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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Latham & Watkins LLP v. Neovert

Case No. D2007-1205

1. The Parties

The Complainant is Latham & Watkins LLP, Los Angeles, California, United States of America, represented by Latham & Watkins, United States of America.

The Respondent is Neovert, St. John’s, Antigua and Barbuda.

2. The Domain Name and Registrar

The disputed domain name <lathamwatkins.com> is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 14, 2007. On August 20, 2007, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On August 20, 2007, eNom 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”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 22, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was September 11, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 12, 2007.

The Center appointed Ross Carson as the sole panelist in this matter on September 20, 2007. 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

Complainant founded in 1934 is a full-service international law firm with more than 1,900 attorneys in more than 24 offices around the world. Complainant has built internationally recognized practices in a number of transactional and litigation areas. Complainant is the registered owner of United States Trademark Registration Number 2413795 registered January 1, 2000, for the trademark LATHAM & WATKINS registered in relation to the services of “providing information in the field of law via a website on global computer networks; and legal services,” first used in commerce in 1934. Complainant is also the owner of Community Trademark Number 003658523, registered January 9, 2005, for the trademark LATHAM & WATKINS registered in International Classes 16, 35, 36, 41, and 42 including legal services.

Complainant has also registered numerous domain names and operates the following websites incorporating all or part of Complainants LATHAM & WATKINS trademark to promote its legal services: <lathamandwatkins.com>; <lathamandwatkins.co.uk>; <lathamandwatkins.be>; <lathamandwatkins.cn>; <lathamandwatkins.fr>; <lathamwatkins.fr>: <lathamwatkins.be>; <lathamwatkins.cn>; <lathamwatkins.de>; <lathamwatkins.es>; <lathamwatkins.eu>; <latham.cn>; <latham.eu>; <latham.fr>; and <lw.com>.

A. Complainant

A.1 Identical or Confusingly Similar

Complainant submits that Complainant’s trademark LATHAM & WATKINS and the domain name in dispute differ only by the deletion of the ampersand and the addition of the “.com” gTLD. The omission of the ampersand, a character that cannot be included in a domain name is not significant in determining confusing similarity. See Bang & Olufsen a/s v. Unasi Inc., WIPO Case No. D2005-0728 (“The “&” sign (ampersand) cannot be included in a domain name registration”). It is also “well established that the specific top level of a domain name does not affect the domain name for the purpose of determining whether it is identical or confusingly similar”. See F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451 (citing Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429).

A.2 No Rights or Legitimate Interests in respect of the Domain Name

Complainant submits that Respondent has no connection or affiliation with Complainant and has not received any license or consent, express or implied, to use the LATHAM & WATKINS trademark in a domain name or in any other manner. Complainant does not sponsor or endorse Respondents’ usage of the LATHAM & WATKINS trademark in connection with the domain name in dispute.

Complainant further submits that Respondent has registered a domain name that consists almost entirely of_. Complainant’s famous LATHAM & WATKINS trademark omitting only that portion of the trademark which cannot be included in a domain name. This evidences a clear effort on the part of Respondent to fool the public into thinking that Respondent’s website accessed through the domain name in dispute is connected to, affiliated with, and sponsored by Complainant. Complainant submits that as another Panel noted, picking a domain name that is almost an exact duplicate of a famous and distinctive trademark is “not one traders would legitimately choose unless seeking to create an impression of an association with the Complainant.” Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

Complainant further submits that Respondent’s registration and use of the LATHAM & WATKINS trademark in the domain name in dispute has proven to be intended for commercial gain because Respondent has misleadingly diverted consumers to competitive legal services websites. Such use also tarnishes Complainant’s trademark through its promotion of unauthorized Internet products, services and content. Therefore, Respondent cannot claim to be making a legitimate non-commercial or fair use of the Complainant’s mark. See Policy, para. 4(c)(iii).

