WIPO Arbitration and Mediation Center


Mills and Reeve LLP v. sam grand

Case No. D2019-0014

1. The Parties

The Complainant is Mills and Reeve LLP of London, United Kingdom (“U.K.”), internally represented.

The Respondent is sam grand of Warri, Nigeria.

2. The Domain Name and Registrar

The disputed domain name <millsandreeve.net> is registered with Internet Domain Service BS Corp (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 3, 2019. On January 3, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 4, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name that differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 7, 2019, 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 amendment to the Complaint on January 9, 2019.

The Center verified that the Complaint together with the amendment to 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 January 11, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 31, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 1, 2019.

The Center appointed Richard G. Lyon as the sole panelist in this matter on February 7, 2019. The Panel finds that it was properly constituted and has jurisdiction to decide this administrative proceeding. The Panel has submitted his 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, a law firm with several offices in the U.K., holds a U.K.-registered trademark for MILLS & REEVE that was first registered in 2004. The Complainant has practiced under its current name since 1989. Its principal website is <mills-reeve.com>.

The Respondent registered the disputed domain name in August 2017 and renewed it in August 2018. At present the disputed domain name resolves to what appears to be a registrar-generated page with hyperlinks on topics related to the practice of law in London and the U.K.

5. Parties’ Contentions

The Complainant’s contentions are set forth in section 6 below. The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) The 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 with respect to the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant contends that this Policy element is satisfied because the Respondent’s use constitutes trademark infringement under English law as the disputed domain name is "identical with and/or closely similar to" the Complainant’s principal domain name and registered trademark. That similarity has caused confusion among the Complainant’s clients as evidenced by emails and telephone calls inquiring about the disputed domain name and asking if its owner is somehow affiliated with the Complainant. One of the emails used the street address of one of the Complainant’s offices and appeared to solicit business for legal services.

Paragraph 4(a)(i) of the Policy has two parts: Complainant’s rights in a trade or service mark, and the disputed domain name’s identity with or confusing similarity to that mark. The Complainant’s ownership of a nationally registered trademark satisfies the first prong, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2. The second prong “involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. WIPO Overview 3.0, section 1.7. An infringement is not necessary to meet what is essentially a standing requirement. As the only difference between the Complainant’s mark and the disputed domain name is substitution of the word and for an ampersand, a symbol that means the same thing, the Complainant has met its burden of proof. Paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

The Complainant contends that it is the only law firm in the U.K. registered under the name Mills & Reeve and that the Complainant has not authorized either the Respondent or the person identified in the client emails referred to in subsection 6.A to use its name. As one of those emails uses an address in a city in which the Complainant maintains an office, the Respondent must have had “full knowledge” of the Complainant and its mark.

Nothing in the record suggests that the Respondent has ever been commonly known independently of the disputed domain name by Mills, Reeve, or any combination of the two. The Complainant has not authorized the Respondent to use its mark. The Complainant has thus made a prima facie case that the Respondent lacks a right or legitimate interest in the disputed domain name. The burden of production thus shifts to the Respondent to demonstrate bona fide use or other right or legitimate interest. WIPO Overview 3.0, section 2.1. The Respondent has submitted nothing. The Complainant has met its burden of proof under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainant contends that the infringement referred to above demonstrates bad faith. It further contends that bad faith is established because the disputed domain name:

“i. was registered for the purpose of damaging the reputation and disturbing the business of [the Complainant]; and/or

ii. has been intentionally used to attract, for commercial gain, Internet users to [the Respondent’s website], by creating a likelihood of confusion with [the Complainant’s trademarks] as to the source, affiliation, or endorsement of [the Respondent’s website], and/or

iii. is being used to tarnish the Complainant’s trade mark.”

Item ii. above mirrors the example of bad faith set out in paragraph 4(b)(iv) of the Policy, and has been proven in this case. The client emails submitted with the Complaint demonstrate use of the disputed domain name as an email address for enquiries intended for the Complainant, clear evidence of targeting. Use of the Complainant’s office address does as the Complainant contends indicate the Respondent’s knowledge of the Complainant and its mark. Bad faith has been proven.

D. A Word of Caution

The Complainant has proceeded under the erroneous assumption that demonstrating a trademark infringement ipso facto proves its case under the Policy, going so far as to lay out the elements of infringement and passing off under English law. After almost two decades and thousands of cases, the Policy has its own body of precedent and, for lack of a better non-legalese word, jurisprudence. Though initially drawn from and still largely based upon the trademark law of many jurisdictions, there are substantive and procedural differences. Not every infringement establishes bad faith,1 and bad faith may be proven without an infringement, as indeed the Complainant has done here with its proof of improper use of the disputed domain name for an email address.

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 <millsandreeve.net> be transferred to the Complainant.

Richard G. Lyon
Sole Panelist
Date: February 18, 2019

1 E.g., Cleanroom Equipment Limited v. Eamon Bowe, MCR Outsourcing Limited, WIPO Case No. DIE2018-0009 (“The Complainant devotes much of its submission to the issue of passing off but, in this proceeding, the Panel’s focus is on whether the disputed domain name was registered or used in bad faith in accordance with the IEDR Policy.”); Toronto Star Newspapers Limited v. Capital Networks Limited, WIPO Case No. DTV2001-0002 (“It may be that the subject domain name violates the intellectual property rights of the Complainant, but that is not a matter to be resolved in this domain name dispute process. The focus of this proceeding is narrow and specific.”).