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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pinsent Masons LLP v. Alton screen

Case No. D2019-3016

1. The Parties

The Complainant is Pinsent Masons LLP, United Kingdom, represented internally. The Respondent is Alton screen, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <uk-pinsentmasons.com> 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 December 6, 2019. On December 6, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 9, 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 11, 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 December 13, 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 December 30, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 19, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 23, 2020

The Center appointed Antony Gold as the sole panelist in this matter on January 28, 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

The Complainant is a full service, international law firm. It has 25 offices, which are located in the United Kingdom, mainland Europe and various countries outside Europe. The Complainant was formed through the merger of a number of legal practices and commenced trading as “Pinsent Masons” in December 2004.

The Complainant is the owner of a website at “www.pinsentmasons.com” and has registered many trade marks worldwide for PINSENT MASONS, including the following:

- United Kingdom Trade Mark, registration number 00002340333, for PINSENT MASONS, registered on August 12, 2003 in classes 35, 36 and 42;

- European Union Trade Mark, registration number 003649076, for PINSENT MASONS, registered on March 18, 2005, in classes 35, 36 and 42.

The disputed domain name was registered on August 29, 2019. The Complainant has not accessed the website to which it resolves because its email filters have indicated that the website is associated with malware or spyware and therefore represents a security threat.

5. Parties’ Contentions

A. Complainant

The Complainant says that disputed domain name is identical or confusingly similar to a trade mark in which it has rights. The Respondent has simply placed the letters “uk”, together with a hyphen, in front of the Complainant’s PINSENT MASON trade mark in an attempt to confused Internet users into believing that the disputed domain name is authorized by the Complainant or is in some way connected to it. A domain name which consists of a trade mark coupled with a generic or descriptive word is insufficient to avoid a finding of confusing similarity. Moreover, the addition of the generic term “UK” makes no difference to the overall impression of the dominant words PINSENT MASONS; see Nintendo of America Inc. v. Fernando Sascha Gutierrez, WIPO Case No. D2009-0434.

The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Whilst the Complainant has been unable to access the website to which the disputed domain name resolves, it is reasonable to conclude that the Respondent registered the disputed domain name knowing that it is likely to attract Internet users who are searching for the Complainant. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, nor is it possible for the Respondent to have acquired any legitimate right to use the disputed domain name since its registration. The Complainant has no knowledge of the Respondent, nor has it authorized the Respondent to register the disputed domain name.

Lastly, the Complainant says that the disputed domain name was registered is being used in bad faith. Given the widespread use of the Complainant’s marks, the Respondent must have been aware that, in registering the disputed domain name, it was misappropriating the valuable intellectual property of the Complainant. Whilst the Respondent’s motives for registration of the disputed domain name are unclear, in the absence of any legitimate interest, the disputed domain name could have been registered for the purposes of sale or for generating click-through revenue or to redirect Internet traffic to an alternative website or to facilitate the creation of email addresses which could be used for illegitimate or fraudulent purposes. None of these purposes would constitute fair use and, as such, the Respondent has not generated any legitimate interest in the disputed domain name. The Respondent’s registration of the disputed domain name has also prevented the Complainant from registering a domain name which corresponds to the Complainant’s trade marks. The Respondent will never be capable of using the disputed domain name for a legitimate purpose as the notoriety of the Complainant is such that members of the public will always assume that there is an association between the disputed domain name and the Complainant and/or its trade marks.

B. Respondent

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

6. Discussion and Findings

Dealing, first, with the Respondent’s failure to file a response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate.

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order to succeed in its Complaint:

(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(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 established its rights in the PINSENTS MASONS trade mark.

For the purpose of determining whether the disputed domain name is identical or confusingly similar to this mark, the generic Top-Level Domain (“gTLD”) “.com” is disregarded as this is a technical requirement of registration. The disputed domain name comprises the Complainant’s PINSENT MASONS trade mark in full preceded by the letters “uk” and a hyphen. The hyphen is of no significance. Whether or not “UK” is perceived by consumers as having any particular meaning does not impact on an assessment of whether the disputed domain name is confusingly similar to the Complainant’s mark. As explained at section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”); “[w]here the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”.

