WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Lewis Silkin LLP v. 高新区通安洛法克贸易商行 (gao xin qu tong an luo fa ke mao yi shang hang)

Case No. D2020-0487

1. The Parties

The Complainant is Lewis Silkin LLP, United Kingdom, internally represented.

The Respondent is 高新区通安洛法克贸易商行 (gao xin qu tong an luo fa ke mao yi shang hang), China, represented by 光华知识产权有限公司 (Guanghua Intellectual Property Co., Ltd.).

2. The Domain Name and Registrar

The disputed domain name <lewissilkinlaw.com> (the “Disputed Domain Name”) is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 28, 2020. On February 28, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 2, 2020, 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 March 3, 2020 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 in English on March 4, 2020.

On March 3, 2020, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on March 6, 2020. The Respondent did not comment on the language of the proceeding.

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 in English and Chinese of the Complaint, and the proceedings commenced on March 11, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 31, 2020. The Respondent filed the Response mainly in Chinese on March 23, 2020. The Center notified the Parties that it will proceed to Panel Appointment on March 23, 2020. The Complainant submitted an unsolicited supplemental filing to the Center on March 27, 2020.

The Center appointed Peter J. Dernbach as the sole panelist in this matter on April 1, 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.

The Panel reviewed the Complainant’s supplemental filing and decided to accept such filing. Therefore, on April 15, 2020, at the request of the Panel, the Center issued the Procedural Order No. 1 to the Parties affording the Respondent five calendar days to comment on the Complainant’s assertions included in its supplemental filing. The Respondent replied to the Procedural Order No. 1 on April 17, 2020.

4. Factual Background

The Complainant, Lewis Silkin LLP, is an established commercial law firm with offices in London, Oxford, Cardiff, Ireland and Hong Kong, China. The firm has 56 partners and more than 90 lawyers with a total of 340 members of staff and provides services within the United Kingdom and internationally.

The Complainant was founded in 1952, and was then known as “Lewis Silkin Partners”. The Complainant has gone through several iterations over the years before becoming a limited liability partnership in 2006, registered in England. The Complainant is a holding company now associated with Lewis Silkin Services Limited and 5CL Limited (trading as Eleven Advisory), which are wholly owned subsidiaries.

The Complainant is the registered proprietor of the following trade mark registrations (amongst others):

(i) United Kingdom Trade Mark registration number UK00001583165 for LEWIS SILKIN, filed on August 23, 1994 and registered on September 29, 1995 (covering NICE Classes 16, 41 and 45); and

(ii) European Union Trade Mark registration number 010516227 for LEWIS SILKIN, filed on December 21, 2011 and registered on June 18, 2012 (covering NICE Classes 35, 41 and 45).

The Respondent is the registered proprietor of the following trade mark registration (amongst others):

(i) China Trade Mark registration number 25220519 for LEWIS SILKIN, filed on July 7, 2017 and registered on June 28, 2018 (covering NICE Class 45).

The Respondent’s China Trade Mark application was published after a preliminary examination on March 27, 2018. The Complainant filed opposition in China against the Respondent’s China Trade Mark application on June 27, 2018. The opposition was denied by the China Trade Mark Office on December 2, 2019 and the trade mark registration was therefore granted by the China Trade Mark Office. According to the Trademark Law of the People’s Republic of China, Article 35, the Complainant may still file a request for invalidation of the disputed China Trade Mark registration number 25220519.

The Respondent registered the Disputed Domain Name <lewissilkinlaw.com> on January 10, 2020, after receiving the decision granting the Respondent the trade mark right from the China Trade Mark Office. The Disputed Domain Name resolves to a website providing legal services.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions could be summarized as follows:

(i) The Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights.

The Disputed Domain Name entirely incorporates the Complainant’s LEWIS SILKIN mark while the Complainant has long-standing registered rights in the word LEWIS SILKIN. LEWIS SILKIN is a clear identifier of the founding partner of the law firm that is the Complainant, making it all the more distinctive. The only additional word element in the Disputed Domain Name, “law” describes the nature of the services provided by the Complainant. Therefore, the Disputed Domain Name is confusingly similar to a trade mark 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.

