WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Hodge Jones & Allen LLP v. Koichiro Taneda

Case No. D2018-1426

1. The Parties

The Complainant is Hodge Jones & Allen LLP of London, United Kingdom of Great Britain and Northern Ireland ("Unit Kingdom"), represented by SafeNames Ltd., United Kingdom.

The Respondent is Koichiro Taneda of Tokyo, Japan.

2. The Domain Name and Registrar

The disputed domain name <hjallenllp.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 June 27, 2018. On June 27, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 2, 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 the same date 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 the same date. On July 2, 2018, the Center also sent an email to the Parties in English and Russian in regard to the language of proceedings on which the Respondent did not reply. The Complainant in the Complaint requested English to be the language of the proceedings.

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 July 9, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 29, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 30, 2018.

The Center appointed Irina V. Savelieva as the sole panelist in this matter on August 8, 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, Hodge Jones & Allen LLP, is a London law firm. The firm was originally founded in 1977 by Henry Hodge, Peter Jones & Patrick Allen. Initially, the firm specialized in criminal defence, family, private client work and general litigation, most of which was funded by legal aid. Over the years, the firm has expanded and has been involved in many high profile group actions fighting for individuals and their right to justice. Today, the firm employs over 220 employees and provides legal advice and support in fourteen distinct areas of law, such as Civil Liberties, Criminal Defence, Family Law, Personal Injury, and Social Housing.

The name Hodge Jones & Allen comes from the three founding partners of the firm and Patrick Allen was appointed managing partner of the firm, and remained in charge for 40 years, up until 2017. The firm is registered and regulated by the Solicitors Regulation Authority (SRA) in England and Wales.

The Complainant has received recognition for their work in the legal industry, and has received many nominations and awards since its creation. The Complainant also invests time in other projects such as a regular radio show. The Complainant regularly engages with local communities and offers support when needed. Finally, the Complainant is very active on social media platforms, especially on Twitter, where the Complainant regularly posts its most recent updates, news and commentaries on the legal industry.

The Complainant's full company name, Hodge Jones & Allen LLP is often shortened to the term "HJA", and that term has now become an identifier of the Complainant's services. Indeed, the Complainant has invested time and money in promoting its services under both the names Hodge Jones & Allen and HJA. By way of example, the Complainant uses its logo to distinguish its services from its competitors: in order to protect their HJA brand, the Complainant has also registered the following trademarks, which can be accessed on public trademark databases.

In addition to trademarks, the Complainant has developed a strong portfolio of domain names, many of which feature the HJA or HODGE JONES & ALLEN marks. A non-exhaustive list of the Complainant's domain names includes: <hja.net>, <hja.law>, <hjainjury.net>, <hjallp.biz>, <hjallp.co.uk>, <hjallp.info>, <hjallp.net>, <hodgejonesallen.co.uk>, and <hodge-jones-allen.co.uk>. The Complainant's official website is found at "www.hja.net" and was first created on the March 12, 1998. Since its registration, the domain name has been used to provide detailed information about the Complainant, its services and areas of expertise. Due to the reputation of this brand, the Complainant is also listed as one of the first hits on the Google search engine when entering the term "hja".

The disputed domain name was registered on December 13, 2017 and is currently inactive.

5. Parties' Contentions

A. Complainant

a) Identical or Confusingly Similar

The Complainant submits that the term Hodge, Jones & Allen" does not refer to a commonly used phrase, but to the surnames of the three founding partners of the law firm. Considering the nature of the Complainant's business, it is common to have the partner's names as their company name and brand. It is, therefore, clear that the public would identify the mark exclusively in relation to the Complainant's legal services.

