World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Mills & Reeve LLP v. John Jay Colins

Case No. D2011-1504

1. The Parties

1.1 The Complainant is Mills & Reeve LLP, London, United Kingdom of Great Britain and Northern Ireland, (the “Complainant”) represented by Kevin Calder, United Kingdom of Great Britain and Northern Ireland.

1.2 The Respondent is John Jay Colins, London, United Kingdom of Great Britain and Northern Ireland (the “Respondent”).

2. The Domain Name and Registrar

2.1 The disputed domain name <millsandreeve.com> (the “disputed Domain Name”) is registered with eNom, Inc. (the “Registrar”).

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 7, 2011. On September 7, 2011, the Center transmitted by email to eNom Inc., the Registrar, a request for registrar verification in connection with the disputed Domain Name. On September 7, 2011 the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

3.2 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”).

3.3 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 September 13, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 3, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 11, 2011.

3.4 The Center appointed Ike Ehiribe as the sole panelist in this matter on October 20, 2011. 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 this proceeding is Mills & Reeve LLP a limited liability partnership registered in England under company number […] with its registered office in the United Kingdom of Great Britain and Northern Ireland (the United Kingdom or the “UK”). The Complainant is the registered proprietor in the United Kingdom of registered trade mark no.2354464 for MILLS & REEVE registered in the UK trade marks registry since January 27, 2004. The said trademark is registered in classes 16, 35, 36 and 42. The Complainant is an English firm of solicitors with offices in Birmingham, Cambridge, Leeds, London, Manchester and Norwich and provides legal services within the United Kingdom and internationally under the name “Mills & Reeve” since 1989. The Complainant is listed as one of the fifty largest law firms in the United Kingdom and acts for businesses in the United Kingdom and around the world, organizations listed on the FTSE Index and the Alternative Investment Market (AIM) of the London Stock Exchange. The Complainant has therefore acquired substantial reputation and goodwill in the United Kingdom and internationally under the trade mark MILLS & REEVE with respect to the provision of legal services.

4.2 The Respondent in this proceeding is located in the United Kingdom and according to the WhoIs database, the disputed Domain Name was registered on August 4, 2011.

5. Parties’ Contentions

A. Complainant

5.1 The Complainant, a registered limited liability partnership of solicitors, with offices in Birmingham, Cambridge, Leeds, London, Manchester and Norwich is the owner of the trade mark MILLS & REEVE registered in the United Kingdom trade mark registry since January 27, 2004 as evidenced by the registration certificate attached to this complaint. The Complainant has acquired substantial reputation and goodwill in the United Kingdom and internationally under the trade mark MILLS & REEVE with respect to the provision of legal services, including but not limited to probate matters. The Complainant it is stated has 71 lawyers ranked as leading individuals in the Chambers United Kingdom legal directory.

5.2 The Complainant submits that the disputed Domain Name <millsandreeve.com> is identical to the Complainant’s registered trade mark MILLS & REEVE and has been used by the Respondent in relation to services identical to services for which the Complainant’s trademark is registered in classes 36 and 42 such as; financial advice relating to trusts, inheritance and wills, legal advice and legal services. The Complainant states that the disputed Domain Name has been used in the URL of the website of “www.millsandreeve.com” to advertise legal services using the Complainant’s logo MILLS & REEVE. The disputed Domain Name, it is said has been further used on unsolicited letters posted from the United Kingdom to persons in the United States; and in unsolicited emails sent from an email address incorporating the disputed Domain Name. Further and in the alternative, the Complainant submits that the disputed Domain Name is confusingly similar to the Complainant’s registered trade mark and therefore, there exists the likelihood of confusion on the part of the public which includes the likelihood of association with the Complainant’s trade mark. In these circumstances, the Complainant asserts that the use of the disputed Domain Name by the Respondent in the United Kingdom as stated above constitutes an infringement of the Complainant’s registered trademark.

