national arbitration forum

 

DECISION

 

Manatt, Phelps & Phillips, LLP v. Asia Ventures, Inc.

Claim Number:  FA0511000598852

 

PARTIES

Complainant is Manatt, Phelps & Phillips, LLP (“Complainant”), represented by Jill M. Pietrini of Manatt, Phelps & Phillips, LLP, 11355 W. Olympic Blvd., Los Angeles, CA 90064.  Respondent is Asia Ventures, Inc. (“Respondent”), GPO 11136, Central HK.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <manattphelps.com>, registered with The Registry At Info Avenue d/b/a IA Registry.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Houston Putnam Lowry, Chartered Arbitrator, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 16, 2005; the National Arbitration Forum received a hard copy of the Complaint on November 23, 2005.

 

On November 18, 2005, The Registry At Info Avenue d/b/a IA Registry confirmed by e-mail to the National Arbitration Forum that the <manattphelps.com> domain name is registered with The Registry At Info Avenue d/b/a IA Registry and that Respondent is the current registrant of the name.  The Registry At Info Avenue d/b/a IA Registry has verified that Respondent is bound by the The Registry At Info Avenue d/b/a IA Registry registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

On November 23, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 13, 2005 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@manattphelps.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On December 16, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

I.                   PRELIMINARY STATEMENT

This dispute is an unabashed example of cybersquatting.  In an effort to divert internet traffic to its own commercial website, Asia Ventures, Inc. (“Respondent”), registered and is using the domain name <manattphelps.com> (the “Domain Name”) to exploit the goodwill associated with the name of the law firm Manatt, Phelps & Phillips, LLP (“Complainant”).  The UDRP was designed to address exactly this kind of practice and to allow legitimate trademark owners to recover domain names containing their trademarks and/or personal names. 

II.                FACTUAL BACKGROUND

A.     Complainant is the Exclusive Owner of All Rights in Connection with its Federally Registered Trademark.

Complainant is the exclusive owner of all rights in connection with the federally registered trademark MANATT, PHELPS & PHILLIPS.  Complainant is one of the nation’s premier law and consulting firms.  The firm provides legal services in the areas of advertising; antitrust; banking; bankruptcy and financial restructuring; corporate finance and securities; environmental; government and regulatory; healthcare; insurance; intellectual property; internet and e-commerce; labor and employment; litigation and trial; mergers and acquisitions; motion pictures and television; music; real estate and land use; tax, benefits and compensation; and venture capital.

The law firm of Manatt, Phelps & Phillips, LLP was founded in Los Angeles in 1965 by Charles Manatt and Thomas Phelps.  Since that time, the firm has grown considerably in both size and prestige and now has offices in California in Los Angeles, Palo Alto, Orange County, and Sacramento; in New York in New York City and Albany; in Washington, D.C.; and in Mexico in Mexico City.  The firm boasts powerful national litigation capabilities, exceptional transactional experience and influential government and regulatory resources and strives to provide its clients with unparalleled legal, strategic, and business advice.

Complainant prides itself on the quality of its services, its commitment to its clients, its entrepreneurial spirit, and its involvement in and dedication to the communities that it serves.  Many of the firm’s professionals are well-regarded leaders in their communities and have been recognized and honored for their academic, professional, and personal achievements.

Complainant operates a website where its legal services are promoted.  That website is accessible through the domain name <manatt.com>.  As with many names, Complainant’s name is commonly abbreviated to, and Complainant has become known as, “Manatt” or “Manatt Phelps”.

B.     Respondent is an Organization That Profits by Using the Trademarks of Others.

Respondent is the currently identified owner of the Domain Name, which was registered with The Registry at Info Avenue on December 25, 2001.  Respondent operates multiple websites, each linked to other commercial websites.  Respondent’s name is not Manatt Phelps or any component of it.  Respondent is not known as Manatt Phelps and has not offered any legitimate goods or services under Manatt Phelps.  Complainant has not given its permission for Respondent to use or register the Domain Name.  Simply put, Respondent is a cybersquatter, and a known one at that.  There are no less than twelve NAF and WIPO UDRP proceedings against Respondent in which the NAF and WIPO found for the Complainant and ordered the domain name in dispute to be transferred to its rightful owner.

