WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bristows LLP v. Protection of Private Person / Marilyn Steele
Case No. D2018-0685
1. The Parties
The Complainant is Bristows LLP of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), internationally represented by Bristows, United Kingdom.
The Respondent is Protection of Private Person of Moscow, Russian Federation/ Marilyn Steele of Humboldt, Tennessee, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <bristowpllp.com> (“Disputed Domain Name”) is registered with Registrar of Domain Names REG.RU LLC (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on March 27, 2018. On March 28, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 30, 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 April 4, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same day the Center sent an email in regard to the language of proceedings both in English and Russian. On April 6, 2018, the Complainant requested English to be the language of the proceedings; the Respondent did not comment on the language of the proceeding. The Complainant filed an amended Complaint on April 9, 2018.
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 in English and Russian of the Complaint, and the proceedings commenced on April 10, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 30, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 1, 2018.
The Center appointed Mariya Koval as the sole panelist in this matter on May 7, 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 an independent law firm which was founded in 1837. Having operated more than 180 years, the Complainant has received numerous legal awards for its services and consistently achieves Tier 1 ranking in The Legal 500 and Chambers & Partners. Now the Complainant has 41 partners and a total staff of 278 persons.
The Complainant is the owner of the following two BRISTOWS trademark registrations (the “BRISTOWS Trademark”):
- United Kingdom trademark BRISTOWS No. 2154854, registered on September 25, 1998, in respect of “legal services” in class 42;
- European Union Trademark BRISTOWS No. 014189591, registered on October 19, 2015, in respect of “legal services” in class 45.
The Complainant operates the domain name <bristows.com>, which was registered on November 12, 1997, for promoting its legal services on the Internet. The Complainant also operates another domain names incorporating the BRISTOWS Trademark, such as <bristowsupc.com>, <bristowsclipboard.com>, <bristowscookiejar.com> and <bristowsonthepulse.com>.
The Disputed Domain Name was registered on January 25, 2018.
At the date of this decision, the website under the Disputed Domain Name is inactive. According to the evidence of the Complainant, the Disputed Domain Name previously resolved to a webpage cloning the content of a third-party law firm’s website. The Respondent appears to be engaged in a fraudulent scheme of sending facsimiles to members of the public, requesting that they contact the sender via an email address including the Disputed Domain Name.
5. Parties’ Contentions
The Complainant contends that it has been trading in the United Kingdom for over 180 years and since 1998 it has conducted its business under the name “Bristows”, although the word “Bristows” has featured in its name since as far back as 1868. The Complainant generates very significant turnover in the United Kingdom from the provision of legal services of many millions of pounds sterling and spends significant sums on advertising and promoting its legal services by reference to its name.
The Complainant argues that as the Disputed Domain Name contains the entirety of the BRISTOWS Trademark, except for the letter “s”, it is confusingly similar to the Complainant’s BRISTOWS Trademark.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, because of it is using the Disputed Domain Name as the location for a fraudulent website and not in connection with a bona fide offering of goods and services.
The Complainant also states that the Respondent is not commonly known by the Disputed Domain Name, it holds no BRISTOW or BRISTOWS trademark registration and it has never been granted permission by the Complainant to use its Trademark in the Disputed Domain Name.
The Complainant asserts that the Respondent has registered and is using the Disputed Domain Name in bad faith and as a part of a phishing scam: the Disputed Domain Name is the location for a fraudulent website the content of which has been cloned from the website of another law firm. Moreover the Complainant states that bad faith is evidenced also by the Respondent’s forwarding fraudulent facsimiles to members of the public, falsely claiming to be on behalf of a partner of “Bristows Partners LLP”. The Complainant further asserts that the continued presence of the fraudulent website under the Disputed Domain Name is likely to cause very substantial damage to the Complainant’s reputation and goodwill.
The Complainant contends that it has sent on March 15 and 23, 2018 cease and desist letters to the Respondent but did not receive any response that also supports a sign of bad faith.
The Complainant finally notes that the Respondent has previously been the subject of proceedings under the UDRP where panel found bad faith and ordered the transfer of the domain name in question, Euroclear SA/NV v. Marilyn Steele, WIPO Case No. D2017-2172.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the complainant must prove that each of the following three elements are present:
(i) identical or confusingly similar to a trademark or service mark in which a complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
6.1. Language of Proceedings
According to paragraph 11 of the Rules the language of the proceeding shall be the language of the Registration Agreement unless the Panel in its discretion determines otherwise.
The Registrar has confirmed that the language of the Registration Agreement is Russian. The Complainant submitted the Complaint in English and also requested that English be the language of proceedings referring to the following reasons:
- the Complainant is an English law firm which is based in London, United Kingdom;
- the Disputed Domain Name is registered in Latin characters;
- the Respondent is an individual located in the United States, an English speaking country and correspondingly is capable to understand English; and
- the Disputed Domain Name hosts an English language website.
The evidence (Annex 5) provided by the Complainant indeed shows that all content of the website under the Disputed Domain Name is in English, accordingly it is clear that the Respondent can understand English. Moreover the Center provided the Respondent with an opportunity to comment on or object to the Complainant’s language request by forwarding the proper English and Russian communications, but the Respondent failed to do so.
In accordance with paragraph 10(c) of the Rules “The Panel shall ensure that the administrative proceeding takes place with due expedition”. In view of the above and that the Respondent is not participating in this proceeding, taking into account that imposing an obligation on the Complainant to translate all the documents into Russian language would result in additional expenses for the Complainant and would delay the proceedings, the Panel accepts the Complaint as filed and concludes that the language of the proceeding should be English.
