WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Freshfields Bruckhaus Deringer LLP, Freshfields International Limited v. Eric Rabkin

Case No. D2010-1870

1. The Parties

The Complainants are Freshfields Bruckhaus Deringer LLP and Freshfields International Limited of London, United Kingdom of Great Britain and Northern Ireland, represented by Courtney Stuart-Alban, United States of America.

The Respondent is Eric Rabkin of Thornhill, Ontario, Canada, appearing pro se.

2. The Domain Names and Registrar

The disputed domain names <freshfieldsarbitration.com> and <freshfieldsarbitrations.com> are registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 4, 2010. On November 4, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On November 5, 2010, GoDaddy.com, Inc. transmitted by email to the Center its verification response, confirming that:

(a) the disputed domain names are registered with it;

(b) the Respondent is listed as the registrant;

(d) the disputed domain name <freshfieldsarbitration.com> was created on May 16, 2010;

(e) the disputed domain names were registered to the Respondent on September 16, 2010; and

(f) English is the language of the registration agreement used for the disputed domain names.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 November 8, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 28, 2010. The Response was filed with the Center on November 28, 2010 (EST) / November 29, 2010 (CET).

The Center appointed Warwick A. Rothnie as the sole panelist in this matter on December 10, 2010. 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

The first Complainant claims to be one of the oldest and largest law firms in the world, tracing its origins back to 1743. The second Complainant holds the trademarks used in the first Complainant’s business.

The first Complainant provides comprehensive legal services to national and transnational corporations, financial institutions and governments throughout Europe, the Middle East, Asia and the United States of America (USA), employing over 2,500 lawyers worldwide in 27 key business centers around the world. In the 2009/2010 financial year, its worldwide gross revenue exceeded GBP 1 billion, the sixth highest revenue of any law firm in the world that year.

Awards the first Complainant has won recently include “M&A team of the year” (British Legal Awards 2008); “Germany law firm of the year” and “UK law firm of the year” (Chambers Europe Awards for Excellence 2009), “Most innovative law firm” (Financial Times Innovative Lawyers Awards 2009), “Global law firm of the year” (Who’s Who Legal Awards 2009), “Law firm of the year” (The Lawyer Awards 2008) and “International law firm of the year” (PLC Which Lawyer? Awards 2008). It has also been appointed as the official legal services provider for the London 2012 Olympics and Paralympics.

The first Complainant has a substantial group practicing in the field of arbitration. Amongst other things, it has been named Commercial Arbitration Law Firm of the Year in the Who’s Who Legal Awards for 2010 and the 5 preceding years. It was ranked first by Global Arbitration Review in its 2010 “GAR 30” and “GAR Thirty” tables. It was also ranked first in American Lawyer’s 2009 Arbitration Scorecard. The first Complainant’s employees have produced “The Freshfields Guide to Arbitration and ADR”, published by Kluwer since 1999.

From the materials submitted in the Complaint, it appears that the first Complainant operates under the Masthead “Freshfields Bruckhaus Deringer” although it uses and is very frequently referred to just as “Freshfields”.

The second Complainant owns trademark registrations for FRESHFIELDS in the USA (Nos. 1451466 and 3556330), the CTM (No. 205310), Canada (No. 336697), the United Kingdom of Great Britain and Northern Ireland (UK) (Nos. B1540614, B1540616 and B1540617), Switzerland, Singapore, Japan, Indonesia, Hong Kong, SAR of China, France and Australia and, in Chinese characters, the People’s Republic of China. These trademarks mainly date from the 1980s and the 1990s and cover a range of services in International Classes 35, 36 and 42 and/or 45. The Second Complainant also owns registered trademarks for FRESHFIELDS BRUCKHAUS DERINGER as a CTM, in Hong Kong, and the UK.

The Respondent states that he has owned the disputed domain names since their creation in May 2010. Until recently, they were held through the Domains By Proxy service.

When the Complainants first discovered the disputed domain names in August 2010, the disputed domain names resolved or redirected to the website at “www.icsidlawyers.com”, the website of ICSID Lawyers – The International Centre for the Settlement of Investment Disputes. The website identifies the Respondent as its “Staff”.