A review of the content of the <manattphelps.com> website quickly leads to the conclusion that not only does Respondent have no right to, or legitimate interest in, the Domain Name, but that Respondent has registered and is using the Domain Name in bad faith for its own commercial gain.  The website attached to the Domain Name purports to give users information on such things as legal and telecommunications services, political strategies, and disaster recovery, among many others.  Although users are not required to pay for the information obtained from Respondent’s website, all sites to which Respondent’s website links users are commercial websites that provide varied services in exchange for money.

C.     Respondent is Wrongfully Using Complainant’s Trademark.

In early February 2005, Complainant learned from a client looking for Complainant’s website that Respondent was making unauthorized use of Complainant’s trademark in the Domain Name.  Complainant sent a cease and desist letter to Respondent by e-mail and certified mail, but received no response.  Respondent’s website remains active.

III.             GROUNDS FOR THE ICANN COMPLAINT

As required for relief under the ICANN Uniform Domain Name Dispute Policy, Complainant alleges: (1) Respondent’s Domain Name is identical or confusingly similar to the trademark owned by Complainant; (2) Respondent has no right to or legitimate interest in the Domain Name; and (3) the Domain Name was registered in bad faith.

ICANN Rule 3(b)(ix).

A.     The Domain Name is Identical or Confusingly Similar to Complainant’s Trademark.

Complainant has broad trademark rights in the federally registered MANATT, PHELPS & PHILLIPS mark.  Despite the absence of the last word and the lack of spaces and punctuation, the Domain Name is identical in sound, appearance, and meaning to the dominant feature of Complainant’s trademark MANATT, PHELPS & PHILLIPS.  Complainant is known as Manatt Phelps, which makes the Domain Name all the more confusingly similar.  Indeed, as a direct result of Respondent’s registration and use of the Domain Name, there has already been actual confusion amongst Complainant’s clients.  Complainant learned of Respondent’s use of the Domain Name from a client who was misdirected to Respondent’s website while searching for Complainant’s website.

ICANN Rule 3(b)(ix)(1); ICANN Policy ¶4(a)(i).

B.     Respondent Has No Legitimate Interest in the Domain Name.

Respondent has no rights or legitimate interest in the Domain Name.  Respondent is not named Manatt Phelps, nor has it made any bona fide offerings of goods or services under the name and mark MANATT PHELPS.  Respondent does not have a license or any other type of permission from Complainant to use Manatt Phelps.  Respondent is clearly using the name and trademark of a recognized business in order to generate revenue by linking users to other commercial websites through the misdirected traffic on <manattphelps.com>.  This demonstrates Respondent’s lack of legitimate interest in the Domain Name.  Roberts v. Keith, D2000-0299 (WIPO 2000).

Respondent cannot be said to be making a legitimate noncommercial or fair use of the Domain Name.  Respondent gains financially by the misleading diversion of consumers to other commercial websites linked to, and advertised on, <manattphelps.com>.  It is neither a bona fide offering of goods and services, nor a legitimate noncommercial or fair use under Policy ¶¶4(c)(1) & (iii) when the holder of a domain name, which is confusingly similar to another’s trademark, attempts to profit by passing itself off as Complainant.  See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (NAF 2001); see also N. Coast Med., Inc. v. Allegro Med., FA 95541 (NAF 2000) (finding no bona fide use where the respondent used a misleading domain name to divert internet users to its own competing website); MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO 2000) (holding that the respondent had no rights or legitimate interest in Complainant’s famous MSNBC mark where the respondent attempted to use Complainant’s mark to redirect internet traffic to its own commercial website); State Farm Mutual Auto Ins. Co. v. La Faive, FA 95407 (NAF 2000) (“unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services”).

