WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Penningtons Manches Cooper LLP v. John Owens
Case No. D2021-4014
1. The Parties
The Complainant is Penningtons Manches Cooper LLP, United Kingdom (or “UK”), represented by Penningtons Manches Cooper LLP, United Kingdom.
The Respondent is John Owens, United States of America.
2. The Domain Name and Registrar
The disputed domain name <pennlngtonslaw.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 1, 2021. On December 1, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 3, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 3, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on December 3, 2021.
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” 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 7, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 27, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 29, 2021.
The Center appointed John Swinson as the sole panelist in this matter on January 11, 2022. 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 Complainant is a United Kingdom law firm, that has been being using “Pennington” as part of its law firm name since the mid-1800s.
The Complainant has UK offices in the cities of London, Basingstoke, Birmingham, Cambridge, Guildford, Oxford, and Reading and overseas offices in Singapore, Piraeus, Paris, Madrid, and São Paulo.
The Complainant owns a number of registered trademarks, including UK Registration No. UK00002413229 for PENNINGTONS registered on September 1, 2006.
The primary domain name used by the Complainant is <penningtonslaw.com>.
The disputed domain name was registered on October 15, 2021.
At the time of preparation of the Complainant, the disputed domain name resolved to a website promoting a computer operating system known as CentOS.
At the present time, the website at the disputed domain name is inactive.
5. Parties’ Contentions
A. Complainant
In summary, the Complainant made the following submissions:
The Complainant owns the registered trademark referred to in Section 4 above.
The Complainant is a renowned leading UK and international law firm. The Complainant has over 130 partners and over 880 people in total working across a range of legal sectors.
The disputed domain name is confusingly similar to the Complainant’s trademark.
The disputed domain name incorporates the Complainant’s trademark in its entirety, except for one letter. The difference between the “I” and “l” is one that the average user may overlook.
It appears that the purpose of the Respondent registering the disputed domain name is illegitimate.
The Respondent does not appear to be using a name corresponding to the disputed domain in connection with a bona fide offering of goods or services.
The Respondent did not respond to a demand letter from the Complainant.
The Complainant’s trademark is inherently distinctive. There are few businesses with similar names. It is likely that the Respondent knew of the Complainant because of its reputation in its name and registered the disputed domain name in bad faith to take advantage of this reputation.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The onus of proving these elements is on the Complainant, even where the Respondent does not file a formal response.
Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.
A. Identical or Confusingly Similar
The first element of the Policy requires the Complainant to prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
As stated above in Section 4, the Complainant owns a registered trademark for PENNINGTONS.
This is a clear case of typosquatting.
The disputed domain name includes the Complainant’s trademark PENNINGTONS in its entirety, but with the letter “i” replaced by the letter “l”, and the addition of the word “law” at the end. These changes do not avoid a finding of confusing similarity between the disputed domain name and the Complainant’s PENNINGTONS trademark under the Policy.
Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trademark for purposes of the Policy when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name. See, for example, Consumer Reports, Inc. v. Wu Yan, Common Results, Inc., WIPO Case No. D2017-0371; Captain Fin Co. LLC v. Private Registration, NameBrightPrivacy.com / Adam Grunwerg, WIPO Case No. D2021-3279.
Further, the replacement of the letter “i” by the letter “l” is a typical typosquatting tactic. This is especially the case here because the Complainant’s primary domain name is identical to the disputed domain name apart from this one-letter substitution.
The domain name in question is typically found to be confusing similarly to the trademark where there is typosquatting. Deutsche Bank Aktiengesellschaft v. New York TV Tickets Inc., WIPO Case No. D2001-1314; DaimlerChrysler Corporation v. Worshipping, Chrisler, and Chr, aka Dream Media and aka Peter Conover, WIPO Case No. D2000-1272; Playboy Enterprises v. Movie Name Company, WIPO Case No. D2001-1201; and Sidecar Health, Inc. v. Super Privacy Service LTD c/o Dynadot / Liqian, WIPO Case No. D2021-3198.
The Panel concludes that the disputed domain name is confusingly similar to the Complainant’s PENNINGTONS trademark.
The Complainant succeeds on the first element of the Policy.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant.
