WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hogan Lovells International LLP v. Perfect Privacy, LLC / Christopher Starn
Case No. D2016-1293
1. The Parties
The Complainant is Hogan Lovells International LLP of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Perfect Privacy, LLC of Jacksonville, Florida, United States of America (“United States”) / Christopher Starn of Cheshire, Connecticut, United States.
2. The Domain Name and Registrar
The disputed domain name <hoganlovels.com> is registered with Register.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 24, 2016. On June 27, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 27, 2016, 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 June 28, 2016 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 amended Complaint on July 1, 2016.
The Center verified that the Complaint together with the amended 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 July 6, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 26, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 27, 2016.
The Center appointed Tobias Zuberbühler as the sole panelist in this matter on August 4, 2016. 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 leading international law firm with over 2,500 lawyers operating out of more than 40 offices around the world. The Complainant has registered numerous HOGAN LOVELLS trademarks, including the following:
− United Kingdom Trademark No. 2539736, registered on June 18, 2010;
− United States Trademark No. 3972647, registered on June 7, 2011;
− European Union Trademark No. 008866501, registered on August 2, 2010;
− International Trademark No. 1038263, registered on March 31, 2010.
The disputed domain name was registered by the Respondent on July 3, 2015. The disputed domain name is currently resolving to an inactive website displaying the title “This site has exceeded the allotted bandwidth” and containing some additional basic statements regarding bandwidth allowances and hosting packages.
5. Parties’ Contentions
In summary, the Complainant contends the following:
The disputed domain name consists of an obvious misspelling of the Complainant’s trademark, as one letter “l” from “Lovells” has been deleted. The disputed domain name is therefore confusingly similar to the Complainant’s trademark in accordance with paragraph 4(a)(i) of the Policy.
The Respondent is not a licensee of the Complainant and has not been otherwise authorized by the Complainant to make any use of its trademark, in a domain name or otherwise. The Respondent can also not assert that he is using, or has made demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services in accordance with paragraph 4(c)(i) of the Policy. Furthermore, the Respondent cannot conceivably claim that he is commonly known by the disputed domain name in accordance with paragraph 4(c)(ii) of the Policy, and it is unlikely that the Respondent has secured or even sought to secure any trademark rights in the term “Hogan Lovells”. Neither can the Respondent assert that he is making a legitimate noncommercial or fair use of the disputed domain name in accordance with paragraph 4(c)(iii) of the Policy.
Given that the Complainant’s trademark significantly predates the registration of the disputed domain name, and in view of the Complainant’s renown and goodwill worldwide, it would be inconceivable that the Respondent was not aware of the Complainant’s rights at the time of registration of the disputed domain name in 2015. Also, the fact that the disputed domain name consists of an obvious typographical error of the Complainant’s trademark is itself evidence of bad faith, as there is no question that the Respondent deliberately chose to register the disputed domain name in order to take advantage of the Complainant’s rights.
The fact that the disputed domain name is resolving to an inactive website and is therefore being passively held by the Respondent does not preclude a finding of bad faith given the overall circumstances of the case, in particular the Complainant’s renown worldwide and the nature of the disputed domain name itself. Furthermore, the Respondent may be using, or is intending to use, the disputed domain name for the purposes of email, most likely in order to perpetrate fraudulent activities by impersonating the Complainant. The fact that the Respondent has deliberately chosen to conceal its identity by means of a privacy protection service is another strong indication of the Respondent’s bad faith and its intent to use the disputed domain name in a way which may be abusive or otherwise detrimental to the Complainant and its rights.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name is identical to the Complainant’s registered mark except for an omission of the letter “l”.
The Panel finds that the disputed domain name is thus confusingly similar to a trademark in which the Complainant has rights and that the Complainant has fulfilled paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
There are no indications before the Panel of any rights or legitimate interests of the Respondent in respect of the disputed domain name.
The use of the disputed domain name, which is a misspelling of the Complainant’s trademark (i.e. a case of so-called typo-squatting), cannot be considered as use in connection with a bona fide offering of goods or services, nor as a legitimate noncommercial or fair use.
Based on the Complainant’s credible contentions, the Panel finds that the Complainant, having made out a prima facie case which remains unrebutted by the Respondent, has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Under the circumstances of this case, it can be inferred that the Respondent was aware of the Complainant’s trademark when registering the disputed domain name.
The Panel finds that there is sufficient evidence that the Respondent, by using or intending to use the disputed domain name in a way that may be abusive (e.g. via phishing emails), is attempting to attract Internet users for commercial gain to his website, by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of his website or the products or services on his website, which fulfills paragraph 4(b)(iv) of the Policy.
Furthermore, the Panel notes that the disputed domain name is an example of typo-squatting, which by itself demonstrates bad faith.
In summary, the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith, thus fulfilling paragraph 4(a)(iii) of the Policy.
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 <hoganlovels.com> be transferred to the Complainant.
Date: August 18, 2016