ICANN Rule 3(b)(ix)(2); ICANN Policy ¶4(a)(ii).

C.     Respondent Registered and Is Using the Domain Name in Bad Faith.

The Domain Name was registered, and is being used, in bad faith for the reasons articulated in ¶4(b)(iv) of the UDRP.  Specifically, Respondent is using the goodwill attached to Complainant’s name and trademark to attract, for commercial gain, internet users to its commercial website.

Respondent registered the Domain Name with full knowledge of Complainant’s rights in the name and mark MANATT, PHELPS & PHILLIPS.  Such knowledge may be inferred from the fact that Complainant’s mark is a federally registered trademark.  Moreover, MANATT, PHELPS & PHILLIPS, as the name of a premier national law firm, is sufficiently unique because it contains the names of its two founders such that Respondent is unlikely to have coined the Domain Name on its own.  See Newberger Berman Inc. v. Alfred Jacobson, D2000-0323 (WIPO 2000) (the domain name <newbergerberman.com> is too unique to have been coined by the respondent).

Furthermore, Respondent’s website purports to provide information on legal services, increasing the potential of confusion among users actually looking for the website of Manatt, Phelps & Phillips, LLP.  In fact, just such confusion has already occurred among some of Complainant’s own clients.

More importantly, Respondent is a well-known cybersquatter.  Respondent has been found to have registered domain names of other well known businesses at least twelve times in the last 36 months alone, each time failing to even respond to the Complaint in the ICANN domain name proceedings.

In the first recorded decision against Respondent, a WIPO Panel transferred the domain name <sportmensguide.com> from Respondent to its rightful owner, The Sportsman’s Guide, Inc.  The Sportsman’s Guide, Inc. v. Asia Ventures, Inc., D2002-1116 (WIPO 2003).  The Panel found that “Respondent deliberately selected the domain name with a view to attracting visitors to the site, anticipating that it would attract visitors intending to reach the Complainant’s site.”  Id.  According to the Panel, such conduct was more than enough evidence to show that Respondent had no rights or legitimate interest in the domain name and had registered the domain name in bad faith.  Id.

Later that year, another WIPO Panel transferred the domain name <holidayinnsunspreeresort.com> from Respondent to Six Continents Hotels, Inc., owner of the HOLIDAY INN family of marks.  Six Continents Hotels, Inc. v. Asia Ventures, D2003-0659 (WIPO 2003).  The Panel determined that Respondent was trading on the goodwill associated with Complainant’s marks by “lur[ing] consumers seeking a website of the Complainant” to its own website that contained “a prominently displayed banner advertisement for a competitor travel service, links to competitor hotels and services, and pop-up advertisements from which the Respondent gains commercial benefit.”  Id.  Moreover, the Panel noted that Respondent was an habitual cybersquatter who had established a “pattern of conduct of registering domain names containing others’ trademarks” with “each having been used by the Respondent to divert visitors to his web sites for commercial gain.”  Id. 

A little over a week later, yet another WIPO Panel found that Respondent had been cybersquatting on <museumofscienceboston.com>, a domain name containing the trademark and trade name of the Boston Museum of Science.  Museum of Science v. Asia Ventures, Inc., D2003-0691 (WIPO 2003).  Because Respondent was not commonly known by the domain name, the Panel found that Respondent had no rights or interest in it.  Id.  Moreover, the Panel determined that it was “inconceivable that Respondent chose to register [the domain name] by accident,” especially given the fame of Complainant’s mark.  Id.  Finally, the Panel noted that Respondent “is known to have registered in the past the domain names that correspond to well-known marks” and that such evidence “clearly reinforces” a finding of bad faith.  Id. 

On July 7, 2004, another WIPO Panel transferred the domain name <dellrebatestatus.com> from Respondent to Dell Inc.  Dell Inc. v. Asia Ventures, Inc., D2004-0452 (WIPO 2004).   The Panel found that Respondent had no rights or legitimate interest in the domain name and that “by using the domain name, it intentionally attempted to attract, for commercial gain, Internet users to its website ... by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website” and that such use was clearly in bad faith.  Id. 