After the Complainants sent a letter of demand to the Respondent about the use of the disputed domain names, the Respondent without any admissions “parked” the domain names pending resolution of the dispute. As shown in Exhibit V to the Complaint, the parking page features click-through-advertisements for various providers of legal services, but not the first Complainant.

The parties also engaged in a fairly extensive correspondence which, for the most part, it is not necessary to summarise as the Respondent’s Response substantially canvasses the arguments he made in defence of his registrations at that time.

5. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainants have the burden of proof in respect of the following three elements:

(i) The disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) The disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

There are two parts to this inquiry: the Complainants must demonstrate that they have rights in a trademark and, if so, the disputed domain names must be shown to be identical or confusingly similar to the trademark.

The second Complainant has proved ownership of the registered trademarks for FRESHFIELDS referred to in section 4 above. On the evidence in this proceeding, the Panel would also be prepared to find that the first Complainant would have sufficient reputation and goodwill in FRESHFIELDS to have rights at common law in that term as an unregistered trademark.

The disputed domain names differ from the Complainants’ trademarks by (1) the addition of the gTLD “.com” and (2) the addition of the word “arbitration” or “arbitrations”.

The addition of the gTLD can be disregarded for the purposes of this inquiry as it is a functional requirement of the domain name system. See for example, Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046; Ticketmaster Corporation v. DiscoverNet, Inc., WIPO Case No. D2001-0252; Microsoft Corporation v. J. Holiday Co., WIPO Case No. D2000-1493.

The term “arbitration” or “arbitrations” is a plain English word describing a type of dispute resolution. The addition of either of these descriptive terms to the term FRESHFIELDS in which the Complainants have proven rights does not dispel the risk of confusion. See e.g., America Online, Inc., v. Yeteck Communication, Inc. WIPO Case No. D2001-0055 (<aolcasino.com>, <aolsportsbet.com> and <aolsportsbet.net>). If anything, it reinforces the risk of confusion as the field of arbitrations is a field in which the first Complainant has a particular reputation.

The Respondent contends that the disputed domain names are not confusingly similar to these trademarks on a variety of grounds. First, he points to the registration of FRESHFIELDS BRUCKHAUS DERINGER in some countries as showing that the disputed domain names do not always contain the entirety of the Complainants’ trademarks. He also argues that the second Complainant’s registered trademarks are registered in only one class, leaving 44 of the International classes “open”. Thirdly, he contends that as “arbitration” and “arbitrations” are common English words the Complainants cannot have rights in them.

The Respondent’s argument based on the registration of FRESHFIELDS BRUCKHAUS DERINGER overlooks the rights to the trademark FRESHFIELDS alone that the Complainants have proved. The argument based on the number of classes covered by the second Complainant’s trademarks is factually wrong. It also overlooks the scope of protection conferred by registered trademarks against “similar” goods or services and, in some case, dissimilar goods or services.

The Respondent’s arguments based on the descriptive nature of the word “arbitration” or “arbitrations” ignores the fact that neither of those words comprise the whole of the disputed domain names. Both of the disputed domain names contain the term FRESHFIELDS, the term for which the Complainants have proven trademark rights.

Fundamentally, the Respondent’s arguments misunderstand the nature of the inquiry under the Policy. Under the Policy, the question of resemblance for the purposes of the Policy requires a comparison of the disputed domain names to the trademark rights which have been proved. This is a different test to that involved in trademark law where questions of the goods or services covered by the trademark rights can be relevant to the likelihood of confusion: see for example Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin, WIPO Case No. D2002-0420. The question of the scope of the Complainant’s trademark rights may of course be relevant to the issues under paragraphs 4(a)(ii) and 4(a)(iii).

On the approach applicable under the Policy, therefore, the Panel finds that both disputed domain names are confusingly similar to the Complainants’ proven trademarks.

B. Rights or Legitimate Interests

The second requirement that the Complainants must prove is that the Respondent has no rights or legitimate interests in the disputed domain names.

