MavenLawfirm.com: Two law firms go at it over Maven brand

Two law firms, one in Florida and another in California, engaged in a UDRP over the domain MavenLawFirm.com.

The Complainant, MAVEN IP , PA, is a law firm that provides legal services regarding intellectual property and is located in Florida. They hold trademark rights to the mark MAVEN.

On the other hand, the Respondent is located in California, providing legal services related to immigration and criminal law among others.

The sole panelist at the Forum (NAF) delivered a decision favoring the Complainant, on the following basis:

Although Respondent contends that it has built a reputation, created a unique logo, invested into promoting immigration services, and established good will under the domain name www.mavenlawfirm.com, and further claims that the at-issue domain name has been used to register with government organizations, attorney directories, establish email communications with existing client-base and marketing efforts, Respondent fails to proffer evidence showing that it has valid trademark rights in the at-issue domain name. Notably, Respondent does not claim to have registered the MAVEN of MAVEN LAW FIRM with any national trademark registry, nor does Respondent offer evidence that might support a finding that Respondent has common law rights in MAVEN or MAVEN LAW FIRM.

It’s interesting to note that the Respondent does seem to maintain a valid, extensive, and positive presence online, as witnessed by their Yelp page.

Final decision: Grant transfer of the domain MavenLawfirm.com to the Complainant.

MAVEN IP , PA v. Yan Gold

Claim Number: FA2112001975661

PARTIES

Complainant is MAVEN IP , PA (“Complainant”), represented by Janet C. Moreira of MAVEN IP, Florida, USA. Respondent is Yan Gold (“Respondent”), California, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <mavenlawfirm.com>, registered with GoDaddy.com, LLC.

PANEL

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

Paul M. DeCicco, as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on December 3, 2021; the Forum received payment on December 3, 2021.

On December 6, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <mavenlawfirm.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On December 8, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 28, 2021 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@mavenlawfirm.com. Also on December 8, 2021, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

A timely Response was received and determined to be complete on December 13, 2021.

 

On December 20, 2021, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco as Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the 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” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant contends as follows:

 

Complainant, MAVEN IP, PA, provides legal services regarding intellectual property.

 

Complainant has rights in the MAVEN mark based upon registration with the United States Patent and Trademark Office (“USPTO”) .

The <mavenlawfirm.com> domain name is confusingly similar to Complainant’s mark because Respondent has incorporated the entire mark and added the generic phrase “law firm” and the “.com” generic top level domain (“gTLD”), none of which creates a sufficient distinction.

 

Respondent does not have rights or legitimate interests in the <mavenlawfirm.com> domain name because Respondent is not commonly known by the at-issue domain name and is not authorized to use Complainant’s MAVEN mark. Additionally, Respondent fails to use the at-issue domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent attempts to pass itself off as affiliated with Complainant.

Respondent has registered and uses the <mavenlawfirm.com> domain name in bad faith because Respondent uses the domain name as an attraction for commercial gain.

B. Respondent

Respondent contends as follows:

 

The <mavenlawfirm.com> domain name is not confusingly similar to Complainant’s MAVEN mark.

The at-issue domain name uses the word “law firm” while Complainant’s domain name uses the abbreviation “IP” for “intellectual property,” putting internet users on alert that the two are not affiliated. That Respondent is located in California and Complainant is located in Florida should also alert internet users to the difference between Respondent and Complainant.

Respondent uses the <mavenlawfirm.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses the name to advertise its legal services, communicate with clients, and generally handle matters related to conducting its legitimate business.

Respondent did not register the <mavenlawfirm.com> domain name in bad faith because it did not register the name to disrupt Complainant’s business, but rather to offer its own distinct legal services.

FINDINGS

Complainant has rights in the MAVEN mark.

Complainant’s rights in MAVEN accrued prior to Respondent’s registration of the at-issue domain name.

Respondent is not authorized to use Complainant’s trademarks.

Respondent’s at-issue domain name addresses a website that appears to offer legal services.

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.”

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

The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.

 

Complainant’s ownership of a USPTO trademark registration for its MAVEN mark establishes Complainant’s rights in such mark for the purposes of Policy ¶ 4 (a)(I). See Recreational Equipment, Inc. v. Liu Chan Yuan, FA 2107001954773 (Forum Aug. 9, 2021) (“Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i)”).

The at-issue domain name consists of Complainant’s MAVEN trademark followed by the descriptive term “law firm” with all followed by the top level domain name “.com.” The differences between <mavenlawfirm.com> and Complainant’s MAVEN trademark are insufficient to distinguish the domain name from Complainant’s trademark for the purposes of the Policy. Respondent’s argument that the addition of the descriptive term “law firm” distinguishes Respondent’s domain name from Complainant’s trademark is unavailing since the term “law firm” unambiguously suggestive of Complainant and the scope of its MAVEN trademark. The inclusion of the “law firm” term in Respondent’s domain thus makes the domain name more confusing as it suggests Complainant’s type of business entity. Therefore, the Panel finds pursuant to Policy ¶ 4(a)(i) that Respondent’s <mavenlawfirm.com> domain name is confusingly similar to Complainant’s MAVEN trademark. See MTD Products Inc. v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”).

Rights or Legitimate Interests

Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of the at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006).

Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”).

The WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Yan Gold” and the record contains no corroborating evidence tending to prove that Respondent is commonly known by either the <mavenlawfirm.com> domain name or by MAVEN. In fact, Respondent makes no claim that it is generally known by the domain name. The Panel therefore concludes that Respondent is not commonly known by the <mavenlawfirm.com> domain name for the purposes of Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name);

Although Respondent contends that it has built a reputation, created a unique logo, invested into promoting immigration services, and established good will under the domain name www.mavenlawfirm.com, and further claims that the at-issue domain name has been used to register with government organizations, attorney directories, establish email communications with existing client-base and marketing efforts, Respondent fails to proffer evidence showing that it has valid trademark rights in the at-issue domain name. Notably, Respondent does not claim to have registered the MAVEN of MAVEN LAW FIRM with any national trademark registry, nor does Respondent offer evidence that might support a finding that Respondent has common law rights in MAVEN or MAVEN LAW FIRM. Likewise, Respondent does not attempt to explain how using the trademark of another in a domain name as Respondent does here, equates to either a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).

Here, Respondent registered and uses the confusingly similar <mavenlawfirm.com> domain name to address a website that relates to legal services. The at-issue trademark laden domain name and its website are likely to attract internet users who mistakenly believe that the domain name and website are sponsored by, or affiliated with, Complainant when they are not. Respondent’s use of the <mavenlawfirm.com> domain name to offer services competing with or even services unrelated to Complainant establishes neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See H-D U.S.A., LLC v. Yoshihiro Nakazawa, FA 1736477 (Forum July 21, 2017) (“A complainant can use assertions of passing off and offering competing goods or services to evince a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use.”).

Given the forgoing, Complainant satisfies its initial burden. Without Respondent’s proffer of evidence sufficient to rebut Complainant’s prima facie case against Respondent’s rights and legitimate interests, Complainant conclusively demonstrates Respondent’s lack of rights and lack of legitimate interests in respect of the at-issue domain name under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

As discussed below without limitation, bad faith circumstances are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.

First as mentioned above, Respondent uses the at-issue confusingly similar domain name to address a website that purports to offers legal services. Internet users looking for Complainant’s <mavenlawfirm.com> branded legal services may inadvertently find Respondent’s <mavenlawfirm.com> website, via a search engine result; by attempting to guess Complainant’s domain name; or otherwise. Markedly, accidental visitors to the <mavenlawfirm.com> website may be satisfied with what they find and discontinue their search for Complainant’s legal services. Alternatively, they may find the offerings at <mavenlawfirm.com> not to their liking and look elsewhere while believing they had reached Complainant’s official website. Respondent’s use of the at-issue domain name to offer services similar, or even unrelated, to services offered by Complainant under its MAVEN mark shows bad faith attraction for financial gain and as such is evidence of bad faith per Policy ¶ 4(b)(iv). See Sandhills Publishing Company v. sudeep banerjee / b3net.com, Inc., FA 1674572 (Forum June 17, 2016) (finding that the respondent took advantage of the confusing similarity between the <machinerytraderparts.com> domain name and the complainant’s MACHINERY TRADER mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also CAN Financial Corporation v. William Thomson / CNA Insurance, FA1401001541484 (Forum Feb. 28, 2014) (finding that the respondent had engaged in bad faith under Policy ¶ 4(b)(iv), by using a confusingly similar domain name to attract Internet users to its own website where it sold competing insurance services).

Additionally, the Panel finds that Complainant had trademark rights in MAVEN prior to Respondent’s reregistering <mavenlawfirm.com>. Complainant applied for MAVEN’s registration in 2013. Respondent alleges in its USPTO filings and through its declaration in the instant case that its MAVEN mark was first used in commerce shortly after the USPTO trademark application was filled in 2013. Respondent registered <mavenlawfirm.com> in 2014. Whether or not Respondent was aware of Complainant’s MAVEN trademark at the time it first registered <mavenlawfirm.com>, Respondent nevertheless used the confusingly similar domain name to host a website offering services similar to those services offered by Complainant. Respondent continued to use the at-issue domain name long after learning of Complainant’s claim of trademark rights in MAVEN and Respondent was ostensibly aware of Complainant’s trademark when it renewed <mavenlawfirm.com>’s domain name registration. See E-Printwerx International LLC v. LARRY ORGAN / EXACTDATA LLC, FA2010001916470 (Forum 11/16/2020) (“The abusive refreshing of the original registration is an act which [Panels] consider[] should be an act of a kind encompassed by paragraph 4(a)(iii) of the Policy.”). Indeed, Complainant expressly informed Respondent on multiple occasions since June 2015, of Complainant’s MAVEN trademark rights and of Respondent’s improper use of such mark via the <mavenlawfirm.com> domain name. Respondent’s renewed registration and use of the confusingly similar domain name with knowledge of Complainant’s rights therein further indicates Respondent’s bad faith registration and use of <mavenlawfirm.com> pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant’s mark when registering the disputed domain name); see also, Univision Comm’cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent’s contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant’s rights in the UNIVISION mark when registering the disputed domain name).

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 <mavenlawfirm.com> domain name be TRANSFERRED from Respondent to Complainant.

Paul M. DeCicco, Panelist

Dated: December 21, 2021

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Comments

2 Responses to “MavenLawfirm.com: Two law firms go at it over Maven brand”
  1. Scott says:

    This type of adjudication seems to be outside the scope of the UDRP’s mission to decide cases of egregious trademark abuse.

    Here, the respondent was running an actual business, verified by its inclusion is various online sources, and not directly competing with the Complainant.

    When the facts are nuanced as they are in this case, perhaps the Panelist should just punt and say sorry folks it is not in my jurisdiction to decide a business dispute.

  2. DomainGang says:

    Scott – In my non-expert opinion, the ruling addressed the superiority of the Complainant’s mark as opposed to no such explicit claim to a relevant mark by the Respondent. As crazy as it sounds, a lawyer representing themselves is not always the best method to respond to a UDRP.

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