The Complainant’s mark is clearly recognizable within the disputed domain name and the Panel accordingly finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides, without limitation examples of circumstances whereby a respondent might demonstrate that it has rights or legitimate interests in a domain name. In summary, these are if a respondent has used or prepared to use the domain name in connection with a bona fide offering of goods and services, if a respondent has been commonly known by the domain name, or if a respondent has made a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark in issue.

Turning to the first of these circumstances, the exact use to which the disputed domain name has been put is not known because the Respondent’s website would appear to be contaminated by malware or spyware and the Complainant’s website filters have blocked access. There might conceivably be circumstances in which either a complainant, or a panel exercising its general powers under paragraphs 10 and 12 of the Rules, might try to find a means of safely visiting a respondent’s infected website in order to explore the content for the purposes of considering the second element of the Policy. That is not necessary here; the distinctive character of the Complainant’s mark is such as to place the ball firmly in the Respondent’s court to explain how it might be capable of using the disputed domain name in connection with a bona fide offering of goods and services. It has not attempted to do so and it is unnecessary for the Panel to engage in speculation about the content of its website. Moreover, section 2.13.1 of the WIPO Overview 3.0 explains that “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”.

The second of the circumstances set out at paragraph 4(c) is inapplicable; there is no evidence to indicate that the Respondent has been commonly known by the disputed domain name. So far as the third circumstance is concerned, the registration of the disputed domain name is plainly is intended to produce some commercial benefit for the Respondent. Furthermore, the similarity between the disputed domain name and the Complainant’s mark is such as not to amount to fair use of the disputed domain name. In this respect, see section 2.5.1 of the WIPO Overview 3.0; “[W]here a domain name consists of a trademark plus an additional term (at the second- or Top-Level), UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner”.

The Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name and the burden of production accordingly shifts to the Respondent. As it has not responded to the Complaint it has not, self-evidently, satisfied this requirement and the Panel accordingly finds that the Respondent has no rights or legitimate interests with respect to the disputed domain name.

C. Registered and Used in Bad Faith

Dealing first with registration, section 3.1.4 of the WIPO Overview 3.0 explains that: “[p]anels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trade mark by an unaffiliated entity can by itself create a presumption of bad faith”. The Complainant’s mark is sufficiently distinctive to enable the Panel to discount any possibility that the Respondent registered the disputed domain name without any awareness of the Complainant and its mark. The Panel considers that the Respondent registered the disputed domain name in order to obtain some form of illegitimate advantage from it (as discussed below) and accordingly finds that such registration was in bad faith.

An assessment of the specific use to which the Respondent has put the disputed domain name cannot be made because it is not possible safely to visit the website to which it resolves. Moreover, as the Complainant has indicated, whilst Respondent’s specific motive in registering the disputed domain name is unclear, a number of potential bad faith motives come readily to mind, including sale (to the Complainant or to a third party) for a sum in excess of its out of pocket costs, use for the purpose of generating click-through income from hits to its website or use for fraudulent purposes, for example by the creation of email addresses similar to those used by the Complainant.

Whatever the Respondent’s actual motives, it is not possible to conceive of a plausible good faith use to which the disputed domain name could be put and the Respondent has not submitted a response attempting to suggest otherwise. The circumstances which would support a finding of bad faith, as set out at paragraph 4(b) of the Policy, are without limitation. In addition to the factors outlined above, the Respondent’s website is infected with malware, there is a manifest absence of any rights on the part of the Respondent in the Complainant’s mark and there is clear malintent on the part of the Respondent; see, on broadly similar facts, Spoke Media Holdings, Inc. v. Andrey Volkov, WIPO Case No. D2010-1303. The Panel accordingly finds that the Respondent has registered and is using the disputed domain name 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 disputed domain name <uk-pinsentmasons.com> be transferred to the Complainant.

Antony Gold
Sole Panelist
Date: February 11, 2020

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