DLAPiper.esq: First #UDRP involving a new .ESQ domain name

Google rolled out several new gTLDs recently, including dot .ESQ. The latter is a representation of “Esquire,” a title used by law professionals.

We came across the first UDRP (URS) involving a .esq domain name: DLAPiper.esq. The domain was registered on May 10th and a week later the law firm DLA Piper LLP filed a UDRP (URS) with the ADR Forum.

The Complainant operates from DLAPiper.com and their mark DLA Piper is a coined term that is a registered trademark. The URS procedure allows for a quick resolution of the matter; the Panelist ordered the domain name DLAPiper.esq to be suspended until its expiration date.

Global Name Services LLP v. Digital Privacy Corporation et al.
Claim Number: FA2305002045011

DOMAIN NAME

dlapiper.esq

PARTIES

Complainant: Global Name Services LLP of Wilmington, DE, United States of America

Complainant Representative: DLA Piper LLP (US) Erica Holmes of Washington, DC, United States of America

Respondent: Private Registrant / Digital Privacy Corporation of Vista, CA, US

REGISTRIES and REGISTRARS

Registries: Charleston Road Registry Inc.
Registrars: 101domain, Inc.

EXAMINER

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 Examiner in this proceeding.
Vali Sakellarides, as Examiner

PROCEDURAL HISTORY

Complainant Submitted: May 17, 2023
Commencement: May 18, 2023
Default Date: June 2, 2023
Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the “Rules”).

RELIEF SOUGHT

Complainant requests that the domain name be suspended for the life of the registration.

STANDARD OF REVIEW

Clear and convincing evidence.

FINDINGS and DISCUSSION

Findings of Fact: The Complainant, Global Name Services LLP (“DLA Piper”), is a leading global law firm located in over 40 countries around the world, including the United States and throughout the European Union. In connection therewith, DLA Piper owns numerous trademark registrations for the DLA PIPER marks and logos (collectively, the “Marks”). US trademark registrations No. 3,214,009 “DLA PIPER”, 3,244,658 “DLA PIPER (fig.)”, 3,961,520 “DLA PIPER (fig.)” have been submitted as evidence. Since 2006, DLA Piper has prominently used the Mark in connection with high quality legal, consulting, and advisory services. Throughout years of use, the Marks have become well and favorably known throughout the United States, the European Union, and internationally. The Marks have been promoted among the purchasing public throughout the United States and internationally on an extensive and frequent basis through a variety of media, including audio, video, printed publications, worldwide campaigns, event sponsorships, speaking engagements, conferences, cultural events and the like. The Marks are easily recognizable to the public as originating from Complainant. As a result, the Marks and the goodwill associated therewith are of inestimable value to Complainant. By virtue of the wide renown of the Marks, and the wide geographic availability and extensive sale of Complainant’s services, the Marks have become highly distinctive in the minds of the purchasing public. Complainant operates its official Internet web site at www.dlapiper.com (“Complainant’s Site”), evidence of use of which has been submitted. Consumers can access information about Complainant’s offerings obtain information about Complaint’s lawyers, including its partners, pay legal bills, access prestigious legal content, and contact attorneys and other officers of Complainant via Complainant’ Site. Thus, Complainant’s Site is a vital and integral part of Complaint’s business. Complainant has established worldwide rights in its well-known DLA PIPER name and the Marks. The domain name dlapiper.esq (the “Domain Name”) is entirely comprised of Complainant’s registered DLA PIPER mark followed by the top-level domain “.esq”. The use of the TLD .esq is likely to aggravate the likelihood of confusion because it is a known abbreviation for “esquire,” a title typically used by individuals authorized to practice law and would therefore be a logical place for Complaint’s website. Complainant has no business relationship whatsoever with Respondent and the website dlapiper.esq is not an active site. Complainant has not licensed or otherwise permitted Respondent to use the Marks or to apply for any Domain Name incorporating the Marks. Moreover, because Complainant owns exclusive rights in the Marks, and has numerous United States and international registrations therefor, Respondent cannot establish legitimate rights in the Domain Name. Moreover, Complainant’s DLA PIPER mark is a coined name and therefore Respondent’s registration of the Domain Name wholly incorporating it could not have been a coincidence or done for any legitimate purpose as Complainant has not authorized it. By creating confusion through its registration and use of a domain name wholly comprised of the DLA Piper Marks, Respondent is attempting to disrupt the business of a competitor, which is evidence of bad faith registration.

 

Even though the Respondent has defaulted, URS Procedure 1.2.6, requires Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended.

[URS 1.2.6.1] The registered domain name(s) is/are identical or confusingly similar to a word mark:
(i) for which the Complainant holds a valid national or regional registration and that is in current use; or
(ii) that has been validated through court proceedings; or
(iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.

Determined: Finding for Complainant

[URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name.

Determined: Finding for Complainant

[URS 1.2.6.3] The domain name(s) was/were registered and is being used in bad faith.
a. Registrant has registered or 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 documented out-of pocket costs directly related to the domain name; or
b. Registrant has registered the domain name in order to prevent the trademark holder or service mark from reflecting the mark in a corresponding domain name, provided that Registrant has engaged in a pattern of such conduct; or
c. Registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or
d. By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant’s web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Registrant’s web site or location or of a product or service on that web site or location.

Determined: Finding for Complainant

FINDING OF ABUSE or MATERIAL FALSEHOOD

The Examiner may find that the Complaint was brought in an abuse of this proceeding or that it contained material falsehoods.

The Examiner finds as follows:

The Complaint was neither abusive nor contained material falsehoods.

DETERMINATION

After reviewing the parties submissions, the Examiner determines that the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain name(s) be SUSPENDED for the duration of the registration:

dlapiper.esq

Vali Sakellarides
Examiner
Dated: June 4, 2023

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