WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Shepherd and Wedderburn LLP v. Tony Warburton
Case No. D2018-1130
1. The Parties
The Complainant is Shepherd and Wedderburn LLP of Edinburgh, United Kingdom of Great Britain and Northern Ireland ("United Kingdom" or "UK"), internally represented.
The Respondent is Tony Warburton of London, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <shepweddlaw.com> (the Domain Name) is registered with Hostinger, UAB (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 18, 2018. On May 22, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 27, 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 Complainant filed an amended Complaint on May 29, 2018 to address an administrative formality.
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 of the Complaint, and the proceedings commenced on June 1, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 21, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 22, 2018.
The Center appointed Dawn Osborne as the sole panelist in this matter on June 25, 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 the owner of a registered trade mark in the UK for SHEPHERD & WEDDERBURN. It owns a number of domain names including its mark and abbreviated versions of its mark including eight domain names where the mark is abbreviated to SHEPWEDD, including <shepwedd.com> and <shepwedd.co.uk>. The Complainant uses <shepwedd.com> and all of the Complainant's staff have email addresses in the format [first name.surname]@shepwedd.com.
The Domain Name is connected to a holding page but has been used in a phishing email attempt using the name of one of the partners of the Complainant without authorisation.
5. Parties' Contentions
The Complainant's contentions can be summarised as follows:
The Complainant is the owner of registered trade marks in the UK for SHEPHERD & WEDDERBURN and its logo a stylised '+'. It owns a number of domain names including its mark and abbreviated versions of its mark including eight domain names where the mark is abbreviated to SHEPWEDD, including <shepwedd.com> and <shepwedd.co.uk>. The Complainant uses <shepwedd.com> and all of the Complainant's staff have email addresses in the format [first name.surname]@shepwedd.com. Through use, members of the public associate the Complainant with its shortened name SHEPWEDD.
The Domain Name registered in 2018 is identical or confusingly similar to SHEPWEDD. The addition of the term "law" is descriptive of services provided by the Complainant and the use of the term SHEPWEDD is intended to deceive targeted individuals into thinking that the Respondent is the Complainant.
The Domain Name is attached to a holding page in Russian.
On May 17, 2018 an email was forwarded to the Complainant that purported to originate from the Metropolitan Economic Development Association ("MEDA") in the United States of America and as sent to MEDA's CFO. The email used the name of a genuine partner of the Complainant in an attempt at phishing to obtain confidential information. The Respondent has no rights or legitimate interests in the Domain Name. The Domain Name has been registered and used in bad faith. The Respondent's conduct is passing off and the Domain Name is an instrument of fraud. It is misleading, confusing for commercial gain and likely to disrupt the business of the Complainant.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Identical or Confusingly Similar
The Domain Name consists of a sign confusingly similar to SHEPWEBB (a mark in which the Panel finds the Complainant has common law rights for purposes of the Policy through extensive use in trade). Moreover, the Panel finds that the Domain Name is confusingly similar to the Complainant's registered trade mark SHEPHERD & WEDDERBURN as two dominant features of the Complainant's trade mark are recognizable in the Domain Name. See section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"). Merely adding the generic word "law" reflecting the field in which the Complainant operates and the generic Top-Level Domain ".com" does not distinguish the Domain Name from the Complainant's mark.
Accordingly, the Panel holds that the Domain Name is confusingly similar for the purpose of the Policy to a mark in which the Complainant has rights.
Rights or Legitimate Interests
The Complainant has not authorised the use of its mark. The Respondent has not answered this Complaint and there is no evidence or reason to suggest the Respondent is, in fact, commonly known by the Domain Name.
The Domain Name has been used in a phishing email scheme using the name of one of the Complainant's employees. This is deceptive and confusing. As such it cannot amount to the bona fide offering of goods and services or a legitimate noncommercial or fair use.
As such the Panel finds that the Respondent does not have rights or legitimate interests in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
Phishing per se is bad faith registration and use under the Policy.
Impersonating a complainant by use of a complainant's mark and the name of one of its employees in a fraudulent email scam is disruptive and also evinces bad faith registration and use.
Further, such use in relation to an email scam is confusing in that recipients of the emails may reasonably believe those emails are connected to or approved by the Complainant. The use by the Respondent of the name of a genuine employee of the Complainant shows that the Respondent was aware of the Complainant and its business and rights. Accordingly, the Panel holds additionally that the Respondent has intentionally attempted to attract for commercial gain Internet users by creating a likelihood of confusion with the Complainant's trade mark as to the source, sponsorship, affiliation or endorsement of electronic content on the Internet under Policy 4(b)(iv).
As such, the Panel finds that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under paragraphs 4(b)(iii) and 4(b)(iv).
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 <shepweddlaw.com> be transferred to the Complainant.
Date: June 26, 2018