A respondent may have rights or legitimate interests for the purposes of the Policy in the circumstances set in paragraph 4(c) of the Policy:

“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

These are examples only and not an exhaustive enumeration of the ways in which rights or legitimate interests can be shown.

The Complainants bear the overall burden of establishing this requirement. In view of the difficulties inherent in proving a negative and because the relevant information is often in the possession of the Respondent only, however, it will be sufficient for the Complainants to establish a prima facie case which, if not rebutted by credible evidence from the Respondent will lead to this ground being established. See e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.1.

Neither of the disputed domain names is derived from the Respondent’s name or the trading style adopted by his firm, ICSID Lawyers.

The Complainants also state that they have not licensed or authorized the Respondent to use the term FRESHFIELDS. Nor is the Respondent an affiliate of, or otherwise connected or associated with, either or both of the Complainants.

Thirdly, before the Complainants sent their first letter of demand to the Respondent, the disputed domain names resolved to a website promoting the Respondent’s own international investment arbitration law firm. The use of the disputed domain names to promote the services of a business competing in the same field as the Complainants and directly covered in numerous countries by the second Complainant’s registered trademarks, but which are not authorized by the Complainants, has been repeatedly rejected as a use in connection with a bona fide offering of goods or services for the purposes of paragraph 4(c)(i) of the Policy.

In these circumstances, the Complainants have established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names.

The Respondent’s central contention is that he has a perfect right to use the disputed domain names in any way which does not infringe the Complainants’ trademarks and, so the Panel infers, the Respondent has rights or legitimate interests to use the domain names in any way he likes provided he does not infringe the Complainants’ rights. The Respondent then provides an assurance that he will never use the disputed domain names in a way that does infringe the Complainants’ trademarks.

The Panel does not dispute the broad proposition for which the Respondent contends. The problem is it does not assist the Respondent in this case. First, the Respondent is not using the disputed domain names in connection with bottled water or leather handbags or other products wholly unrelated to the Complainants’ field of activity. From the outset, he used the disputed domain names in the field covered by the Complainants’ trademarks and specifically targeted legal services connected with international arbitration in which the first Complainant has a particular reputation.

In this connection, it is important to note that the terms of paragraph 4(c)(i) focus not on any activity the Respondent could conceivably have engaged in. Rather, they focus on what activity the Respondent has actually engaged in or demonstrated he is preparing to engage in.

Likewise, the Respondent’s contention that he never will use the disputed domain names in a way that infringes the Complainants’ trademarks belies the way he has in fact used them. The fact that he has altered the way he uses the disputed domain names after receiving a letter of demand from the Complainants does not help him. First, paragraph 4(c)(i) of the Policy requires the use relied on to have been engaged in before notice of the Complainants’ claims. Secondly, as discussed below, the use of the parking page which contains click-through links to the providers of legal services who are not associated in any way with the Complainants is equally not bona fide use in terms of the Policy.

Accordingly, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain names.

The Policy does not prohibit the operation of a website which contains a series of links through to advertisers of goods and services or the registration of a domain name to operate such a website. What the Policy does prohibit is the registration and use of a domain name which is confusingly similar to someone else’s trademark rights with the intention of trading on the reputation or goodwill of that trademark. Such use is not bona fide in terms of the Policy. See e.g., Edmunds.com, Inc. v. Ult. Search Inc. WIPO Case No. D2001-1319 and Volvo Trademark Holding AB v. Unasi, Inc. WIPO Case No. D2005-0556.

C. Registered and Used in Bad Faith

The third requirement that the Complainants must demonstrate to succeed is that the disputed domain names have been registered and used in bad faith. In connection with this factor, paragraph 4(b) of the Policy provides:

“b.Evidence of Registration and Use in Bad Faith. For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i)circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or

(ii)you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii)you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv)by using the domain name, you have 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.”

Under this requirement, the Complainants must show that the disputed domain names have both been registered and used in bad faith. It is not sufficient for them to show only that they have been registered in bad faith or are being used in bad faith.

