WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hill Dickinson LLP v. Registrant of hilldicksonllp.com / Julius Harcourt, Registrant of hdicksonllp.com, Protection of Private / Grace Latasha
Case No. D2017-1889
1. The Parties
The Complainant is Hill Dickinson LLP of Liverpool, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), internally represented.
The Respondents are Registrant of hilldicksonllp.com of Russian Federation / Julius Harcourt of Humboldt, Tennessee, Untied States of America / Registrant of hdicksonllp.com, Protection of Private of Russian Federation / Grace Latasha of Southbury, Connecticut, Untied States of America ("United States").
2. The Domain Names and Registrar
The disputed domain names <hilldicksonllp.com> and <hdicksonllp.com> are registered with Registrar of Domain Names REG.RU LLC
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 28, 2017. On September 28, 2017, the Center transmitted by email to the Registrar a request for the registrar verification in connection with <hilldicksonllp.com>. On October 4, 2017 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. On October 17, 2017, the Center in connection with the disputed domain name <hdicksonllp.com> transmitted by email to the Registrar a request for Registrar verification. On October 18, 2017 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 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed the first amended Complaint on October 10, 2017. On October 11, 2017, the Complainant filed the second amended Complaint requesting the transfer of the second domain name <hdicksonllp.com>. The Center sent an email communication to the Complainant on October 18, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the second amended Complaint in regard with <hdicksonllp.com>. The Complainant filed the third amended Complaint on November 1, 2017.
The Complaint and the amended Complaint were submitted in the English language. The language of the Registration Agreement for the disputed domain name is Russian. On October 9, 2017, the Center sent an email communication to the Parties in both English and Russian regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding as submitted in the Complaint. The Respondent did not reply to the Center's communication regarding the language of the proceeding or the Complainant's submission.
The Center verified that the third 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 in both the Russian and English languages, and the proceedings commenced on November 2, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 22, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default in both the Russian and English languages on November 28, 2017.
The Center appointed Piotr Nowaczyk as the sole panelist in this matter on December 6, 2017. 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 an United Kingdom company providing legal services internationally.
The Complainant is the proprietor of inter alia the following trademark registration:
- the European Union trade Mark registration for HILL DICKINSON (word), registered on February 22, 2012 (application No. 10314607) in classes 9, 16, 36, 41, 42, 45;
- the European Union trade Mark registration for HILL DICKINSON (figurative), registered on February 22, 2012 (application No. 10314664) in classes 9, 16, 36, 41, 42, 45.
The Complainant is also the registered owner of the domain name <hilldickinson.com> which was registered on May 20, 1998.
The first disputed domain name <hilldicksonllp.com> was registered on September 18, 2017, while the second disputed domain name <hdicksonllp.com> was registered on October 4, 2017.
The disputed domain names are linked to websites which replicated the layout of the Complainant's website as well as its copyrighted content, logo and images that are solely associated with the Complainant.
On September 19, 2017, the Complainant sent a take down notice in regard with <hilldicksonllp.com> to the Registrar.
5. Parties' Contentions
Firstly, the Complainant contends that the disputed domain names are confusingly similar to the HILL DICKINSON mark.
Secondly, the Complainant asserts that the Respondents have no rights or legitimate interests in the disputed domain names. As both domains are linked to the websites mirroring the Complainant's websites, the disputed domain names were clearly intended to mislead the public into believing that they are connected with the Complainant.
Thirdly, the Complainant claims that the disputed domain names were registered and are being used in bad faith which evidenced by the content of the websites that they are linked to. Moreover, according the Complainant the disputed domain names were registered many years after it registered the domain name <hilldickinson.com>.
Furthermore, the Complainant requests that the language of proceedings be English as the disputed domain names are in English and are linked to the websites, which present the content in English. It also emphasizes that the Respondents are domiciled in the United States.
The Respondents did not reply to the Complainant's contentions.
6. Discussion and Findings
(i) Language of the Proceeding
The language of both registration agreements is Russian. Paragraph 11(a) of the Rules provides that "unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding."
The Complaint was filed in English. The Complainant requested English to be the language of the administrative proceeding. Both Respondents were properly notified about the language of the proceeding in English and Russian, and neither of them has objected to the Complainant's language request. Notification of the Compliant was also sent to both Respondents in English and in Russian; however, neither of them participated in these proceedings.
Taking into account the fact the websites linked to the disputed domain names are in English as well as the Respondent's failure to comment on the language of the administrative proceedings, the Panel finds that the Respondent is most likely familiar with English and that it is appropriate to exercise its discretion and allow the proceeding to be conducted in English as per paragraph 11(a) of the Rules.
The Complainant alleges that both domain names are under common control, given that the website content accessible via both domains is Identical. Accordingly, Complainant seeks to consolidate two Respondents and two disputed domain names into a single proceeding.
Paragraph 3(c) of the Rules states: "The complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder." Paragraph 10(e) of the Rules, setting out certain general powers of the Panel, states: "A Panel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules."
According to WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 4.11.2, it is for the Panel to decide, in the light of the evidence produced and the submissions made, whether the domain names or corresponding websites are subject to common control, and whether the consolidation would be fair and equitable to all parties. Procedural efficiency is another factor consider in such a consolidation scenario.