The disputed domain name incorporates the Complainant's trademark HJA with the addition of the terms "llen" and "llp". The addition of the term "llp" does not prevent a finding of confusing similarity. On the contrary, this term only adds to the confusion in the minds of Internet users, as "llp" is a common abbreviation used by law firms and stands for "limited liability partnership". Prior decisions on similar cases indicates that when "the disputed domain name <kpmgllp.net> reproduces the Complainant's service mark KPMG in its entirety, with the addition of the letters "llp", the common abbreviation for "limited liability partnership", and is used for fraudulent activities that will only increase confusion"(KPMG LLP v. WhoisGuard, Inc., WIPO Case No. D2016-0051).

Furthermore, the addition of the letters "llen" by the Respondent in the disputed domain name also aimed at causing more consumer confusion. Indeed, when reading the domain name, Internet users can also read the term "allen", which is the surname of one of the founding partners of the Complainant. The term is found in the company's brand name, Hodge Jones & Allen LLP. The first two letters "h" and "j" respectively stand for Hodge and Jones, the remaining founding partners. Therefore, the Complainant affirms that the disputed domain name is confusingly similar to the registered trademark HJA and the unregistered mark HODGE JONES & ALLEN.

Finally, when a comparison is being drawn between the trademark and a domain name, it is unnecessary to consider the generic Top-Level Domain (gTLD), which has been used. This is a technical requirement for domain names, so the extension ".com" can be disregarded.

b) Rights or Legitimate Interests

The Complainant submits that the Respondent lacks rights and legitimate interests in the disputed domain name.

To the best of the Complainant's knowledge, the Respondent has not registered any trademark for the term "hja" and "hjallen", and therefore, does not hold rights to the disputed domain name.

The Complainant further submits that the Respondent cannot come within any exception under Paragraph 4(c) of the Policy to justify a legitimate interest and that before any notice to the Respondent of the dispute, the Respondent's use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name is in connection with a bona fide offering of goods or services.

The Complainant submits that the disputed domain name (which is currently inactive) was used to redirect members of the public to a website which was a copy of the Complainant's website and purported to offer legal services under the Complainant's mark. Previous UDRP panels have constantly held that redirection to the Complainant's own website cannot satisfy a legitimate interest.

The Complainant further submits that the Respondent registered the disputed domain name in order to set up a scam, known as advance fee fraud. An advance fee fraud is when fraudsters, the Respondent in this case, target victims to make advance or upfront payment for goods, services and/or financial gains that do not materialize. This could include legal services, such as those of the Complainant.

This type of illegal activity could also fall under the category of "phishing" defined in prior UDRP decisions as "the criminally fraudulent process of attempting to acquire sensitive information such as usernames, passwords and credit card details by masquerading as a trustworthy entity in an electronic communication" (Confederation Nationale du Credit Mutuel v. Daniel Delcore, WIPO Case No. DLC2009-0001).

The Complainant submits that the disputed domain name falls within this category of scam. As mentioned above, the Respondent attempted to steal credit card details and personal information in order to obtain payments. This illegal phishing activity is considered as a cybercrime and prohibited in all countries. Panels have always categorically held that the use of a domain name for illegal activity, such as phishing, can never confer rights or legitimate interests on a Respondent (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 2.13.1)

Further to that, there is no evidence that the Respondent is making a non commercial or fair use of the disputed domain name. Registering and using the disputed domain name for an illegal activity can never amount to fair use of a domain name.

c) Registered and Used in Bad Faith

The Complainant submits that the Respondent both registered and used the disputed domain name in bad faith in accordance with paragraph 4(a)(iii) of the Policy.

The Complainant has obtained several trademarks for HJA, all of which were registered before the disputed domain name was registered by the Respondent on December 13, 2017. The Complainant submits that the Hodge Jones & Allen brand has been used as early as 1977, identifying the Complainant's company name. The Complainant has invested a significant amount of time, money and effort in the use of their mark to distinguish its legal services from their competitors. As a result of this extensive and exclusive use of its brand within the legal industry for over 40 years, as evident from the documentation provided as part of this dispute, it can be said that the Complainant has also established common law rights in the term "Hodge, Jones & Allen".

