WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Linklaters LLP v. Domain Admin, Privacy Protect, LLC / Patrick Leitner
Case No. D2019-0096
1. The Parties
The Complainant is Linklaters LLP of London, the United Kingdom.
The Respondent is Domain Admin, Privacy Protect, LLC of Burlington, United States of America (“United States”) / Patrick Leitner of Chicago, Illinois, United States.
2. The Domain Name and Registrar
The disputed domain name <linklatersllp.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 16, 2019. On January 16, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 17, 2019, 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 January 18, 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 amended Complaint on January 22, 2019.
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 January 24, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 13, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 14, 2019.
The Center appointed Luca Barbero as the sole panelist in this matter on February 20, 2019. 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 Limited Liability Partnership registered in the United Kingdom since February 27, 2007 and is authorized and regulated by the Solicitors Regulation Authority of England and Wales.
The Complainant, its affiliates and predecessors have been providing legal services since 1838, as shown in “About us” section of the website “www.linklaters.com”.
Today, the Complainant and its affiliates provide legal services under the name LINKLATERS from 30 offices in 20 countries worldwide.
The Complainant’s wholly owned subsidiary Linklaters Business Services owns registered trademarks for LINKLATERS in various countries worldwide, including the following:
- United Kingdom trademark registration Nos. 1274996 for LINKLATERS (word mark), filed on October 1, 1986, in class 35; 1315277 for LINKLATERS (word mark), filed on July 9, 1987, in class 42; and 2200536 for LINKLATERS (word mark), filed on June 17, 1999, in classes 9, 16, 35, 36, 41, 42 and 45;
- European Union trademark registration Nos. 165043 for LINKLATERS (word mark), filed on April 1, 1996, in classes 35 and 42; and 1209477 for for LINKLATERS (word mark), filed on June 17, 1999, in classes 9, 16, 35, 36, 41 and 42;
- United States trademark registration No. 2633820 for LINKLATERS (word mark), filed on August 25, 1999, in classes 16, 35, 36, 41 and 42.
The Complainant’s wholly owned subsidiary Linklaters Business Services is also the owner of the domain name <linklaters.com>, which was registered on September 23, 1996 and is used to promote the legal services of the Complainant and its affiliated companies worldwide.
The disputed domain name <linklatersllp.com> was registered on November 30, 2018 and is pointed to a webpage indicating that the account has been suspended.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to its trademark LINKLATERS since it reproduces the trademark in its entirety with the mere addition of the suffix “llp”, and highlights that the resulting term “linklatersllp” corresponds to the Complainant’s full registered name Linklaters LLP.
The Complainant states that the Respondent has no rights or legitimate interests in the disputed domain name and that neither the Respondent nor any third party appear to be making any legitimate commercial or noncommercial use of the disputed domain name, as the corresponding website is not active.
The Complainant submits that the disputed domain name was registered and is being used in bad faith as the Respondent created on its basis email addresses which have been used in a way that has confused people into falsely believing that emails sent from those email addresses were sent by, or on behalf of, the Complainant. As highlighted by the exchange of correspondence submitted by the Complainant as annex to the Complaint, such email addresses were indeed used in connection with fake job offers claiming to come from the Complainant and requesting recipients to provide their personal information as well as bank and credit card details.
The Complainant also states that there is a very significant risk that the disputed domain name will continue to be used in such a manner as to confuse people into thinking that it is controlled by the Complainant or an entity affiliated to the Complainant in the future.
The Complainant also notes that the use of the disputed domain name may be fraudulent and/or criminal and informs the Panel that it has also alerted the relevant law enforcement agencies in the United States as well as the Solicitors Regulations Authority of England and Wales with regard to this activity.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has established rights in the trademark LINKLATERS for purposes of standing to file its Complaint under the Policy based on the numerous trademark registrations for LINKLATERS registered in the name of its wholly owned subsidiary Linklaters Business Services, including the ones cited in Section 4 above.
It is well accepted that the first element functions primarily as a standing requirement, and that the threshold test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name to assess whether the trademark is recognizable within the disputed domain name (Section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Moreover, where the relevant trademark is recognizable within the disputed domain name, the addition of a descriptive term does not prevent a finding of confusing similarity under the first element (Section 1.8 of the WIPO Overview 3.0).
The Panel notes that the disputed domain name reproduces the trademark LINKLATERS in its entirety with the addition of the three-letter term “llp”, which does not prevent a finding of confusing similarity. This term is a common abbreviation for “Limited Liability Partnership” and corresponding to the Complainant’s legal form of business.
Therefore, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to a trademark in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel finds that the Complainant has made a prima facie case and that the Respondent, by not having submitted a Response, has failed to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy for the following reasons.
According to the evidence on record, there is no relationship between the Complainant and the Respondent and the Complainant has not authorized the Respondent to register or use its trademark or the disputed domain name and there is no evidence that the Respondent might be commonly known by the disputed domain name.
As mentioned above, the disputed domain name has not been pointed to an active website but it has been used for the creation of email addresses adopted in connection with the sending of emails claiming to be originated from the Complainant and promoting false job offers, requesting prospective job applicants to provide their personal information as well as bank and credit card details.
The Panel finds that the Respondent’s use of the disputed domain name for such phishing purposes does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademark.
See, along these lines, 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, or other types of fraud) can never confer rights or legitimate interests on a respondent.”
Therefore, the Panel finds that the Complainant has proven the requirement prescribed by paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the Complainant prove that the disputed domain name was registered and is being used by the Respondent in bad faith.
The Panel finds that, in light of the prior registration and use of the Complainant’s trademark LINKLATERS in connection with the Complainant’s legal services and of the virtual identity of the disputed domain name with the Complainant’s trademark and its registered name “Linklaters LLP”, the Respondent very likely registered the disputed domain name having the Complainant’s trademark in mind.
As to the use of the disputed domain name, the Panel notes that it has not been pointed to an active website. However, according to the records, the disputed domain name appears to have been used in connection with the sending of fraudulent email communications pretending that the sender was a Complainant’s employee and offering job opportunities, but actually aimed at obtaining users’ personal and financial information.
As stated in Section 3.4 of the WIPO Overview 3.0, “Panels have held that the use of a domain name for purposes other than to host a website may constitute bad faith. Such purposes include sending email, phishing, identity theft, or malware distribution. (…) Many such cases involve the respondent’s use of the domain name to send deceptive emails, e.g., to obtain sensitive or confidential personal information from prospective job applicants, or to solicit payment of fraudulent invoices by the complainant’s actual or prospective customers”.
In view of the circumstances of the case and since the Respondent has failed to file a Response and submit counter-allegations to rebut the Complainant’s contentions, the Panel finds that the Respondent’s registration and use of the disputed domain name amounts to bad faith.
Therefore, the Panel finds that the Complainant has also proven the requirement prescribed by paragraph 4(a)(iii) of the Policy.
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 <linklatersllp.com> be transferred to the Complainant.
Date: March 6, 2019