WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Wragge & Co LLP v. Domain Drop S.A.
Case No. D2007-1286
1. The Parties
Complainant is Wragge & Co LLP, United Kingdom of Great Britain and Northern Ireland, represented by Cerryg Jones, United Kingdom of Great Britain and Northern Ireland.
Respondent is Domain Drop S.A., Saint Kitts and Nevis.
2. The Domain Name and Registrar
The disputed domain name <wragges.com> is registered with BelgiumDomains, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 29, 2007. On September 3, 2007, the Center transmitted by email to BelgiumDomains, LLC a request for registrar verification in connection with the domain name at issue. On September 4, 2007, BelgiumDomains, LLC transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on September 13, 2007. The Center verified that the Complaint together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on September 19, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was October 9, 2007. The Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 10, 2007.
The Center appointed Sandra J. Franklin as the sole panelist in this matter on October 18, 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 WRAGGE & CO. is a well known provider of legal services to clients throughout the world, with offices in the United Kingdom, Belgium and Hong Kong. Complainant has been providing legal services under the mark WRAGGE & CO. since 1834, and holds a European Certificate of Registration of the mark issued by the Office for Harmonization in the Internal Market. In addition, Complainant conducts business at <wragge.com>. Complainant also submitted evidence that the firm is commonly known in the legal community, on the Internet and in print as “Wragges”.
5. Parties’ Contentions
A. Complainant makes the following contentions:
1. Respondent’s <wragges.com> domain name is confusingly similar to Complainant’s WRAGGE & CO. mark.
2. Respondent does not have any rights or legitimate interests in the <wragges.com> domain name.
3. Respondent registered and used the <wragges.com> domain name in bad faith.
B. 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.”
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 of fact 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 factual allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Management, Inc. v. webnet-marketing, inc., NAF Case No. FA 95095 (holding that 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. Michael Robertson, WIPO Case No. D2000-0009 (“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.
A. Identical or Confusingly Similar
The Panel finds that Complainant’s long-standing use and registration of the mark WRAGGE & CO. establish rights in the mark pursuant to Policy paragraph 4(a)(i). See Vivendi Universal Games and Davidson & Associates v. XBNetVentures Inc., NAF Case No. FA 198803 (“Complainant’s federal trademark registrations establish Complainant’s rights in the BLIZZARD mark.”).
Respondent’s <wragges.com> domain name contains the dominant portion of Complainant’s mark WRAGGE & CO. in its entirety and simply adds the letter “s” along with “.com”, which is not enough to distinguish the domain name from Complainant’s mark. Therefore, the Panel concludes that Respondent’s <wragges.com> domain name is confusingly similar to Complainant’s WRAGGE & CO. mark pursuant to Policy paragraph 4(a)(i). See National Geographic Society v. Stoneybrook Investments LTD., NAF Case No. FA 96263 (finding that the domain name <nationalgeographics.com> was confusingly similar to the complainant’s NATIONAL GEOGRAPHIC mark); see also Cream Pie Club v. Brittany Halford, NAF Case No. FA 95235 (finding that “the addition of an ‘s’ to the end of the complainant’s mark, ‘Cream Pie’ does not prevent the likelihood of confusion caused by the use of the remaining identical mark. The domain name <creampies.com> is similar in sound, appearance, and connotation”); see also Isleworth Land Company v. Lost in Space, SA, NAF Case No. FA 117330 (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
The Panel finds that Policy paragraph 4(a)(i) has been satisfied.