In order for a Complainant to assert rights in a domain name, it is noted that the Policy does not require that a trademark be registered in order to be invoked.

Moreover, the Respondent was previously shown to have targeted the Complainant's mark, by using the domain to resolve to a webpage cloning the Complainant's content. The Respondent, thereafter, used the domain to entice members of the public to the website in what has been known as the disputed domain name advance fee fraud. The Respondent's clear motivation provides persuasive evidence to show that the Complainant's mark has achieved significance and secondary meaning as a source identifier (see WIPO Overview 3.0, section 1.3).

The Complainant has been operating its brand for the last 40 years, and when typing the term "HJA" or "Hodge Jones & Allen" in a search engine like Google, the results on the first page solely relate to the Complainant. Moreover, as soon as the disputed domain name was registered on December 13, 2017, the Respondent launched their attack (which was reported to Action Fraud on December 28, 2017), which reinforces the idea that the Respondent knew of the Complainant's brand at the time of the registration of the disputed domain name.

The Complainant submits that, as previously mentioned, the disputed domain name was used in an elaborate phishing attack. Phishing, which is a form of Internet fraud that aims to steal valuable information such as credit cards, user ids, passwords, and money, can take various forms. For instance, in the case BHP Billiton Innovation Pty Ltd v. Domains By Proxy LLC/Douglas Johnson, WIPO Case No. D2016-0364, the Panel stated that "the use of an email address associated with the disputed domain name, to send a phishing email for the purposes of dishonest activity is in itself evidence that the disputed domain name was registered and is being used in bad faith."

Therefore, the Complainant asserts that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website at the disputed domain name by creating a likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, or endorsement of/ or affiliation with the website.

Finally, the Complainant submits an argument of abusive pattern of conduct. Indeed, the Respondent has a pattern of registering the names of English law firms in order to set up scams. As evidenced in Annex 14 to the Complaint, the same Respondent registered several domain names, and used those domain names for fraudulent activity. In this case, the Respondent has registered several domain names incorporating different law firms' names, in order to set up the same fraudulent scam.

B. Respondent

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

6. Discussion and Findings

The Respondent was given notice of this proceeding in accordance with the Rules both in electronic and paper forms In English and Russian languages.

However, the Respondent failed to file a response to the Complaint and has not sought to answer to the Complainant's assertions, evidence or contentions in any other manner. The Panel finds that the Respondent has been given a fair opportunity to present its case and finds no exceptional circumstances why it could not do so; and the Panel will proceed to a decision based on the Complaint in accordance with paragraph 5(f) of the Rules.

The Respondent's default does not automatically result in a decision in favor of the Complainant. The Complainant must still prove the elements required by the Policy. In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, the Complainant must prove that the three following elements are satisfied:

(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 domain name; and

(iii) the disputed domain name was registered and is being used in bad faith.

Pursuant to paragraph 15(a) of the Rules the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, the Panel may draw such inferences as it considers appropriate from the Respondent's failure to reply to the Complainant's assertions and evidence or to otherwise contest the Complaint. In the circumstances, the Panel's decision is based upon the Complainant's assertions and evidence and inferences drawn from the Respondent's failure to reply.

A. Language of Proceeding

The language of the Registration Agreement is Russian as illustrated in Annex 2 and according to Paragraph 11 of the Rules this should be the language of the proceedings. However, the Complainant submits this request for the language of the proceedings to be in English in keeping with the spirit of the Policy.

Paragraph 11 of the Rules states that the language of the proceeding shall be the language of the Registration Agreement subject to the authority of the Panel determines otherwise.

The Complainant has requested English as the language of the proceeding for the following reasons: (a) the Complaint has been submitted in English, (b) the Respondent would certainly have to understand English as his business practice shows, c) otherwise substantial burden and expense would be imposed on the Complainant, which could cause undue delay.