5.3 Furthermore, the Complainant asserts that in view of the substantial goodwill and reputation acquired in the United Kingdom for the provision of legal services the Respondent’s use of the disputed Domain Name is likely to cause confusion in the minds of the public that the website “www.millsandreeve.com” is associated, operated or connected with the Complainant. Therefore such confusion is likely to cause substantial damage to the reputation and goodwill of the Complainant.

5.4 The Complainant states that there is no genuine law firm in the United Kingdom other than the Complainant operating under the name of “MILLS & REEVE” or “Mills & Reeve”. The Complainant contends therefore, that the Respondent has no rights or legitimate interests in respect of the disputed Domain Name as the Respondent has not been authorized by the Complainant to register or use the disputed Domain Name. The Complainant states the Respondent is not an employee or partner of the Complainant, neither is the person named “Peter Hammond” the individual who purportedly sent letters and emails displaying the Complainant’s logo to persons in the United States. Equally, it is stated that the Respondent’s website, the unsolicited letters and emails on which the disputed Domain Name is used by the Respondent have no connection with the Complainant. The Complainant asserts that as the disputed Domain Name appears to have been used for fraudulent purposes, the disputed Domain Name cannot be said to have been used in connection with a bona fide offering of goods or services and is being used intentionally to misleadingly divert consumers for commercial gain.

5.5 With regards to registration and use in bad faith, the Complainant submits that as the Respondent appears to be using the disputed Domain Name for fraudulent purposes, it is clear that the disputed Domain Name was registered primarily for the purpose of disrupting the business of the Complainant. The Complainant further submits that the disputed Domain Name has been intentionally used to attract for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark as to the source affiliation, or endorsement of the website and the services advertised on the Respondent’s website. Finally, the Complainant states that the Respondent has been using the disputed Domain Name to tarnish the Complainant’s registered trade mark, MILLS & REEVE.

B. Respondent

5.7 The Respondent did not reply to the Complainant’s contentions and is in default. Therefore in accordance with paragraphs 14(a) and (b) of the Rules, the Panel shall draw such inferences as it considers appropriate from the Respondent’s default.

6. Discussion and Findings

6.1 Under paragraph 4(a) of the Policy, to succeed in these administrative proceedings the Complainant must prove: (i) that the disputed Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed Domain Name; and (iii) that the disputed Domain Name has been registered and is being used in bad faith.

6.2 As expressly stated in the Policy, the Complainant must establish the existence of each of these three elements in these proceedings.

A. Identical or Confusingly Similar

6.3 The Panel finds from the uncontroverted facts as presented by the Complainant that the disputed Domain Name, namely <millsandreeve.com> is confusingly similar or identical to the Complainant’s MILLS&REEVE trade mark owned exclusively by the Complainant. It is overwhelmingly obvious that the disputed Domain Name wholly incorporates the Complainant’s registered trademark and name. The Panel finds that the mere addition of the word “and” and the suffix “com” does not in any way sufficiently distinguish the disputed Domain Name from the Complainant’s trademark and does not prevent the likelihood of confusion between the Comlainant’s trademark and the disputed Domain Name in the minds of Internet visitors or indeed potential clients of the Complainant.

6.4 In addition to the finding in paragraph 6.3 above (which entails an objective comparison between the Complainant’s trademark and the disputed Domain Name), as regards the confusingly similar and identical nature of the disputed Domain Name, the Panel has taken into account the fact that recipients of unsolicited letters and emails from the Respondent in the United States contacted the Complainant in the United Kingdom to ascertain whether such emails and letters were authored by solicitors working with, or in the offices of the Complainant. On the same issue, the Panel has also viewed and considered a printout of the Respondent’s website at “www.millsandreeve.com” which contains the disputed Domain Name in the URL and whereat the Respondent purports to advertise legal services using the Complainant’s “MILLS & REEVE” logo.