A few months later, an NAF Panel transferred the domain name <rachelashwell.com> from Respondent after finding that Respondent was using the domain name to “promote [its] search engine website ... which links [users] to Complainant’s competitors in the business of decorating, furnishing and related services.”  Shabby Chic, Inc. v. Asia Ventures, Inc., FA0409000335486 (NAF 2004).  The Panel determined that Respondent was using Complainant’s mark in bad faith “to generate revenue based on click-through traffic to banner and pop-up advertisements posted on Respondent’s website” and that such use is “neither a bona fide offering of goods or services ... nor a legitimate noncommercial or fair use of a domain name.”  Id.

Next, on April 12, 2005, another NAF Panel transferred the domain name <nationalholisticinstitute.com> from Respondent to the National Holistic Institute.  Nat’l Holistic Inst. v. Asia Ventures, Inc., FA0503000433854 (NAF 2005).  The Panel found that the domain name was not only identical to Complainant’s mark but that Respondent’s use of the domain name to redirect “unsuspecting Internet users” to its own website which “offers sponsored links to various commercial websites, including websites that offer services that compete with Complainant” was clear evidence of bad faith registration and use.  Id.  This, stated the Panel, was “opportunistic use of Complainant’s mark in order to capitalize on the goodwill associated with [Complainant’s] moniker.”  Id.

Two weeks later, an NAF Panel transferred the domain name <sandiegocountycreditunion.com> from Respondent to its rightful owner.  San Diego County Credit Union v. Asia Ventures, Inc., FA0503000444402 (NAF 2005).  The Panel found that Complainant’s federal trademark registration of its mark conferred constructive knowledge on anyone attempting to use it and that Respondent “must have known about Complainant’s mark because the link between the financial services content on the website and the Complainant’s business is apparent.”  Id.  Moreover, the Panel determined that Respondent was using the domain name to “redirect Internet users to a website offering links to a wide variety of financial services, including those similarly offered by Complainant.”  Id.  This “practice of diversion, motivated by commercial gain,” noted the Panel, “evidences bad faith registration” of a domain name.  Id.   

The next day, a WIPO Panel determined that Respondent was cybersquatting on the domain name <astrazenecapharm.com> and transferred it to its rightful owner.  AstraZeneca AB v. Asia Ventures, Inc., D2005-0264 (WIPO 2005).  The Panel found that Respondent used the domain name “to misdirect Internet users to its own website” where it “profit[s] presumably either from commissions for pop-up advertising or referral fees for websites that the disputed domain name links to.”  Id.  In addition, the Panel cited several UDRP decisions against Respondent in noting that “Respondent has established a pattern of infringing on famous marks and then using them to mislead Internet users into viewing linked websites of Complainant’s competitors.”  Id.

Respondent’s cybersquatting activities go on and on.  The following month, another WIPO Panel transferred the domain name <pfizerinc.com> from Respondent to Pfizer, Inc.  Pfizer, Inc. v. Asia Ventures, Inc., D2005-0256 (WIPO 2005).  The Panel noted that “Respondent did not answer to the cease and desist letter sent by Complainant” and that such behavior can be “considered as an indication of the Respondent’s lack of legitimate interest” in the domain name.  Id.  Further, the Panel found that Respondent was acting in bad faith by “intentionally attempting to attract Internet users for commercial gain ... by creating a likelihood of confusion with Complainant’s mark.”  Id.

Less than two weeks later, an NAF Panel transferred the domain name <chryslercorporation.com> from Respondent to DaimlerChrysler Corporation.  DaimlerChrysler Corp. v. Asia Ventures, Inc., FA0504000453735 (NAF 2005).  The Panel found that Respondent’s “use of a domain name that is confusingly similar to Complainant’s registered mark to redirect Internet users interested in Complainant’s products and services” to its own website which then linked users to websites of Complainant’s competitors “is not ... a bona fide offering of goods or services ... and is not a legitimate noncommercial or fair use” of the domain name.  Id.  Moreover, the Panel concluded that Respondent likely knew of Complainant’s rights in its mark and that “Respondent chose the [disputed] domain name based on the distinctive and well-known qualities of Complainant’s mark.”  Id.