A conclusion of registration and use in bad faith does not necessarily follow from a finding that the Respondent did not have rights or legitimate interests in the disputed domain names. The two requirements are logically discrete inquiries. Although they are separate inquiries, they may overlap and considerations under one head may inform considerations under the other. Thus, for example, there may be an overlap between the circumstances leading to a rejection of a claim that a respondent is using a domain name in connection with a bona fide offering of goods and services (paragraph 4(c)(i) of the Policy) and the circumstances contemplated by paragraph 4(b)(iv) of the Policy.

In this case, the Complainants contend that the Respondent “knew or should have known” of their trademarks and that the obvious conclusion is that he registered the disputed domain names to take advantage of their significance as trademarks or to disrupt the Complainants’ business or to profit from the eventual sale of the disputed domain names.

The Panel is not prepared to make a finding of registration and use in bad faith on the basis of constructive knowledge. The Policy is concerned with the interaction of trademark rights and the registration and use of domain names. The trademark rights might arise anywhere throughout the world. Similarly, domain names may be registered and used by people anywhere in the world. For example, a person in Canada who registers a domain name may do so using a registrar based in Canada, the USA or in many other countries. Regardless of whom they use as the registrar, a website which the domain name resolves to may be accessed by users from anywhere in the world. The Policy was borne from the recognition of the international nature of the potential conflicts and the perceived deficiencies in seeking to resolve the conflicts when they arise using purely national or otherwise limited regional laws. The laws of some jurisdictions may adopt a policy of constructive notice of registration of a trademark. That is by no means a universally accepted position. Having regard to the international context in which the Policy operates, therefore, the Panel considers that it would be inappropriate to apply a doctrine of constructive notice under the Policy where that is not universally or predominantly the case under national law. Moreover, there is no particular reason why a registrant located in one country should be presumed to have knowledge of trademark rights arising in a completely different country, all the more so bearing in mind that more than 100 countries participate in the international intellectual property system.

There are, however, a number of factors in this case from which the Panel infers that the Respondent did in fact have actual knowledge of the Complainants trademarks, or at least that the Complainants had trademark rights in the term FRESHFIELDS.

First, there is the extent of the Complainants’ use and reputation in the trademark FRESHFIELDS in many countries. Secondly, the Respondent is himself a lawyer and professes to practise in the field of international arbitration. Thirdly, his curriculum vitae states that he is admitted to practice, amongst other places, in the UK where the first Complainant has over 200 years of providing legal services. Fourthly, as the Complainants contend, the term “freshfield” or “freshfields” is not descriptive of legal services or services in connection with arbitrations. They are not terms naturally suggested by or for use with arbitrations or arbitration related services. The terms have significance in connection with arbitration services only because of the Complainants use of and reputation in the term “freshfields” in connection with the legal services the first Complainant provides and its business in connection with arbitrations in particular. Finally, the Respondent does not expressly deny knowledge of the Complainants or their trademarks (although, having regard to the other factors mentioned) such a denial in the circumstances would strain credibility).

As the Complainants contend there is no obvious explanation for the inclusion of the term “freshfields” in the disputed domain names which, by their descriptive component (“arbitration” or “arbitrations”), plainly flag an intention to operate in connection with arbitrations. Moreover, that is in fact what the Respondent did use the disputed domain names for before receiving the Complainants’ letter of demand.

in the circumstances, the inference is plainly open that the Respondent adopted the term “freshfields” as the distinguishing component of the disputed domain names to take advantage of its significance as the Complainants’ trademark.

The Respondent essentially defends the Complaint on this ground by reliance on the “parked” status of the disputed domain names and argues that, as a result, they are not being used in bad faith. He says the Complainants have not proved any damage resulting from this conduct. More fundamentally, he argues that he has no control over the advertisements displayed on the “parked” pages as these are arranged by Go Daddy.com, Inc., the concerned registrar.

The Panel is by no means convinced that a change in the manner of use after the Respondent had received notice of the dispute with the Complainants would be sufficient to sterilize the Complainants’ objections. If that were the case, the Policy could be rendered largely nugatory.