A.3 Registered and Used in Bad Faith

Complainant submits that Respondent knew of and sought to capitalize from the fame and value of the LATHAM & WATKINS trademark and the high volume traffic generated by the trademark when it registered the domain name in dispute. As of the date of this Complaint, the domain name in dispute resolves to a page containing links to Complainant’s direct competitors. Respondent was clearly aware of Complainant at the time it registered the domain name in dispute, as evidenced by the fact that Respondent’s website included at least one link to Complainant’s website as well as numerous links to many of Complainant’s direct competitors. Such “[u]se for a portal linking to websites of the Complainant’s competitors is not a bona fide offering, but rather one which seeks to profit from confusion with the Complainant..”. See Humana Inc. v. Domain Deluxe, WIPO Case No. D2005-0231 (citing Caesars Entertainment, Inc. v. Infomax, Ltd., WIPO Case No. D2005-0032).

Complainant further submits that as noted by a previous WIPO panel, “registering domain names incorporating the trademarks of others is an indication of bad faith under the UDRP, Policy paragraph 4(b)(ii).” Societe Air France v. Virtual Dates, Inc., WIPO Case No. D2005-0168; see also Volkswagen AG v. Milas Auto, WIPO Case No. DTV2006-0003 (finding bad faith registration and use and awarding transfer where “the Respondent knew or ought to have known of the Complainant’s trademarks and legitimate business interests in the name VOLKSWAGEN when it acquired the domain name <www.volkswagen.tv>” and noting that “the choice of <volkswagen.tv> as a domain name cannot be coincidental.”). Here, Respondent’s registration and use of the domain name in dispute constitutes bad faith under both sub-paragraphs (ii) and (iv) of paragraph 4 of the Policy.

Complainant further submits that use of the domain name in dispute by Respondent also amounts to use of the domain name in dispute to intentionally attract, for commercial gain, Internet users to Respondent’s website and other commercial on-line locations by creating a clear likelihood of confusion with Complainant’s LATHAM & WATKINS trademark as to the source, sponsorship, affiliation, and endorsement of Respondent’s website at the domain name in dispute and products and services offered at Respondent’s website and other locations. See Policy, paragraph 4(b)(4).

Complainant further submits that Respondent is using the domain name in dispute for the purpose of creating confusion among Internet users who are looking for Complainant’s well-respected LATHAM & WATKINS legal services to reap commercial gain by using “pay-per-click” programs that pay a commission to Respondent each time a confused user clicks on a targeted advertising link, including advertisements for competing legal services. Respondent’s use of the domain name in dispute to cause confusion for its own profit constitutes bad faith under Section 4(b) of the Policy. See e.g., RX America, LLC. v. Matthew Smith, WIPO Case No. D2005-0540; Bellsouth Intellectual Property Corporation v. Netsolutions Proxy Services, WIPO Case No. D2005-0169.

B. Respondent

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

6. Discussion and Findings

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”.

Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(2) the 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.

The fact that the Respondent did not submit a Response does not automatically result in a decision in favor of the Complainant. The failure of the Respondent to file a Response results in the Panel drawing certain inferences from the Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences following there from in the Complaint as true. Charles Jourdan Holding, AG v. AAIM, WIPO Case No. D2000-0403.

A. Identical or Confusingly Similar

Pursuant to paragraph 4(a)(i) of the Policy Complainant must establish rights in a trademark and secondly prove that the domain name in dispute is confusingly similar to the trademark in which Complainant has rights.

Complainant is the owner of registrations in the United States of America and the European Community for the trademark LATHAM & WATKINS registered in association with the provision of legal services and providing information in the field of law via a website on global computer networks. Complainant’s trademark for LATHAM & WATKINS has been in use in the United States of America since 1934. Complainant, founded in 1934, is a full-service international law firm with more than 1,900 attorneys in more than 24 offices around the world. Complainant has built internationally recognized practices in a number of transactional and litigation areas. The domain name in dispute incorporates the whole of Complainant’s registered LATHAM & WATKINS trademark except for the deletion of the ampersand and the addition of the .com gTLD. The omission of the ampersand - a character that cannot be included in a domain name is not significant in determining confusing similarity. See Bang & Olufsen a/s v. Unasi Inc., WIPO Case No. D2005-0728. The addition of a generic top-level domain name such as “.org”, “.net”, or “.com” is irrelevant when determining whether a disputed domain name is confusingly similar to a protected mark. See, e.g., Aous Uweyda v. Abdallah Sheet, NAF Case No. FA165119 (Aug. 1, 2003).