Two days later, another NAF Panel transferred a group of five domain names incorporating the marks of Citigroup Inc. from Respondent.  Citigroup Inc. v. Asia Ventures, FA0504000453926 (NAF 2005).  All five domain names were variations on, or misspellings of, Complainant’s SMITH BARNEY, SALOMON SMITH BARNEY, or CITI marks.  Id.  Not only did the Panel determine that Respondent had no rights or legitimate interest in the domain names, it also found that Respondent had “actual or constructive knowledge of Complainant’s rights” in its marks “due to Complainant’s registration of the marks with the USPTO.”  Id.  As further evidence of bad faith registration and use, Respondent was using “the confusingly similar domain names to operate a website that features links to competing financial services websites.”  Id.  The Panel inferred that “Respondent receives click-through fees for diverting Internet users to the competing financial services websites” and determined that “consumers accessing Respondent’s domain names may become confused as to Complainant’s affiliation with the resulting websites.”  Id. 

Finally, on June 27, 2005, the domain name <wachoviaonlinebanking.com> was transferred from Respondent to Wachovia Corporation.  Wachovia Corp. v. Asia Ventures, Inc., FA0505000473245 (NAF 2005).  The Panel found that Respondent was using its confusingly similar domain name to “redirect Internet users to a website featuring pop-up advertisements ...  and a search engine linking viewers to a variety of websites, including sites that involve financial services in direct competition with Complainant’s services.”  Id.  Through this use, stated the Panel, Respondent “unfairly and opportunistically benefit[s] from the goodwill associated with Complainant’s ... mark.”  Id.  

As is evidenced by the decisions above, Respondent rarely responds to the ICANN proceedings brought against it.  Rather, Respondent just moves onto the next victim.  Just as in all the above decisions, Respondent is capitalizing on the goodwill associated with Complainant’s mark by using a confusingly similar Domain Name.  Moreover, Respondent is benefiting financially from bombarding unsuspecting Internet users with pop-up advertisements and then linking the users to the websites of Complainant’s competitors, exactly as it did in Six Continents, Shabby Chic, Nat’l Holistic Instit., San Diego County Credit Union, AstraZeneca, DaimlerChrysler, Citigroup, and WachoviaSee Six Continents, D2003-0659 (WIPO 2003); Shabby Chic, FA0409000335486 (NAF 2004); Nat’l Holistic Instit., FA0503000433854 (NAF 2005); San Diego County Credit Union, FA0503000444402 (NAF 2005); AstraZeneca, D2005-0264 (WIPO 2005); DaimlerChrysler, FA0504000453735 (NAF 2005); Citigroup, FA0504000453926 (NAF 2005); Wachovia, FA0505000473245 (NAF 2005).

This proceeding should be decided like the others since Respondent is a notorious and serial cybersquatter.  The Domain Name was clearly registered in bad faith and should be transferred to Complainant.

 

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Manatt, Phelps & Phillips, LLP, is one of the premier law and consulting firms in the United States, providing legal services in the areas of advertising, antitrust, banking, bankruptcy and financial restructuring, corporate finance and securities and numerous other areas.  Complainant was founded in 1965 by Charles Manatt and Thomas Phelps, and the firm has grown in both size and prestige.  Currently, Complainant has offices in several cities in the United States and in Mexico City, Mexico. 

 

Complainant owns a registration with the United States Patent and Trademark Office (“USPTO”) for the MANATT, PHELPS & PHILLIPS mark (Reg. No. 2,314,575 issued February 1, 2000).  Additionally, Complainant promotes its legal services on its website at the <manatt.com> domain name.

