, the Complainant has also used the domain name, <nelsonmullins.com>, in connection with its legal services.

- The disputed domain name, <nelsonmulllins.com>, is confusingly similar to the Complainant's NELSON MULLINS service mark. The minor difference is the addition of an extra letter, “l”, within the second element of the disputed domain name (i.e., “mulllins” as opposed to “mullins”).

- The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has neither authorized the Respondent to use the Complainant's service mark nor been affiliated or connected with the Respondent in any way. Moreover, the Respondent is not making a bona fide offering of goods or services in connection with the disputed domain name, and has not been commonly known as the disputed domain name. Furthermore, the Respondent is using the disputed domain name in furtherance of illegal Internet phishing operations.

- The disputed domain name was registered and is being used in bad faith. Specifically, the Respondent registered and is using the disputed domain name for fraudulent phishing scams, such as luring at least one of the Complainant's clients to a phony online billing/payment account that is under the Respondent's control. That incident took place on the same day that the disputed domain name was registered.

B. Respondent

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

6. Discussion and Findings

Pursuant to Policy paragraphs 4(a)(i) - (iii), the Panel may find for the Complainant and grant it a transfer of the disputed domain name, <nelsonmulllins.com>, provided the Complainant demonstrates that:

- the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

- the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel accepts the Complainant's clear evidence that it possesses a valid USPTO registration for the NELSON MULLINS service mark. Thus, the Panel concludes that the Complainant has the necessary rights in that mark as required under Policy paragraph 4(a)(i). See, DIRECTV, LLC v. Net Manager, Xwings Domains, WIPO Case No. D2015-0551 (“The Panel accepts that a valid USPTO registration for a mark establish[es] that the Complainant has sufficient rights in that mark for the purpose of paragraph 4(a)(i) of the Policy.’”); and Hola S.A. and Hello Limited v. Idealab, WIPO Case No. D2002-0089 (“The holding of a registered mark is sufficient for the purposes of the Policy.”).

In visually comparing the disputed domain name, <nelsonmulllins.com>, with the NELSON MULLINS service mark, the Panel determines that the two are not identical. However, the Panel determines also that the differences are very slight. The disputed domain name does not include a space between the two terms found in the mark and does include a third letter, “l”, in the second such term as well as the generic Top-Level Domain (“gTLD”), “.com”, at the end. The Panel believes that the disputed domain name involves a simple and deliberate misspelling of the Complainant's valid mark and is consistent with a typical case of illegitimate typosquatting. In short, the Panel finds that the combination of the slight deviations referred to above does not prevent the Panel from finding that the disputed domain name is confusingly similar to the Complainant's service mark. See, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.9; Frey Wille GmbH & Co KG v. Den Gledenov, WIPO Case No. D2010-0438 (“The Panel finds that it is a well-established principle that non-distinctive additions to a trademark as well as the inclusion of the gTLD suffix “.com” and omission of blank spaces do not avoid confusing similarity of domain names and trademarks.”); and Humana Inc. v. Cayman Trademark Trust, WIPO Case No. D2006-0073 (finding <humanna.com> to be confusingly similar to the HUMANA mark).

As a result, the Panel finds that the Complainant has demonstrated that the disputed domain name is identical or confusingly similar to a service mark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Policy states that a complainant bears the burden of proving that a respondent has no rights or legitimate interests in a disputed domain name but, due to the extreme difficulty of proving a negative proposition, the consensus of UDRP decisions is that a Policy complainant need present only a prima facie case that such rights and interests fail to exist before shifting the burden to the corresponding respondent to rebut that case with clear evidence. See, WIPO Overview 3.0, section 2.1.

The Complainant asserts directly that it is not affiliated or otherwise connected with the Respondent, and that the Complainant has not granted any authorization for the Respondent to use the Complainant's service mark for any reason or in any manner. The Complainant has also convinced the Panel that the disputed domain name is confusingly similar to that mark. For these reasons, the Panel concludes that the Complainant has made an acceptable prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. See, for example, Spencer Douglass, MGA v. Bail Yes Bonding, WIPO Case No. D2004-0261 (“...the Complainant has not licensed or otherwise authorized the Respondent to use the [Complainant's] marks [...] this suffices to make a prima facie showing for purposes of Paragraph 4(a)(ii) that the Respondent lacks rights or legitimate interests in the disputed domain name.”).

