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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pinsent Masons LLP v. Grey, CDLP

Case No. D2019-0854

1. The Parties

The Complainant is Pinsent Masons LLP, United Kingdom (“UK”), represented internally.

The Respondent is Grey, CDLP, UK.

2. The Domain Name and Registrar

The disputed domain name <pinsentmasons-uk.com> (the “Domain Name”) 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 April 16, 2019. On April 16, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 17, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the 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 17, 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 April 18, 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 April 26, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 16, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 17, 2019.

The Center appointed Ian Lowe as the sole panelist in this matter on May 24, 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 full-service international law firm providing legal services across a broad spectrum of practice areas. It operates through 25 offices in the UK, Europe, the Gulf, Asia Pacific, and Africa. The Complainant has over 400 partners, a total legal team of around 1,800, and more than 2,500 staff. It has carried on business under the name Pinsent Masons LLP since a merger in 2004, and promotes its services through its website at “www.pinsentmasons.com”.

The Complainant is the proprietor of a number of registered trademarks in respect of PINSENT MASONS including UK trademark number 2484418 registered on September 12, 2008, and European Union trademark number 6819197 registered on November 26, 2008.

The Domain Name was registered on March 19, 2019, and does not resolve to an active website. The Complainant was notified by one of its clients that it had received an email from an email address at the Domain Name fraudulently requesting payment to the Respondent of GBP 3,000.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is confusingly similar to its PINSENT MASONS trademark, that the Respondent has no rights or legitimate interests in respect of the Domain Name, and that the Respondent registered and is using the Domain Name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.

B. Respondent

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

6. Discussion and Findings

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name the Complainant must prove that:

(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 in respect of 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 has uncontested rights in the trademark PINSENT MASONS, both by virtue of its several trademark registrations and as a result of the goodwill and reputation acquired through its use of the PINSENT MASONS mark over some 15 years. Ignoring the generic Top-Level Domain (“gTLD”) “.com”, the Domain Name comprises the Complainant’s mark together with “-uk”. In the Panel’s view, the additional hyphen and letters does not detract from the distinctiveness of the PINSENT MASONS mark. Accordingly, the Panel finds that the Domain Name is confusingly similar to a mark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Complainant has submitted strong prima facie evidence that the Respondent can have no rights or legitimate interests in respect of the Domain Name. It has provided evidence that the Respondent is using the Domain Name to send fraudulent emails seeking unauthorized payments. By using a domain name confusingly similar and substantially identical to the name of the Complainant, the Respondent has attempted to mislead at least one recipient into believing that they were dealing with the Complainant.

The Respondent has chosen not to respond to the Complaint and has accordingly failed to counter the prima facie case established by the Complainant. In the circumstances, the Panel finds that the Respondent does not have any rights or legitimate interests in respect of the Domain Name.

C. Registered and Used in Bad Faith

The Panel considers that there is no doubt that the Respondent had the Complainant in mind when it registered the Domain Name and that it did so with the intention of using the Domain Name to deceive Internet users into believing that it was registered by or associated with the Complainant, all with a view to commercial gain through deceptive emails. The Panel cannot conceive of a legitimate use to which the Respondent could put the Domain Name. This amounts to paradigm bad faith registration and use for the purposes of paragraph 4(a) of the Policy. In the circumstances, the Panel finds that the Domain Name was registered and is being used in bad faith.

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 Domain Name <pinsentmasons-uk.com> be transferred to the Complainant.

Ian Lowe
Sole Panelist
Date: June 4, 2019

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