WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Debevoise & Plimpton LLP v. Marketing Total S.A.
Case No. D2007-0451
1. The Parties
The Complainant is Debevoise & Plimpton LLP, New York, New York, United States of America, represented by Debevoise & Plimpton, United States of America.
The Respondent is Marketing Total S.A., Charlestown, West Indies, Saint Kitts and Nevis.
2. The Domain Name and Registrar
The disputed domain name <devevoise.com> is registered with DomainDoorman, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 23, 2007. On March 26, 2007, the Center transmitted by email to DomainDoorman, LLC a request for registrar verification in connection with the domain name at issue. On March 27, 2007, DomainDoorman, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. 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 April 3, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was April 23, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 24, 2007.
The Center appointed Anthony R. Connerty as the sole panelist in this matter on May 8, 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
4.1 The Complainant
In its Complaint, the Complainant set out background information which is supported by evidence in the various Exhibits to that Complaint:
(1) The Complainant is a registered limited liability partnership, duly organised and existing under the laws of the State of New York, and is the sole and exclusive owner of a number of federally-registered trademarks in the United States of America. These include DEBEVOISE and DEBEVOISE & PLIMPTON. The Complainant owns various other trademark registrations in other countries in the European Community, Hong Kong SAR of China, Japan, the Russian Federation, and the Republic of Korea.
(2) The Complainant has an active presence on the Internet, and its principal domain name currently registered and used is <debevoise.com>. That domain name was registered on June 13, 1996 with Network Solutions LLC.
(3) The Respondent registered the disputed domain name <devevoise.com> on November 12, 2006.
4.2 The Respondent
The Respondent did not file a Response.
5. Parties’ Contentions
The Complainant’s case is that it is an internationally-renowned law firm, with a comprehensive practice spanning corporate, litigation, tax, real estate, and trusts and estates law. The firm was founded in October, 1931. Initially known as Debevoise, Stevenson & Plimpton, the firm name was institutionalised as Debevoise & Plimpton in 1981. Throughout the period the firm has been known by the name “Debevoise”.
For more than 75 years it has provided the highest quality legal services to clients all over the world. It has 630 lawyers in offices in New York, Washington, Paris, London, Frankfurt, Hong Kong, Moscow and Shanghai.
The Complainant was ranked as the number one law firm in the United States in 2004, 2005, and 2006 by The American Lawyer Magazine, and is consistently ranked as one of the top United States law firms by that magazine in its annual “AM Law 100” rankings.
The Complainant has handled “some of the most important cases and transactions of the last century”. Some of these involved multi-billion dollar sums. The Complainant exhibited documentation illustrating those cases, and documentation illustrating the “voluminous press and media coverage Debevoise has received as a result of its prominent position in the legal services field.”
The DEBEVOISE trademark is well known throughout the international legal and business community and is “amongst Debevoise’s most valuable assets”.
By reason of its reputation it has built up an extensive and unsolicited media coverage with the result that its DEBEVOISE trademark has come to be recognised and relied upon “by the trade and the public as identifying Debevoise as a source of premier law services, and as distinguishing Debevoise from others and the services of others.”
The Complainant’s further arguments are referred to in Section 6 below.
The Complainant requests that the Panel issue a decision that the contested domain name <devevoise.com> be transferred to the Complainant.
As stated earlier, the Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
In considering those three matters a Panel, by virtue of Rule 14(b) of the Rules, is entitled to draw such inferences as it considers appropriate from the failure by a Respondent to respond to a Complaint. However, the Complainant must establish each of the three elements required by Paragraph 4(a) of the Policy: the Complainant must prove its case.
A. Identical or Confusingly Similar
The Complainant contends that there can be no doubt that the Respondent was aware of the Complainant’s rights in the DEBEVOISE mark at the time the disputed domain name was registered: the disputed domain name is identical to the DEBEVOISE mark with one letter altered, and the Respondent’s website lists “Related Categories” which include “Debevoise Law” and “Debevoise Plimpton Law Firm”.