A. Identical or Confusingly Similar
The Complainant is the owner of two trademark registrations for BRISTOWS in respect of “legal services”. At the same time Bristows is also the Complainant’s company name which is in use from 1868.
The Disputed Domain Name completely reproduces the Complainant’s BRISTOWS Trademark, except the last letter “s” which is replaced by the letter “p”, and followed by element “llp” and the generic Top-Level Domain (“gTLD”) “.com”. At the same time the Complainant’s BRISTOWS Trademark is clearly recognizable in the Disputed Domain Name. Previous UDRP panels have considered that slight alterations, such as substitution or addition of one letter, would not prevent a finding of confusing similarity between a complainant’s trademark and a disputed domain name, see, e.g., Red Bull GmbH. v. Grey Design, WIPO Case No. D2001-1035 (“This is a typical case of “typo-squatting’ where the infringing domain name is one letter less than or different from the Complainant’s mark). At the same time the abbreviation “LLP” is the type of the Complainant’s business organization, namely “Limited Liability Partnership”.
With regard to determine whether the Disputed Domain Name is confusingly similar to the Complainant’s Trademark, the gTLD, in this case “.com”, which does not have distinctive character, is usually not taken into consideration. According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11, the applicable gTLD in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.
Accordingly, the Panel finds that the Disputed Domain Name is indeed confusingly similar to the Complainant’s BRISTOWS Trademark. Therefore, the Complainant has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
The Complainant alleges that the Respondent has no rights in relation to the BRISTOWS Trademark, it is not commonly known by the Disputed Domain Name, it does not possess any trademarks for BRISTOW or BRISTOWS and it is using the Disputed Domain Name as the location for a fraudulent scam.
The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. Based on the evidence provided by the Complaint, the Panel considers that the Respondent, being a natural person, is indeed not commonly known by the Disputed Domain Name and does not use the Disputed Domain Name in connection with a bona fide offering of goods or services. Also the Respondent was not authorized, licensed or otherwise allowed to make use of the Complainant’s protected trademark.
Taking into consideration the fact that the Disputed Domain Name had been used for redirecting Internet users to a website (which is inactive on the date of this decision), that contained information cloned from a third-party law firm’s website regarding provision of legal services allegedly by “Bristows Partners LLP” in the United Kingdom, which, in its turn, is absent in the United Kingdom’s Companies House database, the Panel finds that the Disputed Domain Name has been used to mislead Internet users seeking the Complainant. The Complainant has also provided evidence of what appear to be fraudulent facsimiles sent to unsuspecting members of the public in the furtherance of some kind of financial scam, soliciting personal contact information be sent to an email address connected with the Disputed Domain Name. According to section 2.13.1 of the WIPO Overview 3.0, panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, to other types of fraud) can never confer rights or legitimate interests on a respondent. Therefore, the Panel finds that the Disputed Domain Name is not being used in connection with a bona fide offering of goods and services.
Moreover the use of the Disputed Domain Name in connection with such a misleading website, which attracts consumers by creating confusion with the Complainant’s BRISTOWS Trademark, obviously evidences that the Respondent was well aware of the Complainant’s Trademark and activity.
The Respondent did not respond to the Complainant’s cease and desist letters and contentions, nor to the Center’s communications, therefore the Respondent has failed to assert his rights and legitimate interests in the Disputed Domain Name.
In view of the above, the Panel finds the Complainant has proved the second element under the Policy.
C. Registered and Used in Bad Faith
The Panel considers that the Complainant properly established its rights in the BRISTOWS Trademark, first use of which predates the Disputed Domain Name registration by 180 years.
The Disputed Domain Name contains the entire Complainant’s BRISTOWS Trademark except one letter “s” which is substituted by letter “p” that appears to be a typosquatting. At the same time the BRISTOWS Trademark may be immediately identified in the Disputed Domain Name by consumers. It is well established that typosquatting may be evidence of bad faith, see, e.g., Longs Drug Stores California, Inc. v. Shep Dog, WIPO Case No. D2004-1069.
As the evidence provided by the Complainant shows, the Respondent was using the Disputed Domain Name for a fake website with indication of the name “Bristows Partners LLP” on it and had been impersonating himself as one of the employees of the fake law firm via the sending of the above-mentioned facsimiles. This makes it clear that the Respondent was well familiar with the Complainant’s trademark and its business before registration of the Disputed Domain Name. Moreover, in view of this it is highly improbable that the Respondent could select the Disputed Domain Name, containing entirety of the Complainant’s trademark, accidentally; conversely, the Respondent has intentionally chosen the Disputed Domain Name for the only purpose to mislead consumers and to take advantages of the Complainant’s goodwill. The Panel finds that such actions of the Respondent are obviously considered as bad faith.
The Respondent’s failure to respond to the Complainant’s two cease-and-desist letters and that taking into account that the Respondent was already a respondent in a prior UDRP proceeding (Euroclear SA/NV v. Marilyn Steele, supra) where bad faith was found are further indications of the Respondent’s bad faith.
Taking into consideration all the above facts and evidence the Panel finds that the Respondent registered and was using the Disputed Domain Name in bad faith with a capability to seriously damage the Complainant’s reputation.
In light of the above the Panel considers the third element has been successfully 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 Name <bristowpllp.com> be transferred to the Complainant.
Date: May 18, 2018