It is not necessary to reach a concluded view on that point in this case, however, because the use of the disputed domain names to generate click-through revenues from “parked pages” constitutes use in bad faith.

First, it seems highly likely that the Respondent has opted to “park” the disputed domain names in this way. Godaddy.com, Inc., the Registrar of the disputed domain names in this case, gives registrants a number of options for “parking” pages. So for example a registrant is given at least 2 options:¹

5. In the Automatically park newly registered domains area, select one of the following:

Yes

Parks any new domain registrations on CashParking.

Does not park new domain registrations on CashParking.

The Respondent does not identify whether or not the disputed domain names are parked using the CashParking service. The material does evidence an essential truth, however: the Respondent does not have to choose “parking” which generates these types of click-through advertisements.

In any event, as the learned three member panel explained in Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267 at paragraph 6.28:

“6.28 The Respondent contends that the advertisements in this case were ‘generated by the parking company’. The implication is that the Respondent was not responsible for the content of these advertisements. This may well be correct but in the Panel’s view this makes no difference. The Respondent placed the Domain Name with a parking company in circumstances where it would have been aware that those using the Domain Name were likely to have mistyped the Complainant’s name. It would have been aware that the “parking company” website would generate advertisements of some sort and given the similarity of the Domain Name to the Complainant’s name, it should have been of no surprise to the Respondent that links to prescription and pharmaceutical website would be generated.”

The same could be said in this case in respect of use of the disputed domain names in respect of legal services and arbitration services.

The Respondent also does not identify whether or not he receives any revenue from the “parking” of the disputed domain names. As with the nature of the “parking” arrangement, the Respondent should have addressed all these matters since he is advancing these matters in justification of his conduct. Even if he does not directly derive revenues himself, the use is still use in bad faith. Thus, the learned Panel in the Express Scripts case stated at paragraph 6.29:

“6.29 The Complainant also contends that the Respondent is ‘presumably compensate[d]’ by the operators of the sponsored websites for this traffic. The Respondent does not deny this and given the manner in which ‘parking companies’ generally operate, the Panel is prepared to accept on this occasion that this assertion is correct. However, even if it were not correct, it would not matter. The requirements of paragraph 4(b)(iv) do not require the owner of the domain name to be the entity that commercially gains from the diversion (see for example, V&S Vin&Sprit AB v. Corinne Ducos, WIPO Case No. D2003-0301; PepsiCo, Inc. v. Ali Khan, WIPO Case No. D2004-0292; and V&S Vin&Sprit AB (publ) v. Paul Stephey, WIPO Case No. D2005-0992).”

The Panel does not consider that the Complainants’ recognition that the nature of the Respondent’s use of the disputed domain names changed after receipt of the letter of demand to the “parked” pages constitutes acquiescence in his conduct disentitling them to relief under the Policy. Simply, it was not acquiescence at all, particularly bearing in mind the very short lapse of time between the change in the nature of use and the bringing of the Complaint. Nor can the Respondent point to any reliance on his part on the Complainants’ recognition of the change. He had already made the change before the Complainants’ “recognized” it and all the Complainants have done is seek to address in advance a purported defence that the Respondent has in fact sought to rely on — that the “parked” page is not use in bad faith.

Finally, the Respondent contends that the Complainants should have accepted his offer of an undertaking not to use the disputed domain names in infringement of their rights instead of bringing the Complaint. This is said to be “bullying” and “oppressive”. The Complainants, however, were perfectly entitled to exercise their rights under the Policy all the more so as the Respondent’s own actions and “parking” of the pages in the way described were wholly at odds with the Respondent’s claim that he was not infringing, and would not infringe, their rights.

For these reasons, the Panel finds that the disputed domain names have both been registered and are being used in bad faith.

6. 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 names <freshfieldsarbitration.com> and <freshfieldsarbitrations.com> be transferred to the second Complainant.

Warwick A. Rothnie
Sole Panelist
Dated: December 22, 2010

¹ http://community.godaddy.com/help/article/2581