In particular, the Panel considers similarities in or relevant aspects of (i) the registrants' identity (ies) including pseudonyms, (ii) the registrants' contact information including email address (es), postal address (es), or phone number(s), including any pattern of irregularities, (iii) relevant IP addresses, name servers, or webhost(s), (iv) the content or layout of websites corresponding to the disputed domain names, (v) the nature of the marks at issue.
In the present case, the Respondents have different names, addresses and e-mail addresses, but the same phone number. Moreover, the content of the websites linked to the disputed domain names is identical. In this instance, the Panel finds that it is more likely than not that the disputed domain names are subject to the common ownership or control. The Panel further concludes in the circumstances of this case that consolidation would be equitable to all the parties and procedurally efficient, and therefore will allow the consolidation as requested by the Complainant pursuant to paragraph 10(e) of the Rules. Consolidation will permit multiple domain name disputes arising from a common nucleus of facts and involving common legal issues to be heard and resolved in a single administrative proceeding. Doing so promotes the shared interests of the parties in avoiding unnecessary duplication of time, effort and expense, and generally furthers the fundamental objectives of the Policy.
Accordingly, this Panel, having regard to all relevant circumstances, concludes that the consolidation of the multiple domain name disputes asserted by the Complainant against the Respondents is consistent with the Policy and Rules, and comports with prior relevant UDRP decisions in this area. The Panel will proceed to a decision on the merits of these domain name disputes.
(iii) Merits of the Case
Paragraph 4(a) of the Policy places a burden on the Complainant to prove the presence of three separate elements. The three elements can be summarized as follows:
(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 the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The requested remedy may only be granted if the above criteria are met.
A. Identical or Confusingly Similar
For the purpose of assessing whether a domain name is identical or confusingly similar to a trademark or service mark, the generic Top-Level Domain ("gTLD") suffix ".com" may generally be disregarded as being simply a necessary component of a domain name (LEGO Juris A/S v. Whois Data Protection Sp. z o.o. / Mirek Nowakowski ROSTALCO Sp. z o.o., WIPO Case No. D2012-0607).
The disputed domain name <hilldicksonllp.com> is confusingly similar to the HILL DICKINSON mark as it mirrors the mark with only letters 'in' missing from the middle of the term. The Panel notes that the average Internet user would not, at first glance, identify the distinction between the disputed domain name and the Complainant's mark.
The relevant part of the disputed domain name <hdicksonllp.com> can be read as "hdickson llp". Given the fact that the disputed domain name <hdicksonllp.com> is linked to a website that is identical to the official website of the Complainant (Hill Dickinson LLP), it appears that Grace Latasha registered the domain name precisely because it believed that the domain name was confusingly similar to a mark held by the Complainant (see WIPO Overview 3.0, section 1.6). In the Panel's opinion, this is sufficient to establish that the disputed domain name <hdicksonllp.com> is confusingly similar to the HILL DICKINSON mark and the Complainant's business name.
Therefore, the Panel finds that the Complaint meets the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The overall burden of proof on this element rests with the Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to rebut the complainant's contentions. If the respondent fails to do so, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the Policy (see Danzas Holding AG, DHL Operations B.V. v. Ma Shikai, WIPO Case No. D2008-0441; See also WIPO Overview 3.0, section 2.1 and cases cited therein.
The Panel accepts the Complainant's assertion that registering the disputed domain names for the purpose of mirroring the Complainant's website, its registered trademark and copyrights cannot be regarded as bona fide offering goods or services.
Accordingly, in the absence of any evidence to support a possible basis on which the Respondents may have rights or legitimate interests in respect of the disputed domain names, the Panel accepts the Complainant's unrebutted prima facie case that the Respondents have no rights or legitimate interests in the disputed domain names and concludes that the second element of paragraph 4(a) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove the registration as well as use in bad faith of the disputed domain name.
Firstly, the HILL DICKINSON mark was registered years before the registration of the disputed domain names. Secondly, the disputed domain name <hdicksonllp.com> was registered after the Complainant sent to the Registrar a take down notice of September 19, 2017. Given the above and the fact that the disputed domain name are subject to a common control, the Panel conduces that the Respondents knew or should have known about the Complainant's rights while registering the disputed domain names. Moreover, the Panel notes that the fact that the Respondents used the privacy shield while registering the disputed domain names is a further evidence of bad faith.
Secondly, the Respondent also used the disputed domain names in bad faith. This is evidenced by the screenshots of the websites that the disputed domain names resolved to. They both mirrored the Complainant's official website, the HILL DICKINSON mark and the Complainant's copyright materials. Furthermore, both websites offered legal services alike the Complainant. For these reasons, the Panel finds that the Respondents intentionally attempted to attract, for commercial gain, Internet users to the website at the disputed domain names by creating a likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, or endorsement of or affiliation with the website.
In the light of above, the Panel decides that paragraph 4(a)(iii) of the Policy is satisfied.
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 names, <hdicksonllp.com> and <hilldicksonllp.com> be transferred to the Complainant.
Date: December 27, 2017