The Complainant submits that the disputed domain name, is composed of the English surname Allen and the term "llp", which is a common abbreviation for "limited liability partnership" in the English language. The term "llp" is a common English term and does not bear any other meaning. The surname Allen is also a typical English surname. Moreover, as provided by the Complainant, results on the Google search engine for the term "hjallen llp" also shows that the Respondent set up various websites at the disputed domain names using title and meta description tags, and all of them are in English. Therefore, it seems that the Respondent is at the very least competent with the English language.

Given further that the Respondent did not reply to the submission of the Complainant about English as the language of the proceedings, the Panel proceeds to a decision in English.

B. Identical or Confusingly Similar

The Complainant has registered the HJA trademark in the United Kingdom in 2010-2011 and is known all in the area of legal service. The Complainant submits that the disputed domain name is identical or confusingly similar to its trademark. The disputed domain name incorporates the HJA trademark in its entirety with difference in combination of 7 letters resulting in "hjallenllp".

The Panel refers to a number of past UDRP decisions, which confirm that incorporating a trademark in its entirety even with a typo can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark (Toyota France and Toyota Motor Corporation v. Computer-Brain, WIPO Case No. D2002-0002 and Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Ltd., WIPO Case No. D2000-0802).

The word "hjallenllp" incorporated in the disputed domain name make a clear reference to the law firm HJA or the names of the partners and also the reference to the legal structure "llp" normal for laws firm in the United Kingdom. In the Panel view, the disputed domain name is confusingly similar to the HJA trademark which is reproduced in its entirety and it is clearly recognizable within the disputed domain name.

Adding the gTLD does not prevent a finding of confusing similarity.

Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant's trademark HJA.

The Panel finds that the Complainant has satisfied its burden of proof under paragraph 4(a)(i) of the Policy as the first element of the Policy.

C. Rights or Legitimate Interests

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name.

Even though the Respondent has not filed a response to the Complaint and has not contested the Complainant's assertions, the Panel will need to consider whether the Respondent's use of the disputed domain name would indicate the Respondent's rights or legitimate interests in the disputed domain name.

According to paragraph 4(c) of the Policy the following circumstances, if proved, demonstrate a respondent's rights or legitimate interests in a domain name:

(i) the respondent used or demonstrably prepared to use the domain name or corresponding name in connection with a bona fide offering of goods or services prior to notice of the dispute; or

(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark 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 complainant's marks.

A respondent may show its rights or legitimate interests, non-exhaustively, by producing evidence to support the circumstances under paragraphs 4(c) of the Policy.

By not responding to the Complainant's contentions, the Respondent in this proceeding has not attempted to demonstrate its rights or legitimate interests.

The Panel further notes that there is no evidence that before any notice of the dispute with the Complainant, that the Respondent was using the disputed domain name for a bona fide offering of goods or services. According to the Complaint the website linked to the disputed domain name (which is currently inactive) was used to redirect members of the public to a website which was a copy of the Complainant's website and purported to offer legal services under the Complainant's mark. The Panel holds that such practice to link to the site which is a copy of the legitimate Complainant's own website cannot satisfy a legitimate interest. According to the evidence provided by the Complainant, the Respondent has used the disputed domain name to impersonate the Complainant. Such use cannot arise rights or legitimate interests.

The above described use of the disputed domain name, in the Panel's view, proves that the Respondent was not involved in bona fide offering of goods and services in respect of the disputed domain name under paragraph 4(c)(i) of the Policy.

As to paragraph 4(c)(ii) of the Policy, there is no evidence that the Respondent has been commonly known by the disputed domain name.

The Panel recalls that the Respondent registered the disputed domain name on December 13, 2017. The Complainant asserts that the activity under the trademark continues from 2010-2011 and earlier – under common law mark. The HJA trademark and the Complainant's activity is known and recognized within its industry.

As the disputed domain name was registered approximately 7 years after the registration of the Complainant's trademark from the evidence provided, it is totally inconceivable that the Respondent known as Koichiro Taneda of Tokyo has been commonly known by the disputed domain name as provided in paragraph 4(c)(ii) of the Policy.

