WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Eversheds LLP v. Wang Xuesong
Case No. D2016-2040
1. The Parties
The Complainant is Eversheds LLP of London, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), internally represented.
The Respondent is Wang Xuesong of Chongqing, China.
2. The Domain Name and Registrar
The disputed domain name <eversheds.xyz> 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 October 6, 2016. On October 6, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 7, 2016, 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.
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").
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 13, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 2, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on November 3, 2016.
The Center appointed Dennis A. Foster as the sole panelist in this matter on November 9, 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
Based in the United Kingdom, the Complainant is a well-established law firm that traces its founding back to 1988. For many years it has operated under the mark, EVERSHEDS which has been registered with many jurisdictions throughout the world, including with the United Kingdom Intellectual Property Office ("UKIPO") (e.g., Registration No. 1346021, registered October 1, 1993) and as a European Union Trademark ("EUTM") (e.g., Registration No. 000508754, registered October 27, 1998).
The Respondent owns the disputed domain name <eversheds.xyz>, which was registered on June 2, 2016. The disputed domain name is used to host a website that provides links to third party websites, many of which offer services that are similar to and compete with the services furnished by the Complainant.
5. Parties' Contentions
The predecessor to the Complainant was formed as a law firm in the United Kingdom in 1988. In 1995, the name of the Complainant was simplified to "Eversheds", and in 2003 the Complainant was incorporated under that name. The Complainant now operates on a worldwide basis with offices in many different countries. The Complainant has also received extensive publicity regarding its services and appears in many legal directories throughout the world.
The Complainant has registered the mark EVERSHEDS in many jurisdictions, including with the UKIPO and as an EUTM. The Complainant also does business through many domain names, including <eversheds.com>.
The disputed domain name, <eversheds.xyz>, is identical to the EVERSHEDS mark, as it contains exactly the same English language letters, in the same order, together with the inconsequential suffix ".xyz".
The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not affiliated with the Complainant and has received no authorization from the Complainant to use its mark. The mark is not a common or generic term, but rather an arbitrary term with no set meaning.
The disputed domain name is being used to host a website that features pay-per-click links to third party websites offering legal services which compete directly with those of the Complainant. Such use does not constitute a bona fide offering of goods or services, or a noncommercial or fair use of the name. Moreover, the Respondent is not commonly known by the disputed domain name, as his name, Wang Xuesong, bears no resemblance to the EVERSHEDS mark.
The disputed domain name was registered and is being used in bad faith. The Respondent had at least constructive knowledge of the Complainant's mark. Furthermore, the Respondent has engaged in a pattern of registering abusive domain names and has lost several previous UDRP rulings on that account. Moreover, the Respondent's use of pay-per-click links on the website attached to the disputed domain name is evidence of an intent to derive commercial gain through likely confusion with the Complainant's mark.
The Respondent also failed to respond to the Complainant's cease-and-desist letter sent in July 2016.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Pursuant to paragraphs 4(a)(i) - (iii) of the Policy, the Panel may find on behalf of the Complainant and order transfer of the disputed domain name, <eversheds.xyz>, provided that the Complainant demonstrates that:
- The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- The disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Based upon submission of evidence to the Panel that the Complainant has valid UKIPO and EUTM registrations for the mark EVERSHEDS, and has used that mark for many years throughout the world, the Panel concludes that the Complainant has sufficient rights in that mark to satisfy Policy paragraph 4(a)(i). See, Barclays Bank PLC v. Ho Lo, WIPO Case No. D2011-1322 ("Complainant has provided evidence of registration of the trademark BARCLAYS on the register of the UKIPO and as a CTM at the Office of Harmonization for the Internal Market (OHIM), and of the substantial use of the BARCLAYS trademark in commerce in the United Kingdom and other countries...The Panel determines that Complainant has rights in the trademark BARCLAYS in the United Kingdom and the European Union."); and Janus International Holding Co. v. Scott Rademacher, WIPO Case No. D2002-0201 ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.").
The Panel determines that the disputed domain name, <eversheds.xyz>, is identical to the EVERSHEDS mark because the two contain the same sequence of letters. As noted by previous UDRP panels, the attachment of the nondescript suffix, ".xyz", makes no difference. See, Volkswagen AG v. Fawzi Sood, WIPO Case No. D2015-1483 (finding <volkswagen.xyz> to be confusingly similar to the VOLKSWAGEN mark); and Philip Morris USA Inc. v. Sakaria Mohamoud mussafah, WIPO Case No. D2014-1667 (finding <marlboro.xyz> to be identical or confusingly similar to the mark, MARLBORO).
As a result, the Panel finds that the Complainant has demonstrated that the disputed domain name is identical to a service mark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complaint correctly asserts that the Complainant must only establish a prima facie case that the Respondent possesses no rights or legitimate interests in the disputed domain name before placing the burden upon the Respondent to rebut that case with clear evidence. See, Hermès International v. Registrant : Boris Moser, WIPO Case No. D2011-0406 ("It is the consensus view of WIPO UDRP panelists that once a complainant has established a prima facie case, it is respondent's responsibility to prove otherwise."); and Philip Morris USA Inc. v. yfmg, WIPO Case No. D2010-0058 ("Once the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name."). In this case, due to the identity between the disputed domain name and the Complainant's mark and the plain assertion by the Complainant that neither affiliation nor grant of authority to use the mark exists between the Complainant and Respondent, the Panel accepts that the Complainant has sustained its prima facie showing.
