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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Harbottle & Lewis LLP v. James Christopher

Case No. D2018-0486

1. The Parties

The Complainant is Harbottle & Lewis LLP of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), self-represented.

The Respondent is James Christopher of Lagos, Nigeria.

2. The Domain Name and Registrar

The disputed domain name <harbottlewis.com> (the “Disputed Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 2, 2018. On March 5, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 5, 2018, 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 March 12, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 1, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 3, 2018.

The Center appointed Lynda M. Braun as the sole panelist in this matter on April 16, 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 reputable full-service law firm of approximately 100 lawyers (including partners & consultants) and 200 staff, with a particular focus on the technology, media and entertainment sectors. The Complainant was founded in December 1955 and has operated under the name HARBOTTLE & LEWIS consistently since then. Although the Complainant is based in London, it represents clients located throughout the United Kingdom and other jurisdictions worldwide.

Since 2000, the Complainant has operated an official website at “www.harbottle.com”, providing a variety of material, including information about the firm, its clients, the services it offers, news bulletins and legal updates.

On February 26, 2018, the Complainant filed United Kingdom trademark application No. 00003285491 for its mark HARBOTTLE & LEWIS in International Classes 9, 16, 35, and 36. On March 1, 2018, the Complainant filed United Kingdom trademark application No. 00003285489 for its mark HARBOTTLE in International Classes 9, 16, 35, 36, 41 and 45 (collectively, the “HARBOTTLE Mark”).

The Disputed Domain Name was registered by the Respondent on November 16, 2017. The Disputed Domain Name, <harbottlewis.com>, is a merging of the two names that comprise the Complainant’s law firm name, that is, HARBOTTLE and LEWIS (omitting the second “le”).

The Disputed Domain Name previously resolved to a website which reproduced content verbatim from the Complainant’s website in several ways.1 For example, the content of the website pages relating to the Complainant’s Defamation and Privacy, Tax and Employment teams, as well as its Business Services, Lawyers and Recruitment pages, has been copied word for word from the Complainant’s website into the Respondent’s website. Moreover, the “About Us” section of the Respondent’s website reproduced material directly from the “About Us” section of the Complainant’s website, and the content of profiles of individual lawyers were also copied from the Complainant’s website into the Respondent’s website. Finally, the address provided on the Respondent’s website was the Complainant’s business address and links provided on the Respondent’s website linked to pages of the Complainant’s genuine website.

5. Parties’ Contentions

A. Complainant

The following are the Complainant’s contentions:

- The Disputed Domain Name is identical to the Complainant’s unregistered trademarks.

- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

- The Disputed Domain Name was registered and is being used in bad faith.

- The Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)):

(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 respect of the Disputed Domain Name; and

(iii) The Disputed Domain Name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

The first issue in this element is whether the Complainant has protectable rights in the HARBOTTLE Mark since the Complainant recently filed trademark applications for the HARBOTTLE Mark in the United Kingdom Intellectual Property Office, months after the Respondent registered the Disputed Domain Name. The second issue is whether at the time the Complaint was filed the HARBOTTLE Mark had acquired sufficient distinctiveness through use and marketing sufficient to identify the source of the legal services with the Complainant. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.1.3.

In the Panel’s view, paragraph 4(a)(i) of the Policy refers merely to a “trademark or service mark” in which the complainant has rights and does not expressly limit the application of the Policy to a registered trademark or service mark. Therefore, the fact that in this case the Complainant does not have a registered trademark or service mark for the HARBOTTLE Mark does not preclude a finding that it has established trademark or service mark rights in that name. See Imperial College v. Christophe Dessimoz, WIPO Case No. D2004-0322. See also WIPO Overview 3.0, section 1.1.1.

With respect to the second issue, the Panel asserts that common law trademark and service mark rights exist when a party demonstrates that there is sufficient goodwill and reputation in a name – and therefore acquired distinctiveness – to establish sufficient association of the name with the party itself. Id.

