WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pinsent Masons LLP v. Peter Smith
Case No. D2015-0796
1. The Parties
The Complainant is Pinsent Masons LLP of Glasgow, United Kingdom of Great Britain and Northern Ireland (“United Kingdom” or “UK”), internally represented.
The Respondent is Peter Smith of Douglas, Isle of Man, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <pinsentmasons.lawyer> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 6, 2015. On May 6, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 7, 2015, 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. In response to a request for clarification by the Center, the Complainant filed a clarification to the Complaint on May 19, 2015.
The Center verified that the Complaint together with the clarification 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 20, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was June 9, 2015. The Respondent did not submit a formal response. Accordingly, the Center notified the Respondent’s default on June 11, 2015.
On June 12, 2015, the Respondent wrote to the Center requesting “an extension of time to file materials”. On June 15, 2015, the Complainant replied to the Respondent’s communication objecting the Respondent’s request for extension.
The Center appointed Debrett G. Lyons as the sole panelist in this matter on June 18, 2015. 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.
Also on June 18, 2015 the Respondent wrote to the Center in response to the Complaint. That reply was not in accordance with the Rules and the Complainant has objected to its admissibility, a matter considered by the Panel hereunder.
4. Factual Background
The facts relevant to the decision in this case are that:
1. the Complainant provides legal services by reference to the name, “Pinsent Masons”;
2. the trade mark is the subject of United Kingdom Trade Mark Registration No. 2484418 PINSENT MASONS filed April 8, 2008;
3. the disputed domain name was registered on October 30, 2014;
4. at the time the Complaint was filed, the Complainant states the disputed domain name resolved to a website with sponsored links;
5. there has been no commercial or other relationship between the parties and the Complainant has not authorized the Respondent to use the trade mark or to register any domain name incorporating the trade mark; and
6. the Complainant’s December 19, 2014 letter of demand to the Respondent was met with a response the following day that the Respondent would transfer the disputed domain name to the Complainant for EUR 1,500.
5. Parties’ Contentions
The Complainant asserts trade mark rights in PINSENT MASONS and alleges that the disputed domain name is identical or confusingly similar to the trade mark.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant alleges that the Respondent registered and is using the disputed domain name in bad faith.
The Respondent did not file a timely Response but later wrote to the Center on June 18, 2015, in the following terms:
“Our defence is a simple one. We intend to use this domain as a forum for clients and others to post their feedback and comments about this organization. This is a service to the community and is protected in the United States, Great Britain, and in the free world at large under freedom of speech and freedom of expression.”
That same day the Complainant wrote to the Center recording its objection to the allowance of late or further submissions from the Respondent, in reply to which the Respondent wrote:
“The panel needs to decide whether an extension of time to file our defence should be granted. The panel needs to know what the defence will be in order to decide this issue. There is no prejudice to the applicant at all. This case should be heard on its merits. With respect, if you do not at least put this to the Panel then in effect you are deciding the issue, which is the very issue the panel is empowered to consider. This process needs to follow the ordinary tenets of fairness. All of these communications ought to be put to the panel and the panel to decide.”
The Complainant once more expressed it objections.
6. Discussion and Findings
A. Non-Compliant Response / Extension of Time Request
The Panel is presented with two preliminary matters – (i) a request from the Respondent for additional time in which to file a Response, and (ii) whether or not to take into account the non-compliant submissions already made by the Respondent.
Under the Policy, the Panel has a broad discretion in both of these matters. It has taken into account the representations of both parties and decided that there be no extension of time for a Response but regard be given to the Respondent’s non-compliant submissions in reaching the Decision.
B. The Policy
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trade mark 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.
It is the responsibility of the Panel to consider whether the requirements of the Policy have been met, regardless of the fact that the Respondent failed to timely file a formal response. Having considered the Complaint and the available evidence, the Panel finds the following:
i. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trade mark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to the trade mark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trade mark rights. It is accepted that a trade mark registered with a national authority is evidence of trade mark rights for the purposes of the Policy1 . The Complainant provides evidence of its UK national registration of the trade mark and the Panel accepts that the Complainant has trade mark rights.
