WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Howes Percival LLP v. Redacted for Privacy, Whois Privacy Foundation / Chadwick James Associate, Bruce Viper

Case No. D2019-2731

1. The Parties

The Complainant is Howes Percival LLP, United Kingdom, represented by Howes Percival LLP, United Kingdom.

The Respondent is Redacted for Privacy, Whois Privacy Foundation / Chadwick James Associate, Bruce Viper, United Kingdom (see discussion below as to Respondent identity).

2. The Domain Name and Registrar

The disputed domain name <howespercivals.com> (the Disputed Domain Name”) is registered with Hosting Concepts B.V. d/b/a Openprovider (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 7, 2019. On November 7, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 8, 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 November 8, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant declined to amend the Complaint

The Center verified that 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 November 19, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 9, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 10, 2019.

The Center appointed Nick Gardner as the sole panelist in this matter on December 18, 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 firm of solicitors (lawyers) based in the United Kingdom. It was incorporated under its present name in 2006 but its predecessors in title have used the name Howes Percival since about 1900.

The Complainant’s main web site is linked to the domain name <howespercival.com> and it uses that domain name for its email addresses. It has done so since about 2003.

The Complainant’s annual turnover for the year to April 2019 was over GBP121 million. It spends over GBP120,000 per annum advertising its services under the name Howes Percival.

The filed evidence establishes the Complainant has promoted its services in the United Kingdom and is well known and widely recognised by customers seeking such services.

The Respondent registered the Disputed Domain Name on October 5, 2019. At the time of this decision it does not resolve to an active web site but the Complainant’s evidence establishes that it has been used with emails which seek to impersonate the Complainant and trick third parties to send money intended for the Complainant to other destinations presumably controlled by the Respondent

5. Parties’ Contentions

A. Complainant

The Complainant says it has common law trademark rights in its name “Howes Percival”. The Complainant says that the Disputed Domain Name is confusingly similar to its trademark. It simply adds an “s” to the Howes Percival name.

The Complainant says that the Respondent has no rights or legitimate interests in the term “Howes Percival” or “Howes Percivals””.

The Complainant says that the Respondent’s registration and use of the Disputed Domain Name is in bad faith. It says it is clearly fraudulent and is being used in connection with an email impersonation fraud.

B. Respondent

No Response has been filed.

6. Discussion and Findings

Preliminary Matters - Respondent Identity

The Complaint as filed was directed at “Redacted for Privacy. Whois Privacy Foundation”. Registrar verification identified “Chadwick James Associate, Bruce Viper” as the substantive respondent. The Complainant did not however accede to the Center’s suggestion to formally amend the Complaint. In these circumstances the Panel will use the term “Respondent” to refer to either or both of the entities in question.

Preliminary Matters - Lack of Response

The Panel notes that no communication has been received from the Respondent. However, given the Complaint and Written Notice were sent to the relevant addresses included in the Complaint and disclosed by the Registrar, then the Panel considers that this satisfies the requirement in paragraph 2(a) of the UDRP Rules to “employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent’s failure to file any Response. While the Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default (see, e.g., Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909).

Substantive Matters

To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:

(i) the Disputed Domain Name is identical with or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(iii) the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has not relied upon any registered trademarks. The Panel however finds that the Complainant has rights in the unregistered trademark HOWES PERCIVAL for the purpose of this proceeding. It is clear that “HOWES PERCIVAL” was adopted as the substantive part of the Complainant’s predecessors name with effect from around 1900 and has been used on that basis ever since. The evidence also establishes the Complainant has developed a substantial reputation for its services provided under that name.

The Panel agrees with the approach in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) concerning this issue at section 1.3:

“What does a complainant need to show to successfully assert unregistered or common law trademark rights?

To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier, which consumers associate with the complainant’s goods and/or services.

Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.