It is uncontroverted that the Complainant had established common law rights in the HARBOTTLE Mark based on its over 60 years of use in the United Kingdom and other jurisdictions worldwide when the Complaint was filed (and when the Respondent registered the Disputed Domain Name as discussed below). Moreover, the evidence submitted by the Complainant in this proceeding includes printouts of the Complainant’s website pages, screenshots from Chambers & Partners and the Legal 500 websites, literature about the Complainant’s awards and accolades, and press coverage of the Complainant.

In light of the above, the Panel accepts that the Complainant has provided adequate grounds for a finding that it holds acquired distinctiveness and significant goodwill to have established common law trademark rights in the HARBOTTLE Mark. That being said, it follows that the Disputed Domain Name is confusingly similar to the Complainant’s common law (and pending applications for the) HARBOTTLE Mark.

Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant.

B. Rights or Legitimate Interests

Under the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of production of evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1.

The Complainant has not authorized, licensed, or otherwise permitted the Respondent to use its HARBOTTLE Mark. The Complainant does not have any type of business relationship with the Respondent, nor is the Respondent making a legitimate noncommercial or fair use of the Disputed Domain Name. Instead, the Panel finds that the Respondent was improperly using the Disputed Domain Name for commercial gain and thus, has no rights or legitimate interests in the Disputed Domain Name.

Moreover, the Respondent’s unauthorized registration and use of the Disputed Domain Name to create a website replicating the Complainant’s official website and bearing the HARBOTTLE Mark does not constitute a bona fide offering of goods or services or noncommercial fair use under the Policy.

Finally, where a respondent has registered and is using a domain name in bad faith, the respondent cannot be reasonably found to have made a bona fide offering of goods or services. In this case, the Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent has not submitted any substantive arguments or evidence to rebut the Complainant’s prima facie case.

Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant.

C. Registered and Used in Bad Faith

The Panel finds that, based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith pursuant to paragraph 4(b) of the Policy.

First, the Respondent attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s HARBOTTLE Mark. The Panel finds that at the time the Disputed Domain Name was registered the Complainant had established common law rights in the HARBOTTLE Mark based on its 60 years of use. The Panel finds that the Respondent registered the Disputed Domain Name to attract customers to its website by using a domain name that is confusingly similar to the Complainant’s HARBOTTLE Mark and then replicated the Complainant’s website almost verbatim. The use of a domain name to intentionally attempt to attract Internet users to a registrant’s website by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website for commercial gain demonstrates registration and use in bad faith.

The Respondent’s registration and use of the Disputed Domain Name indicates that such registration and use was done for the specific purpose of trading on the name and reputation of the Complainant and its well-known HARBOTTLE Mark. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847 (“[t]he only plausible explanation for Respondent’s actions appears to be an intentional effort to trade upon the fame of Complainant’s name and mark for commercial gain” and “[t]hat purpose is a violation of the Policy, as well as U.S. Trademark Law”.).

Second, the registration of a domain name that is confusingly similar to a trademark by an entity that has no relationship to that mark may be suggestive of bad faith. See Ebay Inc. v. Wangming, WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163. Based on the circumstances here, the Respondent registered and used the Disputed Domain Name in bad faith to target the Complainant’s HARBOTTLE Mark for commercial gain.

Finally, the Disputed Domain Name was registered primarily for the purpose of disrupting the Complainant’s business. The manner in which the Disputed Domain Name was used, and particularly the replication of the Complainant’s official website strongly suggests that the Disputed Domain Name was registered with the primary purpose of misleading actual and potential clients of the Complainant, which would disrupt the Complainant’s business.

Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant.

7. Decision

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, <harbottlewis.com>, be transferred to the Complainant.

Lynda M. Braun
Sole Panelist
Date: April 19, 2018

1 The Disputed Domain Name currently resolves to an inactive web page. At the Complainant’s request, the website content was removed by the Registrar a few months ago.

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