B. Rights or Legitimate Interests
Under Policy ¶ 4(a)(ii), a complainant has the initial burden of proving that respondent lacks rights and legitimate interests in the disputed domain names. However, previous panels have established that once a Complainant makes a prima facie case, the burden then shifts to respondent to show that it does have rights or legitimate interests in the disputed domain names. The Panel finds that in this case Complainant has established a prima facie case under the Policy. See Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624 (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Clerical Medical Investment Group Limited v. Clericalmedical.com, WIPO Case No. D2000-1228 (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent’s failure to respond to the case made in the Complaint allows the Panel to presume that Respondent lacks rights and legitimate interests in the disputed domain names. See American Express Company v. Fang Suhendro, FA 129120 (“[B]ased on Respondent’s failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Desotec N.V. v. Jacobi Carbons AB, WIPO Case No. D2000-1398 (finding that failing to respond allows a presumption that the complainant’s factual allegations are true unless clearly contradicted by the evidence). The Panel will now examine the record to determine if Respondent has rights or legitimate interests under Policy paragraph 4(c).
There is nothing in the record to suggest that Respondent is commonly known by the name “wragges” or “wragge”, including Respondent’s WHOIS information. Also, Complainant has not authorized or licensed Respondent to use its WRAGGE & CO. mark. Thus, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name under Policy paragraph 4(c)(ii). See America West Airlines, Inc. v. Ilyoup Paik, FA 206396 (“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 Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403 (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
Respondent is using the disputed domain name to redirect Internet users to websites that offer services which compete with Complainant’s services. The Panel presumes that Respondent profits when Internet users visit these websites. Such use is neither a bona fide offering of goods or services under Policy paragraph 4(c)(i) nor a legitimate noncommercial or fair use under Policy paragraph 4(c)(iii), and is further evidence of Respondent’s lack of rights and legitimate interests in the disputed domain names. See Golden Bear International, Inc. v. Kangdeock-Ho, FA 190644 (“Respondent’s use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant’s business does not represent 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).”); see also MSNBC Cable, LLC v. Tysys.com, WIPO Case No. D2000-1204 (finding no rights or legitimate interests in the famous MSNBC mark where the respondent attempted to profit using the complainant’s mark by redirecting Internet traffic to its own website).
The Panel finds that Policy paragraph 4(a)(ii) has been satisfied.
C. Registered and Used in Bad Faith
As Respondent is using the <wragges.com> domain names to offer services which compete with Complainant’s services, the Panel finds that this constitutes a disruption of Complainant’s business. Such disruption indicates that Respondent registered and is using the disputed domain names in bad faith pursuant to Policy paragraph 4(b)(iii). See EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (finding that the minor degree of variation from the complainant’s marks suggests that the respondent, the complainant’s competitor, registered the names primarily for the purpose of disrupting the complainant’s business); see also NAF Case No. Caterpillar Inc. v. Stephen R. Vine, FA 97097 (“Respondent registered each of the disputed domain names in order to gain customers and to disrupt Complainant’s business of authorizing dealers to sell its CATERPILLAR equipment.”).
The Panel assumes that Respondent benefits commercially when Internet users visit the websites located at the disputed domain names. Respondent is thus capitalizing on the likelihood that Internet users, presumably seeking Complainant’s business, will be confused as to Complainant’s affiliation with the disputed domain names. The Panel finds that this is further evidence of Respondent’s bad faith registration and use under Policy paragraph 4(b)(iv). See Amazon.com, Inc. v. Ed Shafir, NAF Case No. FA 196119 (“As Respondent is using the domain name at issue in direct competition with Complainant, and giving the impression of being affiliated with or sponsored by Complainant, this circumstance qualifies as bad faith registration and use of the domain name pursuant to Policy paragraph 4(b)(iv).”); see also Kmart of Michigan, Inc. v. Azra Khan, FA 127708 (finding that if respondent profits from its diversionary use of complainant’s mark when the domain name resolves to commercial websites and respondent fails to contest the complaint, it may be concluded that respondent is using the domain name in bad faith pursuant to Policy paragraph 4(b)(iv)).
The Panel finds that Policy paragraph 4(a)(iii) has been satisfied.
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 <wragges.com> be transferred to Complainant.
Sandra J. Franklin
Dated: November 1, 2007