The Respondent has submitted no evidence. However, the Panel will evaluate whatever evidence, if any, exists in the record against the provisions of Policy paragraph 4(c) to determine whether there is a possible rebuttal to the Complainant's prima facie case. In so doing, the Panel will accept all reasonable contentions submitted in the Complaint as true. See RX America, LLC. v. Matthew Smith, WIPO Case No. D2005-0540 ("A respondent is not obliged to participate in a domain name dispute proceeding, but if it were to fail to do so, asserted facts that are not unreasonable would be taken as true..."); and Randstad General Partner (U.S.), LLC v. Domains For Sale For You, WIPO Case No. D2000-0051 ("Because Respondent has failed to submit an answer to the Complaint in a timely fashion, and because the allegations of the Complaint, taken on their face, engender no substantial doubt, the Panel accepts as true all allegations set forth in the Complaint.").
The Panel agrees with the Complainant's contention that there is no reason to believe that the Respondent, Wang Xuesong, is or has been known as the disputed domain name <eversheds.xyz>. Thus, Policy paragraph 4(c)(ii) is inapplicable to the present case. Moreover, the Panel accepts the Complainant's reasonable contention that the disputed domain name is used to host a website containing pay-per-click links to other websites that offer services that compete with those of the Complainant. The consensus of previous UDRP decisions is that such operation constitutes neither "a bona fide offering of goods or services" per paragraph 4(c)(i) nor "a legitimate noncommercial or fair use" of the disputed domain name per paragraph 4(c)(iii). See, VIVO S.A. and PORTELCOM PARTICIPAÇÕES S.A. v. Domains By Proxy - NA Proxy Account Niche Domain Proxy Manager, WIPO Case No. D2010-0925 ("The use of distinctive trademark terms to direct Internet users to a pay-per-click link farm parking page that offers goods or services competing with the trademark owner is well established under the Policy not to constitute a bona fide offering of goods or services or to constitute fair use."); and Ustream.TV, Inc. v. Vertical Axis, Inc, WIPO Case No. D2008-0598 ("It is by now well established that PPC parking pages built around a trademark...do not constitute a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy, nor do they constitute a legitimate non-commercial or fair use pursuant to paragraph 4(c)(iii)"). The Panel is in agreement with that consensus.
Therefore, the Panel determines that Policy paragraph 4(c) does not apply as an avenue to rebut the Complainant's prima facie case. As a consequence, the Panel believes that prima facie case must prevail.
Accordingly, the Panel finds that the Complainant has shown that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
As noted above, the Panel believes that the Respondent uses the disputed domain name, which is identical to the Complainant's mark, to host a website that contains pay-per-click links to third party websites. The Panel presumes that the Respondent derives revenue, even if shared, from such links. As a result, the Panel concludes that the Respondent is using the disputed domain name intentionally for commercial gain resulting from the likely confusion with the Complainant's mark as to source, sponsorship, affiliation or endorsement of the Respondent's website. Thus, the Panel determines that the disputed domain name has been registered and is being used in bad faith under Policy paragraph 4(b)(iv). See, Compart AG v. Compart.com / Vertical Axis, Inc., WIPO Case No. D2009-0462 ("The Respondent is deriving a financial benefit from web traffic diverted through the [disputed] Domain Name to linked websites on the domain parking page...This amounts to evidence of bad faith use under paragraph 4(b)(iv) of the Policy."); and Mpire Corporation v. Michael Frey, WIPO Case No. D2009-0258 ("While the intention to earn click-through-revenue is not in itself illegitimate, the use of a domain name that is deceptively similar to a trademark to obtain click-through-revenue is found to be bad faith use.").
Also, the Panel agrees with the Complainant that the Respondent has been engaged in a pattern of abusive domain name registrations, as demonstrated by the Respondent's losses in three prior UDRP panel rulings this year. See, Sanofi and Genzyme Corporation v. Wang Xuesong, WIPO Case No. DCC2016-0007; Accor v. Wang Xuesong, WIPO Case No. DCC2016-0003; and Zentiva Group, a.s. v. Wangxuesong, wang xuesong, WIPO Case No. DCC2016-0002. That pattern of abusive conduct represents persuasive evidence to the Panel that the Respondent is guilty of bad faith registration and use of the disputed domain name per Policy paragraph 4(b)(ii). See, Tom Cruise v. Network Operations Center / Alberta Hot Rods, WIPO Case No. D2006-0560 ("Respondent has been found by previous panels under the Policy to have engaged in a pattern of registering domain names to prevent the owners of marks from registering them...Respondent's similar course of conduct here with respect to Complainant's trademark and service mark justifies an adverse finding under the terms of paragraph 4(b)(ii)."); and Society BIC v. LaPorte Holdings, LLC, WIPO Case No. D2005-0342 ("The Respondent was found engaged in cyber squatting in a high number of WIPO cases...which in this Panel's view amount to the Respondent being engaged in a pattern of conduct sanctioned by paragraph 4(b)(ii) of the Policy...").
In line with the reasoning above, the Panel finds that the Complainant has proved that the disputed domain name was registered and is being used in bad faith.
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, <eversheds.xyz>, be transferred to the Complainant.
Dennis A. Foster
Date: November 23, 2016