The disputed domain name is therefore confusingly similar to its DEBEVOISE trademark: the addition of “.com” is of no legal significance (the .com is incapable of amounting to a distinguishing feature since the use of the top level designation is required in any domain name registration), and the relevant comparison is therefore between “devevoise” and the DEBEVOISE mark.
The Complainant points out that the disputed domain name differs by one letter only, and the letter “v” is adjacent to “b” on the “querty” keyboard.”
The Panel has no difficulty in finding that the disputed domain name <devevoise.com> is confusingly similar to the DEBEVOISE trademark. The Panel therefore finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant points out that the Respondent registered the disputed domain name more than 75 years after Debevoise was founded, more than a decade after Debevoise registered its domain name <debevoise.com>, and more than three years after it had registered the DEBEVOISE mark.
Further, the Complainant states that there is no relationship or affiliation between the Complainant and the Respondent which could give rise to any license or permission to use the Complainant’s mark; nor can the Respondent rely upon any of the three circumstances in paragraph 4(c) as demonstrating rights or legitimate interests.
The Respondent has offered no evidence or argument to counter the Complainant’s case, and the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The third matter which the Complainant must prove is the bad faith requirement of paragraph 4(a)(iii): registration and use in bad faith. Each element must be proved.
Paragraph 4(b) of the Policy contains a non-exclusive list of four circumstances any which, if found by the Panel to be present, shall be evidence of such registration and use.
The Complainant contends that the Respondent “is a serial cybersquatter who regularly uses domain names that are well-known trademarks or misspellings of well-known trademarks as landing pages to misdirect Internet users to third-party websites.” In support the Complainant lists a number of WIPO and NAF cases in which the Respondent has been found to have acted in bad faith and has been required to transfer the disputed domain names.
In an attempt to hide the extent of its cyber squatting, the Complainant says that the Respondent has “squatted other domain names using aliases. Debevoise is aware of at least two aliases regularly used by the Respondent….All three of these entities are listed as having the identical postal address.” Again, the Complainant lists a number of WIPO and NAF decisions where those other entities - Domain Drop S.A. and Keyword Marketing, Inc. - were respondents in proceedings based on cybersquatted domain names: in all nearly 20 WIPO and NAF cases are listed.
The Complainant says that an Internet user who mistakenly types in “devevoise.com” when looking for the Debevoise website arrives at a landing page which under “Sponsored Links” redirects to other New York law firms: “Respondent’s website thus acts purely as a click-through site, with Respondent collecting revenue each time an individual clicks on one of the sponsored links.”
The Complainant contends that what the Respondent is engaged in is typo squatting- a form of cybersquatting in which a respondent registers and uses a domain name in order to take advantage of typographical errors made by Internet users seeking the complainant’s commercial website. The Complainant supports its case by arguing that “Devevoise” is a common mistyping of the DEBEVOISE mark.
The Complainant relies upon the provisions of paragraph 4(b)(ii) and (iv).
As to paragraph 4(b)(ii), the Complainant contends that the Respondent “is taking advantage of Debevoise’s famous mark and preventing Debevoise from reflecting a common typographical error version of its mark in corresponding domain names. Such behaviour is in line with Respondent’s pattern of conduct; Respondent has repeatedly registered domain names based on third-party marks and established landing pages that expressly trade on the third party marks.”
Paragraph 4(b)(iv) refers to the circumstances where a Respondent, by using the disputed domain name, has “intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.”
In reliance upon those provisions the Complainant says that the evidence which it has put forward shows that the Respondent is a typosquatter who “registered and used the Domain Name in order to misdirect Internet users seeking the Debevoise’s website… On information and belief, Respondent derives a financial benefit through its misdirection of Internet users to its Domain Name: Respondent receives click-through revenues from the third parties whose websites are linked to Respondent’s website.”
The Respondent has not sought to counter the Complainant’s case. On the extensive record of this case, the Panel is satisfied that the Complainant has proved the bad faith requirements of paragraph 4(a)(iii) of the Policy both in relation to registration and in relation to use.
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 <devevoise.com> be transferred to the Complainant.
Anthony R. Connerty
Date: May 22, 2007