The disputed domain name is legally identical to the Complainant’s trade mark since for the purposes of testing identity, the generic Top-Level Domain “.lawyer” can be ignored2 . Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
ii. Rights or Legitimate Interests
The Complainant has the burden to establish that the Respondent has no rights or legitimate interests in the disputed domain name. Nevertheless, it is well-settled that the Complainant need only make out a prima facie case, after which the onus shifts to the Respondent to rebut such prima facie case by demonstrating rights or legitimate interests3 .
Notwithstanding the lack of a Response to the Complaint, paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) 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.”
The publicly available WhoIs database identifying the Respondent as registrant does not support any conclusion that the Respondent might be commonly known by the disputed domain name. There is no evidence that the Respondent has trade mark rights in the disputed domain name, registered or not. The disputed domain name is not in use and so the only matter that calls for consideration is the Respondent’s claim that it intends to use the domain name to host a forum for feedback and comment about the Complainant.
The Panel observes that paragraph 4(c)(iii) of the Policy speaks in the present tense and requires actual noncommercial or fair use whereas the Respondent speaks only of a future intention. Even if the Respondent was to use the disputed domain name for a criticism site as he states, the Panel notes that the WIPO Overview 2.04 asks at paragraph 2.4: “Can a criticism site generate rights and legitimate interests?” in response to which it is written5 :
“This section only concerns sites that practice genuine, noncommercial criticism. There are many UDRP decisions where the respondent argues that the domain name is being used for a free speech purpose but the panel finds that it is primarily a pretext for commercial advantage. […] In the event that a domain name identical or confusingly similar to a trademark is being used for a genuine noncommercial free speech website, there are two main views. […] View 1: The right to criticize does not necessarily extend to registering and using a domain name that is identical or confusingly similar to the complainant’s trademark. That is especially the case if the respondent is using the trademark alone as the domain name (i.e., <trademark.tld>) as that may be understood by Internet users as impersonating the trademark owner. […] View 2: Irrespective of whether the domain name as such connotes criticism, the respondent has a legitimate interest in using the trademark as part of the domain name of a criticism site if such use is fair and noncommercial.”
The Panel adheres to View 1 expressed above. Furthermore, the Panel takes account of the facts that (a) the disputed domain name is parked with sponsored links and has been offered, and (b) the Respondent was prepared to sell the disputed domain name to the Complainant for EUR 1,500.
The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent’s base assertion of future intent is not enough, and in failing to submit a formal Response that prima facie case has not been rebutted.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and so the Complainant has satisfied the second element of the Policy.
iii. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out circumstances which shall be evidence of the registration and use of a domain name in bad faith. They are:
“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.”
On balance, the Panel finds that the Respondent’s conduct falls under paragraph 4(b)(i) of the Policy. In making that finding the Panel has taken the following factors into account. In failing to respond to the Complaint in a timely manner, the Respondent has not shown any evidence of its stated intentions for the disputed domain name. The disputed domain name was offered for sale before notice to the Respondent of the dispute. In reply to the Complainant’s letter or demand, the Respondent asked for valuable consideration in excess of the likely out-of-pocket costs related to an unused domain name. There is also some evidence that the Respondent has given a false registration address.
The Panel finds that the Respondent registered and is using the disputed domain name in bad faith and, accordingly, the Complainant has satisfied the third and final limb of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules and with the Complainant’s request, the Panel orders that the disputed domain name <pinsentmasons.lawyer> be transferred to the Complainant.
Debrett G. Lyons
Date: June 30, 2015
1 See WIPO Overview of WIPO Panel Views of Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.1.
2 See Philip Morris USA Inc. v. Sakaria Mohamoud mussafah, WIPO Case No. D2014-1667 (“It is well-established in decisions under the UDRP that generic Top-Level Domain (“gTLD”) indicators (e.g., “.com”, “.info”, “.net”, “.org”) may be considered irrelevant in assessing confusing similarity between a trademark and a domain name.”).
5 In redacted form