(Particularly with regard to brands acquiring relatively rapid recognition due to a significant Internet presence, panels have also been considering factors such as the type and scope of market activities and the nature of the complainant’s goods and/or services.)

Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint; conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning. In cases involving unregistered or common law marks that are comprised solely of descriptive terms which are not inherently distinctive, there is a greater onus on the complainant to present evidence of acquired distinctiveness/secondary meaning.”

The Panel does not consider the term “HOWES PERCIVAL” to be descriptive and is satisfied on the evidence as filed that the Complainant has shown it has unregistered trademark rights in that term. It is referred to below as the “HOWES PERCIVAL trademark”. Accordingly the Panel is satisfied that the Complainant’s use (see above) is sufficient to have established unregistered trademark rights in the term “HOWES PERCIVAL” for the purpose of the Policy and for example moreover, in England and Wales this would be sufficient to establish an action for the tort of passing off under English law.

The Panel finds the Disputed Domain Name is confusingly similar to this trademark. It involves the addition of the letter “s”. It is visually and phonetically similar. The Panel agrees in this regard with the approach set out in WIPO Overview 3.0 namely section 1.9:

“Is a domain name consisting of a misspelling of the complainant’s trademark (i.e. typosquatting) confusingly similar to the complainant’s mark? A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element.”

It is also well established that the generic Top-Level Domain (“gTLD”), in this case “.com”, does not affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar. See, for example, Rollerblade, Inc. v. Chris McReady, WIPO Case No. D2000-0429.

Accordingly the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.

B. Rights or Legitimate Interests

The Panel finds the Complainant has a substantial reputation in relation to the HOWES PERCIVAL trademark which is well known in the United Kingdom in relation to legal services.

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:

(i) before any notice to the respondent of the dispute, use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark 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 trademark or service mark at issue.

None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the HOWES PERCIVAL trademark. The Complainant has prior rights in the HOWES PERCIVAL trademark which precede the Respondent’s registration of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see, for example, Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

The Panel finds that the Respondent has failed to produce any evidence to establish its rights or legitimate interests in the Disputed Domain Name. Accordingly, the Panel finds the Respondent has no rights or legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled.

C. Registered and Used in Bad Faith

Under paragraph 4(b) of the Policy a non-exhaustive list of factors evidencing registration and use in bad faith comprises:

(i) circumstances indicating that you have registered or you have 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 that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

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

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

The evidence filed by the Complainant establishes on a balance of probabilities that the Respondent has used the Disputed Domain Name in connection with emails which are part of a dishonest and potentially fraudulent scheme to divert funds intended for the Complainant. Whilst such conduct is not squarely within any of the above categories that list is non exhaustive. It is well established that use of a domain name in connection with what appears to be fraudulent activity provides compelling evidence of bad faith registration and use of the associated domain name – see for example Australia and New Zealand Banking Group Limited v. Bashar Ltd, WIPO Case No. D2007-0031, Grupo Financiero Inbursa, S.A. de C.V v. inbuirsa, WIPO Case No. D2006-0614, Halifax Plc. v. Sontaja Sunducl, WIPO Case No. D2004-0237, CareerBuilder LLC v. Stephen Baker, WIPO Case No. D2005-0251, Finter Bank Zurich v. N/A, Charles Osabor, WIPO Case No. D2005-0871, and Banca Intesa S.p.A. v. Moshe Tal, WIPO Case No. D2006-0228.

In addition, the Respondent has been given an opportunity to provide any reasonable explanation it may have as to its activities. Again, based on the evidence provided by the Complainant, the Panel finds that the burden of production in (third) element respect is shifted to the Respondent. The Panel finds that the Respondent has failed to produce any evidence to establish a good faith registration and use of the Disputed Domain Name.

Accordingly, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith. Accordingly, the third condition of paragraph 4(a) of the Policy has been fulfilled.

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 <howespercivals.com> be transferred to the Complainant.

Nick J. Gardner
Sole Panelist
Date: January 1, 2020