There is no further evidence that the Respondent is making or has made legitimate noncommercial or fair use of the disputed domain name. Moreover, the Respondent was using the disputed domain name with the purpose of gaining profit. Therefore, paragraph 4(c)(iii) of the Policy does not apply.

The Panel finds the Complainant has established its prima facie case to show that the Respondent has no rights or legitimate interests in the disputed domain name and, accordingly, the Complainant has satisfied the requirements under paragraph 4(c) of the Policy as the second element of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances are deemed to be evidence that a respondent has registered and is using a domain name in bad faith:

(i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation or endorsement of its website or location or of a product or service on its website or location.

The Complainant contends that the Respondent has violated the bad faith provision of the Policy because the disputed domain name has been registered with the Respondent's knowledge of the Complainant's trademark and reputation.

The Complainant's first use and first registration of its HJA common law mark and trademark predate any use the Respondent may have made of the disputed domain name. The disputed domain name was registered in 2017 approximately 7 years after the Complainant's first use of its registered trademarks. Additionally, the Complainant registered the domain names and began operating its websites at: <hja.net>, <hja.law>, <hjainjury.net>, <hjallp.biz>, <hjallp.co.uk>, <hjallp.info>, <hjallp.net>, <hodgejonesallen.co.uk>, and <hodge-jones-allen.co.uk> since 1998 many years before the Respondent registered the disputed domain name in this case. The Respondent was aware of the Complainant's trademarks, domain names and websites associated with the same before it registered the disputed domain name.

It is the Panel's view, under the present circumstances, that the Respondent most likely registered the disputed domain name with full awareness of the Complainant's trademark as well as the goodwill associated with it.

It is clear in the Panel's view that in the mind of an Internet user, the disputed domain name could be directly associated with the Complainant's trademark, which is likely to be confusing to the public as suggesting either an operation of the Complainant or one associated with or endorsed by it (see AT&T Corp. v. Amjad Kausar, WIPO Case No. D2003-0327).

The Panel draws serious conclusion that according to the Complaint the Respondent could be involved in fraudulent activity as its main purpose for registering domain names. As stated in WIPO Overview 3.0, section 3.1.2, to establish a pattern of conduct, the Respondent must infringe a single owner's rights with multiple registrations or by having a history of multiple registrations involving diversity of trademarks. In this case, the Respondent has registered several domain names incorporating different law firms' names, in order to set up the same fraudulent scam.

The Panel finds that the Respondent's registration of the disputed domain name shows the Respondent's intent to rely on a risk of confusion with the Complainant's activity and trademark as to the source, sponsorship, affiliation or endorsement of the disputed domain name and website associated with it.

The Panel finds that the Complaint's submission that the Respondent was involved in the phishing attack against the Complainants' clients is extremely strong evidence of bad faith of the Respondent. Phishing, which is a form of Internet fraud that aims to steal valuable information such as credit cards, user ids, passwords, and money, can take various forms and in itself is the evidence that the disputed domain name was registered and is being used in bad faith.

The fact that the disputed domain name is currently inactive, in the Panel's view, supports a finding of bad faith under the present circumstances.

These findings, together with the finding that the Respondent has no rights or legitimate interests in the disputed domain name, lead the Panel to conclude that the disputed domain name was registered and is being used by the Respondent in bad faith.

The Respondent lack of reaction to a cease and desist letter send by the Complainant to him on July 9, 2018, in the Panel view, is additional evidence of bad faith of the Respondent.

The Panel finds that the Respondent registered and used the disputed domain name in bad faith and, accordingly, the Complainant has satisfied the requirements of paragraph 4(b) of the Policy as the third element of the Policy.

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 <hjallenllp.com> be transferred to the Complainant.

Irina V. Savelieva
Sole Panelist
Date: August 22, 2018