 

Respondent registered the <manattphelps.com> domain name on December 25, 2001.  The disputed domain name resolves to a directory website that displays links to various third-party websites, including some of Complainant’s competitors. 

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

 

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).

 

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

(1)   the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)   Respondent has no rights or legitimate interests in respect of the domain name; and

(3)   the domain name has been registered and is being used in bad faith.

 

Identical and/or Confusingly Similar

 

Through its registration with the USPTO, Complainant has established rights in the MANATT, PHELPS & PHILLIPS mark in association with Policy ¶4(a)(i).  See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption the mark is inherently distinctive.").

 

The <manattphelps.com> domain name incorporates the dominant portion of Complainant’s MANATT, PHELPS & PHILLIPS mark and omits the commas, ampersand, spaces and the name “Phillips.”  The Panel finds these alterations do not render the domain name distinct and the domain name is confusingly similar to the mark in satisfaction of Policy ¶4(a)(i).  See Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000) (finding the domain name <asprey.com> is confusingly similar to the complainant’s ASPREY & GARRARD and MISS ASPREY marks); see also WestJet Air Ctr., Inc. v. W. Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding the <westjets.com> domain name is confusingly similar to the complainant’s mark, where the complainant holds the WEST JET AIR CENTER mark); see also Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Nat. Arb. Forum Apr. 24, 2000) (finding punctuation is not significant in determining the similarity of a domain name and mark).

 

The Panel finds Policy ¶4(a)(i) is established.

 

Rights or Legitimate Interests

 

The initial burden under Policy ¶4(a)(ii) is on Complainant to prove Respondent does not have rights or legitimate interests in the disputed domain name.  Once Complainant has made a prima facie case, the burden then shifts to Respondent to show it has rights or legitimate interests pursuant to the directions provided in Policy ¶4(c).  See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (describing the burden shifting from the complainant to the respondent regarding rights and legitimate interests); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (once the complainant asserts the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence it has rights to or legitimate interests in the domain name at issue”).  The Panel finds Complainant has presented a prima facie case, and the Panel now chooses to consider whether an evaluation of all the evidence demonstrates rights or legitimate interests for Respondent under Policy ¶4(c).

 

Complainant argues Respondent is not commonly known by the <manattphelps.com> domain name and does not have a license or any other permission to use the domain name.  Additionally, the WHOIS information identifies Respondent as “Asia Ventures, Inc.” and lists no other connection to the disputed domain name.  The Panel finds Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶4(c)(ii).  See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’  Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); see also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").

 

Respondent is using the <manattphelps.com> domain name to operate a website that displays links to third-party websites, including some that compete with Complainant.  The Panel does not consider it a bona fide offering of goods or services under Policy ¶4(c)(i) where Respondent is using a confusingly similar version of Complainant’s MANATT, PHELPS & PHILLIPS mark in connection with a website that displays links for the purpose of earning referral fees.  Furthermore, such use for Respondent’s commercial gain does not constitute a legitimate noncommercial or fair use of the domain name under Policy ¶4(c)(iii).  See WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy); see also Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name).

 

The Panel finds Policy ¶4(a)(ii) is established.

 

Registration and Use in Bad Faith

 

Respondent’s use of the confusingly similar <manattphelps.com> domain name to divert Internet users searching for Complainant’s services to Respondent’s directory website demonstrates Respondent’s intent to attract Internet users to its website by creating confusion with Complainant’s MANATT, PHELPS & PHILLIPS mark.  The registration and use of a domain name that is confusingly similar to Complainant’s mark to divert Internet users for Respondent’s commercial gain is evidence of bad faith registration and use under Policy ¶4(b)(iv).  See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding the respondent registered and used the domain name in bad faith pursuant to Policy ¶4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).

 

The Panel finds Policy ¶4(a)(iii) is established.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <manattphelps.com> domain name be TRANSFERRED from Respondent to Complainant.

  

Houston Putnam Lowry, Chartered Arbitrator, Panelist

Dated:  December 29, 2005