Previous UDRP panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent.
Accordingly, it is sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden of production will shift to the respondent to rebut that prima facie case.
The Complainant sent a demand letter to the Respondent at the email addresses for the Respondent and the Registrar. The Complainant did not receive a substantive response to that letter. The Complainant received a delivery failure notification in respect of the email sent directly to the Respondent.
The Complainant states that it conducted searches via search engines in respect of “pennlngstonlaw” and “pennlngtons” and the only results for commercial websites related to the Complainant.
The Complainant asserts that the Respondent is not known by the name “pennlngstonlaw”. There was no use of this term on the website to which the disputed domain name once resolved.
The Complainant has prior rights in the PENNINGTONS trademark, which precede the registration of the disputed domain name by the Respondent.
Previous UDRP panels have found typosquatting does not constitute a legitimate use of a domain name. See, e.g., Edmunds.com, Inc. v. Yingkun Guo, dba This domain is 4 sale, WIPO Case No. D2006-0694; Barnes & Noble College Bookstores, Inc. v. Oleg Techino, WIPO Case No. D2006-1537; Serena & Lily, Inc. v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2021-0568; and European Handball Federation v. domain admin, Xedoc Holding SA / Whois Privacy Services Pty Ltd, WIPO Case No. D2016-0057.
The Complainant has established a prima facie case that the Respondent does not have any rights or legitimate interests in the disputed domain name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the disputed domain name.
The Panel finds that the Respondent has failed to produce any evidence to establish his rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds that none of the circumstances listed in paragraph 4(c) of the Policy apply in the present circumstances.
For the reasons set forth above, the Panel concludes the Respondent has no rights or any legitimate interests in the disputed domain name.
The Complainant succeeds on the second element of the Policy in relation to the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the disputed domain name in bad faith.
The Complainant’s trademark is relatively distinctive. It is highly likely that the Respondent knew of the Complainant when he registered the disputed domain name. The Panel’s finding is reinforced given the addition of the term “law” to the typosquatting variation of the Complainant’s mark, seeing as the added term is descriptive of the Complainant’s services.
At one time, the disputed domain name diverted traffic looking for the Complainant to the CentOS website. The reason for this is unclear. As an aside, the Panel notes that in recent cases, unsuccessful respondents also have used domain names to resolve to the CentOS website. See, for example, FXCM Global Services, LLC v. WhoisGuard Protected, WhoisGuard, Inc. / Soy Cao, WIPO Case No. D2021-0653; Bulgari S.p.A. v. Registration Private, Domains By Proxy, LLC / Nisar Ahmad Zafar, WIPO Case No. D2020-3560; Alstom v. Kiran Mehta, WIPO Case No. D2021-2799.
It is well established that typosquatting is evidence of bad faith under the Policy. See ZB, N.A. v. Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2018-1959.
There is also a risk to the Complainant that the Respondent, unbeknown to the Complainant, is using the disputed domain name for a phishing or other email scam, sending emails pretending to come from the Complainant to defraud the Complainant’s clients. See, for example, Kramer Law Firm, P.A. Attorneys and Counselors at Law v. BOA Online, Mark Heuvel, WIPO Case No. D2016-0387; Wistrand Advokatbyrå Göteborg Kommanditbolag v. Privacy service provided by Withheld for Privacy ehf / Zhi Hao, WIPO Case No. D2021-2250; Latham & Watkins LLP v. Registration Private, Domains By Proxy, LLC / Barbara Jason, WIPO Case No. D2021-2238; and KWM Brands Pte Limited, King & Wood Mallesons v. Whois Agent, WhoIs Privacy Protection Service Inc. / Name Redacted, WIPO Case No. D2017-1721.
Lastly, the current inactive status of the disputed domain name does not prevent a finding of bad faith, given the Respondent’s failure to participate in this proceeding and the lack of any credible good-faith explanation to which the typosquatting disputed domain name could be put. See section 3.3. of the WIPO Overview 3.0.
The Complainant succeeds on the third element of the Policy in relation to the disputed domain name.
7. Decision
For 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 <pennlngtonslaw.com> be transferred to the Complainant.
John Swinson
Sole Panelist
Date: January 19, 2022