WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Walker Morris LLP v. Marilyn Steele
Case No. D2018-0322
1. The Parties
The Complainant is Walker Morris LLP of Leeds, United Kingdom of Great Britain and Northern Ireland (the “UK”) represented by Walker Morris Solicitors, UK.
The Respondent is Marilyn Steele of Humboldt, Tennessee, United States of America (the “USA”).
2. The Domain Name and Registrar
The disputed domain name <walkermorrissllp.com> is registered with Registrar of Domain Names REG.RU LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 13, 2018. On February 14, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 15, 2018, 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 February 15, 2018 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 February 16, 2018.
On February 15, 2018, the Center sent an email in Russian and English regarding the language of proceeding. On February 16, 2018, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of proceeding.
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 in both Russian and English, and the proceedings commenced on February 23, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 15, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 16, 2018.
The Center appointed Taras Kyslyy as the sole panelist in this matter on March 22, 2018. 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 full-service law firm based in UK.
The Complainant owns trademarks registered in UK as follows:
- WALKER MORRIS, registration No. 2215238, registered on February 16, 2001, ICGS classes 9, 16, 35, 36, 42, 45;
- WALKER MORRIS LAWKIOSK, registration No. 2227589, registered on May 3, 2002, ICGS classes 9, 16, 35, 36, 42;
- WALKER MORRIS LEGALKIOSK, registration No. 2227509, registered on April 26, 2002, ICGS classes 9, 16, 35, 36, 42;
- WALKER MORRIS ONESTOPLAWSHOP, registration No. 2227977, registered on May 17, 2002, ICGS classes 9, 16, 35, 36, 42;
- WORLDWIDE WALKER MORRIS, registration No. 2212007, registered on June 16, 2000, ICGS classes 9, 16, 35, 36, 42, 45.
The Complainant inter alia operates via its website at “www.walkermorris.co.uk”. The Complainant also owns <walkermorris.com> domain name, which resolves to the website “www.walkermorris.co.uk”.
The disputed domain name <walkermorrissllp.com> was registered on January 26, 2018 and resolves currently to an inactive webpage. At the time the Complainant was filed, the disputed domain name was resolving to a copy of the Complainant’s website “www.walkermorris.co.uk“.
5. Parties’ Contentions
The disputed domain name replicates the “Walker Morris” element of the Complainant’s trademarks. Adding letter “s” and “llp” standing for limited liability partnership being descriptive legal status does not dispel confusion with the Complainant’s trademarks. The website placed at the disputed domain name is a copy of the Complainant’s website placed at the Complainant’s domain name <walkermorris.co.uk>. Accordingly, the disputed domain name is identical, or in the alternative, confusingly similar to the Complainant’s trademarks.
The Respondent’s website is a copy of the Complainant’s website and was targeting the Complainant’s customers in the UK, the Respondent’s website is in UK English, contact details at its website are for addresses within UK and use UK dialing codes. Thus, the disputed domain name and its website infringed the Complainant’s trademarks.
Upon registration of the disputed domain name the Respondent immediately placed there copy of the Complainant’s website. Shortly after the Respondent sent several letters pretending to be originated from the Complainant and signed by a partner who works with the Complainant. The letters were addressed to some individuals attempting to coerce them to fraudulently provide personal details and money. These Respondent’s actions evidence it has no rights or legitimate interests in respect of the disputed domain name.
The mentioned Respondent’s letters sent with unlawful and illicit intentions were provided to the Complainant from his addresses being confused with the letters originate from the Complainant. The confusion will have a serious detrimental impact on the Complainant as the Complainant is a legal practice which requires high level of trust to operate effectively. The letters were intended to seek commercial gain. The letters were supported by placing copy of the Complainant’s website at the disputed domain name. The sole motivation for registering the disputed domain name was to carry on a course of illegal conduct through passing themselves off as the Complainant. The Respondent chose the disputed domain name close to the Complainant’s domain name to be a part of the Respondent’s illegal activities. In addition, the Respondent used a privacy shield to avoid being readily identified by the Complainant. Thus, the disputed domain name was registered and is being used in bad faith. In this regard the Complainant specifically refers to paragraph 4(b)(iv) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Language of Proceedings
The language of the Registration Agreement for the disputed domain name 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 Panel may also order that any documents submitted in a language other than that of the proceeding be translated.
