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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Mills & Reeve LLP v. WhoIs Privacy Corp.

Case No. D2019-2418

1. The Parties

The Complainant is Mills & Reeve LLP, United Kingdom, represented internally.

The Respondent is WhoIs Privacy Corp., Bahamas.

2. The Domain Name and Registrar

The disputed domain name <mills-reeve.org> 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 October 4, 2019. On October 7, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 11, 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 December 13, 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 December 16, 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 December 17, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 6, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 7, 2020.

The Center appointed Colin T. O'Brien as the sole panelist in this matter on January 17, 2020. 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

Complainant is an English firm of solicitors and has provided legal services within the United Kingdom and internationally under the name “Mills & Reeve” since 1989. Complainant represents businesses in the United Kingdom and around the world, including organizations listed on the FTSE Index and the Alternative Investment Market (AIM) of the London Stock Exchange.

Complainant is also the owner of the United Kingdom Trademark Registration No. 00002354464 for MILLS & REEVE covering the following goods and services:

Class 16: Printed matter; printed publications; periodicals, books, booklets, handbooks, manuals; brochures; instructional and teaching material.

Class 35: Company office secretarial services; provision of initial company secretarial services on company formation; provision of nominee company directors; business services; business consultancy; business advice; business assistance; business research and analysis; business investigations; business information and enquiries, arranging business introductions; evaluation of business opportunities; advisory services relating to business acquisitions; business evaluation services; writing and reviewing of business reports and plans; information, advisory and consultancy services relating to all the aforesaid; including all the aforesaid services provided on-line from a computer database and/or intranets and/or extranets and/or the Internet.

Class 36: Advisory and consultancy services relating to finance; financial services provided by solicitors; services relating to tax and pensions; financial advice relating to trusts, inheritance and wills; trustee services; debt recovery and collection; services for the finding of venture capital; services for facilitating and/or enabling the making of financial grants to businesses; information, advisory and consultancy services relating to all the aforesaid; including all the aforesaid services provided on-line from a computer database and/or intranets and/or extranets and/or the Internet.

Class 41: Educational and training services relating to the provision of legal advice and/or legal services; electronic publishing; arranging, organizing and conducting colloquiums, conferences, exhibitions, seminars and symposia; information, advisory and consultancy services.

Respondent registered the disputed domain name <mills-reeve.org> on April 25, 2019 long after Complainant had been using its MILL & REEVE mark. Currently the disputed domain name does not resolve to an active website but the Respondent is using the following email address: inform@mill-reeve.org to communicate with individuals who were attempting to contact Complainant.

5. Parties’ Contentions

A. Complainant

The disputed domain name is confusingly similar to Complainant’s MILL & REEVE trademark and domain name <mills-reeve.com>, with the only difference being the replacement of the ‘.com’ top level domain of Complainant’s domain name with ‘.org’ and the replacement of “&” with “-”.

The disputed domain name is being used as part of the email address that Respondent has used to contact potential clients of Complainant claiming to offer identical services as Complainant which has created actual confusion.

Complainant asserts there is no other law firm in the United Kingdom operating under the name “Mills & Reeve” or “Mills and Reeve” other than Complainant itself.

Complainant has never instructed, nor authorized any person to register or use the disputed domain name.

The disputed domain name is being used for commercial gain to intentionally mislead and divert consumers away from services genuinely offered by Complainant.

The disputed domain name was registered long after Complainant had acquired rights in the Mills & Reeve name, and more than 14 years after registration of the MILLS & REEVE Trademark in the United Kingdom.

Respondent has copied language which is used on Complainant’s website when sending emails using the disputed domain name indicating Respondent has full knowledge of Complainant and Complainant’s rights.

Respondent is using the disputed domain name with the clear intent for commercial gain; as evidenced by the invoice sent to an individual who had thought he was working with Complainant.

The disputed domain name is being used, by medium of an email address, to offer services which are purportedly provided by Complainant.

Respondent is deliberately using the disputed domain name for no other purpose than to falsely represent that it is associated with Complainant and/or to falsely represent that its services are, or are associated with, those of Complainant.

Respondent has created a likelihood of confusion as to the source, sponsorship, affiliation and/or endorsement of its services purportedly offered using the disputed domain name.

Respondent is exploiting the likelihood of confusion it has manufactured by attempting to elicit the payment of fees from consumers by providing bank account details to facilitate the same.

Respondent is exploiting the likelihood of confusion to obtain sensitive confidential information from members of the public.

Respondent’s actions pose a significant threat to the reputation and business of Complainant.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

Complainant has demonstrated it owns registered trademark rights in the MILLS & REEVE mark and that no other entity has rights or uses the mark. The addition of “.org” and the substitute of “&” for “-” is does not prevent a finding of confusing similarity.

Accordingly, the disputed domain name is confusingly similar to a mark in which Complainant has rights.

B. Rights or Legitimate Interests

Complainant has presented a prima facie case that Respondent has no rights or legitimate interests in respect of the disputed domain name; has not at any time been generally known by the disputed domain name; has not used or made demonstrable preparations to use the disputed domain name and is not making a legitimate noncommercial of fair use of the disputed domain name. Complainant has also presented prima facie evidence Respondent has attempted to illegitimately deceive potential clients of Complainant that Respondent is actually Complainant. This is done in order to both steal money and to obtain sensitive personal information from unsuspecting parties.

After a complainant has made a prima facie case, the burden of production shifts to the respondent to present evidence demonstrating rights or legitimate interests in the domain name. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.

Here, Respondent has provided no evidence of any right or legitimate interest in the disputed domain name.

In the absence of any evidence indicating a legitimate reason for registering the disputed domain name, the Panel finds that Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The disputed domain name was registered many years after Complainant first registered and used its MILLS & REEVE trademark. Given the evidence provided by Complainant it is clear Respondent undoubtably knew of Complainant’s MILLS & REEVE mark and knew that it had no rights or legitimate interests in the disputed domain name. There is no non-benign reason for Respondent to have registered a domain name that is virtually identical to Complainant’s name and trademark.

Further, the use of the disputed domain name by Respondent is in bad faith. Paragraph 4(b)(iv) states that evidence of bad faith may include a respondent’s use of a domain name to intentionally attempt to attract, for commercial gain. Complainant has also submitted evidence that Respondent has used the disputed domain name to send emails to members of the public in order to take their money and personal information. This is clearly indictive of bad faith on the part of Respondent.

In the absence of any evidence or explanation from Respondent, the Panel finds that the only plausible basis for registering the disputed domain name has been for illegitimate purposes.

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 <mills-reeve.org> be transferred to Complainant.

Colin T.J. O’Brien
Sole Panelist
Date: January 30, 2020

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