Numerous UDRP panels have held that a domain name is confusingly similar to a trademark when the domain name incorporates the mark in its entirety. See, e.g., Am. Online, Inc., v. aolgirlsgonewild.com, NAF Case No. FA0207000117319 (Sept. 19, 2002) (noting that “aolgirlsgonewild” incorporated complainant’s “entire mark” and implied “an affiliation that simply does not exist”).

The Panel finds that Complainant has proven that the domain name in dispute is confusingly similar to the Complainant’s registered and common law trademarks.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the Policy, Complainant must prove that Respondent has no rights or legitimate interests in respect of the domain name.

On the material before the Panel Respondent has not used the trademark LATHAM & WATKINS or any variation thereof in association with any bona fide goods or services offered by Respondent.

The Respondent is not affiliated with Complainant and has never been authorized by Complainant to use Complainant’s trademarks or any trademarks confusingly similar thereto. The domain name in dispute is used by Respondent for a website which advertises links for lawyers, law firms including Complainant as well as popular categories and favorite categories including travel, business, finance, etc. The use of the domain name in dispute to divert Internet traffic to Respondent’s websites associated with the domain name in dispute is not a legitimate use of the domain name in dispute. Respondent did not file any evidence to demonstrate Respondents rights or legitimate interests in the domain name in dispute as it was entitled to do pursuant to paragraph 4(c) of the Policy.

Complainant has used its registered trademark LATHAM & WATKINS in association with legal services since as early as 1934 in the United States of America and such adoption and use substantially precedes the registration date of the domain name in dispute in 2005. The fact that Respondent’s webpage associated with the domain name in dispute includes links to lawyers, law firms, and Complainant supports the inference that Respondent had notice of Complainant’s trademark at the time when it registered the domain name in dispute; (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.)

The Panel finds that Complainant has proven that Respondent does not have any rights or legitimate interests in the domain name in dispute.

C. Registered and Used in Bad Faith

Pursuant to paragraph 4(a)(iii) of the Policy Complainant must prove that the domain name in dispute has been registered and used in bad faith.

Having regard to Complainant’s long standing and extensive use and registrations in the United States of America and the European Community of the trademark LATHAM & WATKINS registered and used in relation to the provision of legal services and no evidence of bona fide use of such trademark by Respondent in association with any goods or services, the Panel infers that Respondent registered the domain name in dispute with knowledge of Complainant’s widely used trademark. The fact that Respondent’s webpage associated with the domain name in dispute includes links to lawyers, law firms, and Complainant supports the inference that Respondent had notice of Complainant’s trademark at the time when it registered the domain name in dispute; (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.)

The registration of a domain name identical or confusingly similar to well-known trademarks by a person with no connection to that trademark amounts to “opportunistic bad faith” (see Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137).

In registering and using the domain name in dispute, Respondent has intentionally attempted to attract for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of Respondent’s website. The domain name in dispute resolves to webpages that provide links to lawyers and law firms including Complainant’s law firm. The links on the website have the appearance of pay-per-click advertising links. The use of a well-known trademark as a domain name to link to pay-per-click advertising website is a persuasive indication that the Respondent deliberately seeks to capitalize on the identity or close similarity of the domain name in dispute to Complainant’s trademark and to gain revenue there from (see Alta Vista Company v. Andrew Krotov, WIPO Case No. D2000-1091; MatchNet pk v. MAC Trading, WIPO Case No. D2000-0205). Use of a disputed domain name in connection with a “pay-per-click” website has been consistently held to be plain evidence of bad faith:

“[T]he Respondent registered the domain name and is operating a website for the purposes of monetary gain by providing links to sites of other companies, some of which are direct competitors of the Complainant, in the form of a “pay-per-click” site. The Respondent is using its confusingly similar domain name to trade on the goodwill of the Complainant and to disrupt the business of the Complainant. In similar circumstances, Panels have consistently recognized that the registration of domain names which are confusingly similar to complainant’s trademarks, and which are then used to operate “pay-per-click” sites, will be considered to be evidence of bad faith.”

Educational Testing Service (ETS) v International Names Ltd., WIPO Case No. D2007-0449.

The Panel finds that Complainant has proven that Respondent registered and used the domain name in dispute in bad faith as set out in paragraph 4(b)(iv) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <lathamwatkins.com> be transferred to the Complainant.

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Ross Carson
Sole Panelist

Dated: October 3, 2007