However, as noted by previous UDRP panels, paragraph 11 of the Rules must be applied in accordance with the overriding requirements of paragraphs 10(b) and 10(c) of the Rules that the parties are treated equally, that each party is given a fair opportunity to present its case and that the proceeding takes place with due expedition (see, e.g., General Electric Company v. Edison Electric Corp. a/k/a Edison Electric Corp. General Energy, Edison GE, Edison-GE and EEEGE.COM, WIPO Case No. D2006-0334).
In deciding whether to allow the proceedings to be conducted in a language other than the language of the Registration Agreement, and to require the Complainant in an appropriate case to translate the Complaint into the language of that agreement, the Panel must have regard to all “the relevant circumstances”. The factors that the Panel should take into consideration include whether the Respondent is able to understand and effectively communicate in the language in which the Complaint has been made and would suffer no real prejudice, and whether the expenses of requiring translation and the delay in the proceedings can be avoided without at the same time causing injustice to the parties.
The Complainant has submitted in its Complaint a request that the language of the proceedings be English. The Complainant contends that the Respondent is clearly familiar with the English language, since the Respondent’s website is in English, the Respondent’s lengthy and complex communications citing the disputed domain name were in English, the disputed domain name targeted an English speaking law firm, the Respondent’s name is commonly used in English speaking countries, the Respondent’s address refers to Tennessee, USA with majority population speaking English. The Panel is prepared to infer that the Respondent is able to understand and communicate in English based on the above arguments provided by the Complainant in its entirety.
The Panel further notes that no objection was made by the Respondent to the proceeding being in English nor any request made that the proceedings be conducted in Russian, the language of the Registration Agreement. This was despite the Center notifying the Respondent in Russian and English that the Respondent is invited to present its objection to the proceedings being held in English and if the Center did not hear from the Respondent by a certain date, the Center would proceed on the basis that the Respondent had no objection to the Complainant’s request that English be the language of the proceedings. The Respondent had the opportunity to raise objections or make known its preference, but did not do so.
The Panel also finds that substantial additional expense and delay would likely be incurred if the Complaint had to be translated into Russian.
Taking all these circumstances into account, this Panel finds that it is appropriate to exercise its discretion and allow the proceedings to be conducted in English.
B. Identical or Confusingly Similar
According to section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”) in cases where a domain name incorporates the entirety of a trademark the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.
According to section 1.8 of the WIPO Overview 3.0 where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. Thus, the disputed domain name is confusingly similar to the Complainant’s trademark. The disputed domain name <walkermorrissllp.com> incorporates the Complainant’s trademark WALKER MORRIS in its entirety, adding meaningless letter “s” and descriptive term “llp”. The Panel finds the above confirms that the disputed domain name is confusingly similar to the Complainant’s trademark.
Therefore, the Complainant has established its case under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy shifts the burden of production to the Respondent to come forward with evidence of a right or legitimate interest in the domain name, once the Complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to use the Complainant’s trademark. The disputed domain name, however, incorporates the Complainant’s trademark in its entirety with minor meaningless and descriptive additions, and resolves to the website being a copy of the respective the Complainant’s website “www.walkermorris.co.uk”. In addition, the Respondent has been using the disputed domain name in its communications to third parties pretending to be originated from the Complainant and signed by a partner who “works with the Complainant”. The emails and letters were addressed to some individuals attempting to coerce them to fraudulently provide personal details and money.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s 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) the Respondent has been commonly known by the domain name, even if he has acquired no trademark or service mark rights; or
(iii) the Respondent is 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 Respondent has not submitted a response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009.
The Panel finds the above confirms lack of any rights or legitimate interests of the Respondent in the disputed domain name.
Therefore, the Complainant has established its case under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
According to paragraph 4(b)(iv) of the Policy the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 website or location or of a product or service on your website or location. In this case, the disputed domain name was resolving to a website copying the Complainant’s website to intentionally attract Internet users by creating likelihood of confusion with the Complainant’s trademark as to the source of the website and its service. It was also further used to support communication to third parties to get from them money. The Panel finds the above confirms the disputed domain name was registered and used in bad faith.
Moreover, the Respondent used a privacy service to register the disputed domain name. According to section 3.6 of the WIPO Overview 3.0, the use of a privacy or proxy service merely to avoid being notified of a UDRP proceeding, may support an inference of bad faith; a respondent filing a response may refute such inference. However, no such response was provided by the Respondent. The Panel finds that such use of the privacy service here confirms registration of the disputed domain name in bad faith.
Therefore, the Complainant has established its case under 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 <walkermorrissllp.com> be transferred to the Complainant.
Date: April 5, 2018