WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fladgate LLP v. Domains By Proxy LLC / Peter Smith
Case No. D2015-1586
1. The Parties
The Complainant is Fladgate LLP of London, United Kingdom of Great Britain and Northern Ireland ("United Kingdom") represented by Eddie Powell, United Kingdom.
The Respondent is Domains By Proxy LLC of Scottsdale, Arizona, United States of America ("United States") / Peter Smith, of Douglas, Isle of Man, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <fladgate.lawyer> (the "Domain Name") 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 September 4, 2015, naming Domains By Proxy, LLC as the Respondent.
The Center transmitted its request for registrar verification to the Registrar on September 7, 2015. The Registrar replied on September 9, 2015, identifying the registrant as Peter Smith and providing the full contact details held on its WhoIs database in respect of the Domain Name, including the registrant's address in Douglas, Isle of Man. The Registrar also stated that it had received a copy of the Complaint, that the Domain Name was registered with it, that the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP") applied, that the Domain Name would expire on October 30, 2015, that it would remain locked during this proceeding, subject to expiry of the registration including the redemption, grace and pending delete periods, that the language of the registration agreement was English, and that the Domain Name was registered by the current registrant since at least September 8, 2015.
The Center invited the Complainant on September 9, 2015 to amend the Complaint based on the registrant information provided by the Registrar. The Complainant filed an amended Complaint on September 11, 2015.
The Center verified that the Complaint and the amended Complaint satisfied the formal requirements of the 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 paragraphs 2 and 4 of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 18, 2015. In accordance with paragraph 5 of the Rules, the due date for Response was October 8, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 9, 2015.
The Center wrote to the Registrar on September 18, 2015, asking it to confirm that the Domain Name would remain in lock status after the expiry date until this proceeding is concluded and whether any action was required by the Parties to keep it under lock status. The Registrar replied on September 19, 2015, confirming that the Domain Name would remain locked during the proceeding and stating that its position was to make the Complainant bear the burden of ensuring that the Domain Name does not expire, but that it took steps to ensure that the Domain Name would remain in status quo during the dispute. The Center copied this correspondence to the Parties and urged them to contact the Registrar as soon as possible to resolve this issue and to inform the Center that the necessary arrangements had been made.
The Center appointed Jonathan Turner as the sole panelist in this matter on October 19, 2015. The Panel submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules. Having reviewed the file, the Panel is satisfied that the Complaint and amended Complaint complied with applicable formal requirements, were duly notified to the Respondent, and have been submitted to a properly constituted Panel in accordance with the UDRP, the Rules and the Supplemental Rules.
4. Factual Background
The Complainant is one of the 100 largest law firms in the United Kingdom. It was founded in 1760 and has used the name "Fladgate" in its title since 1835. Between 1988 and 2008 its name was "Fladgate Fielder LLP". Since 2008 its name has been "Fladgate LLP". It has been the registrant of the domain name <fladgate.com> since 1999. The Complainant has recently applied to register FLADGATE and a logo containing the word FLADGATE as Community trademarks.
The Domain Name was registered on October 30, 2014. It came to the notice of the Complainant when the Complainant received a letter dated January 23, 2015, from the Respondent, offering to sell it to the Complainant for EUR 1,500. The heading of the letter gave the address of the Respondent as being in Bucharest. At that date, the Domain Name was redirecting to the website of another English law firm, "Browne Jacobsen". The Domain Name has since been redirecting to a website which purports to relate to a law firm in London called "Fladgate" and includes some of the Complainant's contact details, but whose text is in embarrassingly poor English.
5. Parties' Contentions
The Complainant contends that it has a considerable reputation and goodwill as a supplier of legal services under the unregistered mark "Fladgate". It points out that the Domain Name uses the word "Fladgate" in its entirety.
The Complainant states that it can find no evidence that the Respondent has used the name "Fladgate" in connection with a bona fide offering of goods or services. It infers from the use of a privacy shield that the Domain Name was bought for commercial gain. It points out that the Respondent's letter of January 23, 2015, demonstrates intent to sell the Domain Name for profit. It adds that the hosting of a website with incorrect details and broken English demonstrates an intention to tarnish the Complainant's unregistered trade mark rights and that the previous redirection of the Domain Name to the website of a competitor of the Complainant shows ill will. According to the Complainant, the Respondent did this as a scare tactic to force the Complainant into paying the sum demanded.
The Complainant considers that the Respondent's letter of January 23, 2015 makes it clear that the Respondent bought the Domain Name in bad faith to exploit it for commercial gain. The Complainant emphasizes the damage that is liable to be caused to its reputation by the Respondent's website at the Domain Name.
The Complainant requests a decision that the Domain Name be transferred to it.
As stated above, the Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
In accordance with paragraph 4(a) of the UDRP, in order to succeed in this proceeding, the Complainant must prove (i) that the Domain Name is identical or confusingly similar to a mark in which it has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith. It is appropriate to consider each of these requirements in turn.
In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences as it considers appropriate from the Respondent's default in failing to file a response. This includes the acceptance of plausible evidence of the Complainant which has not been disputed.
A. Identical or Confusingly Similar
The Panel finds on the evidence that the Complainant has rights in the mark FLADGATE as a result of its longstanding use of this mark on a substantial scale in connection with the supply of legal services.
The Domain Name consists of the identical word together with the generic top level domain suffix, which is also descriptive of the Complainant's services. There can be no doubt that the Domain Name is identical or confusingly similar to the Complainant's mark.
The first requirement of the UDRP is satisfied.
B. Rights or Legitimate Interests
The Panel finds that the Respondent has not used or made preparations to use the Domain Name or a corresponding name in connection with a bona fide offering of goods or services. The direction of the Domain Name firstly to the website of a competing law firm and secondly to an illiterate website which purports to be of a law firm called "Fladgate" does not constitute a bona fide offering of goods or services. The Respondent's offer to sell the Domain Name to the Complainant is also inconsistent with an intent to use it for a bona fide offering of goods or services.
It is evident that the Respondent is not commonly known by the Domain Name. Nor is the Respondent making legitimate noncommercial or fair use of the Domain Name.
In the circumstances, there does not appear to be any other basis on which the Respondent could claim any right or legitimate interest in the Domain Name. The Panel finds that he has no such right. The second requirement of the UDRP is satisfied.
C. Registered and Used in Bad Faith
The Panel notes the Respondent offers to sell the Domain Name to the Complainant for a price greatly in excess of the cost of registration. The Panel finds on the evidence that the Respondent registered or acquired the Domain Name primarily for the purpose of selling it to the Complainant for valuable consideration in excess of his out-of-pocket costs.
In accordance with paragraph 4(b)(i) of the UDRP this constitutes evidence that the Domain Name was registered and is being used in bad faith. There is no evidence on the file which displaces this presumption. On the contrary, it is reinforced by the fact that the Domain Name was initially directed to the website of a competitor of the Complainant and then to a website purporting to be of a firm with the same name as the Complainant but within appropriate text.
All three requirements of the UDRP are satisfied and it is appropriate to order that the Domain Name be transferred to the Complainant.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <fladgate.lawyer> be transferred to the Complainant.
Date: October 30, 2015