6.5 The Panel draws support for its finding from a number of earlier UDRP cases. The first case is PepsiCo, Inc. v. Amilcar Perez Lista d/b/a Cybersor, WIPO Case No. D2003-0174 where the domain names <pepsix.com> and <pepsixx.com> were held to be confusingly similar to the complainant’s “PEPSI” trademark despite the addition of the letters “x” and “xxx” and the suffix “com”. The second case involving a well known Malaysian law firm is the decision in Skrine v. Skrine & Ors, WIPO Case No. D2000-1105 where the domain name <skrine.com> was found to be confusingly similar and identical to the trade name or service mark of Skrine, one of the largest law firms in Malaysia.

6.6 Accordingly, the Panel is satisfied that the Complainant has established the disputed Domain Name to be confusingly similar to the Complainant’s MILLS&REEVE trade mark in accordance with paragraph 4(a) of the UDRP Policy.

B. Rights or Legitimate Interests

6.7 The Panel equally finds that the Respondent has failed to provide any concrete evidence of circumstances required to establish that there exists any rights or legitimate interests in the disputed Domain Name within the ambit of paragraph 4(c) of the Policy. As the Complainant asserts, neither the Respondent nor the purported authors of the unsolicited letters and emails from the Respondent to persons in the United States are employees or partners of the Complainant. From the unchallenged evidence provided by the Complainant, the Panel is satisfied that there is no evidence of any legitimate relationship between the Respondent and the Complainant or evidence of consent or any license issued to the Respondent to register and use the disputed Domain Name; therefore the Respondent has failed to establish a bona fide offering of goods and services contrary to paragraph 4(c)(i) of the Policy.

6.8 Furthermore, the Panel is satisfied that as the Respondent has knowingly registered the disputed Domain Name with the sole intention of misleading Internet visitors and the Complainant’s potential clients by creating a likelihood of confusion with the Complainant’s trademark as to source, affiliation or endorsement of the Respondent’s website and of the services purportedly advertised on the said website, such usage by the Respondent cannot be said to constitute a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed Domain Name. See generally, Oki Data Americas Inc. v. ASD Inc., WIPO Case No. D2001-0903.

6.9 Accordingly, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed Domain Name in accordance with paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

6.10 In relation to the question of bad faith registration and use, the Panel finds the Respondent undoubtedly registered the disputed Domain Name in bad faith and has continued to engage in bad faith use. In arriving at this conclusion, the Panel has considered carefully a number of irrefutable factors in this proceeding. Firstly, the Panel finds that the Respondent, who is located in the United Kingdom, must have likely known or ought to have known of the Complainant’s exclusive rights in the MILLS & REEVE trade mark registered since January 27, 2004 at the United Kingdom trade mark registry. Secondly, the Panel finds that the Respondent deliberately and with the intention to perpetrate bad faith use of the Complainant’s trade mark decided to register the disputed Domain Name on August 4, 2011. Therefore, the Panel finds the Respondent may have likely known of the Complainant’s established rights which in this case supports a finding of bad faith registration. See in this regard GOOGLE, Inc. v. Abercrombie1, NAF Claim No.0111000101579 where the panel held that for a well known trademark such as GOOGLE, constructive notice is sufficient to fix the Respondent with notice or knowledge of the existing trade mark. Thirdly and in any event, the unchallenged evidence shows that the Respondent has purportedly advertised legal services similar to those offered by the Complainant on the website containing the disputed Domain Name and in furtherance of those services the Respondent has generated unsolicited emails and letters addressed to persons based in the United States displaying the Complainant’s protected service mark and logo. Accordingly, the Panel finds that the Respondent registered the disputed Domain Name plainly for commercial gain or illegal monetary advantage to be derived from impersonating the Complainant or deceiving the public into believing that the Respondent is part of the Complainant’s firm or acts with the authority or approval of the Complainant. The Panel finds that this conduct definitely amounts to continued bad faith use. Fourthly, as indicated at paragraph 5.7 above, the Panel has drawn adverse inferences from the Respondent’s failure or refusal to challenge the incriminating evidence and submissions provided by the Complainant in this proceeding.

7. Decision

7.1 For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed Domain Name <millsandreeve.com> be transferred to the Complainant forthwith.

Ike Ehiribe
Sole Panelist
Dated: November 3, 2011

 

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