Here, the Respondent has failed to file a Response and thus offers no evidence to rebut the Complainant's prima facie case. Despite that failure, the Panel will search the record for any evidence that might sustain possible arguments in favor of the Respondent's position in this regard, taking into account that any reasonable evidence presented in the Complaint will be accepted as true. See, WIPO Overview 3.0, section 2.1 (“The panel may draw inferences from the absence of a response as it considers appropriate, but will weigh all available evidence irrespective of whether a response is filed.”).

Under Policy paragraph 4(c)(i), the Respondent might prevail in this case if it can show that the disputed domain name is being used (or that there are demonstrable preparations for use) in connection with a bona fide offering of goods or services. However, the Complaint provides concrete evidence, which is accepted as true by the Panel, that the disputed domain name is used by the Respondent to conduct Internet phishing scams with respect to existing or potential clients of the Complainant. The Panel finds that this sort of activity is not a bona fide offering of good and services pursuant to paragraph 4(c)(i). See, Wesco Aircraft Hardware Corp. v. Contact Privacy Inc. Customer 1245095601 / Gulf Guns and Gear, WIPO Case No. D2019-2131 (“...the Panel finds that purpose of registering the [disputed] Domain Name was to engage in an email scam or a phishing scheme, none of which is a bona fide offering of goods or services.”); and CMA CGM v. Diana Smith, WIPO Case No. D2015-1774 (“...such phishing scam cannot be considered a bona fide offering of goods or services...”).

With respect to Policy paragraph 4(c)(ii), the Panel detects no reason to believe that the Respondent, Sun Eagle Corporation, has been commonly known as the disputed domain name, <nelsonmulllins.com>, nullifying any notion that that Policy paragraph is relevant to this case.

Finally, as contended in the Complaint and accepted by the Panel, the clear intent of the Respondent is to use the disputed domain name for its own financial profit in scamming the Complainant's clients. Therefore, the Panel finds that the requirement of Policy paragraph 4(c)(iii), that the disputed domain name be used for “legitimate noncommercial or fair use”, is not met in the present case.

Since the Panel can neither apply Policy paragraph 4(c) nor decipher other evidence in the record to support the Respondent's position, the Panel concludes that the Complainant's prima facie case must prevail.

As a result, the Panel finds that the Complainant has demonstrated that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Policy paragraph 4(b) furnishes four distinct circumstances, the proof of any of which could lead the Panel to find that the disputed domain name was registered and is being used in bad faith. However, many prior UDRP panels have concluded that those circumstances are not exhaustive of reasons to uphold those findings. See, for example, HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062 (“The examples of bad faith registration and use set forth in paragraph 4(b) are not meant to be exhaustive of all circumstances from which such bad faith may be found.”).

In the present case, the Complainant has brought forth pertinent evidence that the Respondent is using the disputed domain name for fraudulent purposes. This includes clear evidence of one circumstance where a client of the Complainant was contacted through an email connected with the disputed domain name and encouraged to make payments through an account unauthorized by the Complainant and presumably controlled by the Respondent. The Panel determines that this phishing activity definitely constitutes bad faith usage of the disputed domain name, and presents clear evidence that it was registered in bad faith as the aforementioned activity took place on the same day the disputed domain name was registered. See, Kimley-Horn and Associates, Inc. v. Abrahim Hashim, WIPO Case No. DCO2019-0017 (“The registration of a domain name in furtherance of phishing scams supports a finding of bad faith registration and use.”); and BHP Billiton Innovation Pty Ltd v. Domains By Proxy LLC / Douglass Johnson, WIPO Case No. D2016-0364 (“...the use of an email address associated with the disputed domain name, to send a phishing email for the purposes of dishonest activity is in itself evidence that the disputed domain name was registered and is being used in bad faith.”).

As a result, the Panel finds that the Complainant has demonstrated that the disputed domain name was registered and is being used in bad faith.

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

Dennis A. Foster
Sole Panelist
Date: December 16, 2020

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