The Respondent is not authorized by the Complainant to use the Disputed Domain Name. The Respondent is not commonly known by the Disputed Domain Name. The Respondent is not making a legitimate or fair use of the Disputed Domain Name and intends it to be used for commercial gain or fraudulent purposes.

The mere application/registration for LEWIS SILKIN (against which the Complainant may still seek legal redress) is not sufficient to determine a legitimate interest in this case given the overwhelming evidence of the Respondent targeting and squatting on third-party brands. The Disputed Domain Name is not being used in a manner which could be considered legitimate or fair use.

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

The Disputed Domain Name has clearly been designed with the Complainant’s LEWIS SILKIN mark in mind, which is reinforced by the use of the Disputed Domain Name in relation to identical services. The Registrant has demonstrated an undeniable pattern of bad faith trade mark and domain name registrations of well-known third-party marks. And the Respondent was aware of the Complainant’s rights in LEWIS SILKIN and intentionally attempted to attract, for commercial gains, Internet users to the Disputed Domain Name website by creating a likelihood of confusion with the Complainant’s mark as to the affiliation of its website and of the provision of legal services on its website. This is evidence of both bad faith registration and bad faith use.

(iv) There has been no attempt by the Complainant to mislead the Center or the Panel.

The Complainant alleges that the Complainant was, until the Response was filed, unaware that this dispute was in any way related to opposition proceedings against trade mark application number LEWIS SILKIN No. 25220519 in China. It is only after receiving an email in English from the Respondent’s legal representatives and the filing of the Response that the Complainant realized that the Respondent had any connection to an ongoing dispute in relation to the LEWIS SILKIN trade mark, registration number 25220519 in China. The Complainant alleges that it had not been informed by its legal representatives in China that a Decision had been handed down in the opposition proceedings for the disputed mark and was therefore genuinely unaware of this fact until this was raised by the Respondent.

B. Respondent

The Respondent’s contentions could be summarized as follows:

(i) The Respondent agrees that the principal portion of the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights.

(ii) The Respondent has rights and legitimate interests in respect of the Disputed Domain Name.

The Respondent is the registered proprietor of the China Trade Mark registration number 25220519 for LEWIS SILKIN covering services in international class 45.

The Complainant’s assertions in its supplemental filing submitted to the Panel are identical to those submitted to the China Trade Mark Office in an opposition against the Respondent’s trade mark. The China Trade Mark Office has examined the evidence and reached the conclusion that the opposition should be rejected and the Respondent’s LEWIS SILKIN mark should be registered. The Respondent’s trade mark right in China is a legal right and the Respondent certainly has the legitimate interests to register a domain name that incorporates its trade mark and use the Disputed Domain Name to provide services corresponding to services designated under its registered trade mark.

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

The Respondent filed to register the Disputed Domain Name after receiving the decision from the China Trade Mark Office rejecting the Complainant’s opposition against the registration of the Respondent’s trade mark. The Respondent had obtained registered lawful trade mark rights for using LEWIS SILKIN in international class 45 in China before registering the Disputed Domain Name.

Trade mark rights are territorial. The legitimacy of trade mark right in China cannot be denied based on the Complainant’s trade mark right in United Kingdom. If the Complainant seeks to overturn the registration of the Respondent’s trade mark, the Complainant should follow the legal remedy under the jurisdiction of China, instead of misleading the Panel through the current proceeding.

Therefore, the Disputed Domain Name has been registered and is being used in good faith.

(iv) Reverse Domain Name Hijacking

The Respondent requests the Panel to find that the Complainant has filed this Complaint in bad faith, and in an attempt to reverse hijack the Disputed Domain Name from the Respondent. The Complainant was aware that its opposition against the Respondent’s trade mark in China had been rejected, but it deliberately withheld that information from the Panel, and is attempting to use the UDRP to obtain the Disputed Domain Name. As a law firm, the Complainant should be well aware that this constitutes reverse domain name hijacking.

6. Discussion and Findings

6.1 Language of the Proceeding

Paragraph 11(a) of the Rules provides that “[u]nless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”

Paragraph 10(b) of the Rules provides that “[i]n all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case”; and paragraph 10(c) of the Rules provides that “[t]he Panel shall ensure that the administrative proceeding takes place with due expedition […].”

The Registration Agreement is in Chinese. The Complainant requested that the language of the proceeding be English. The Respondent was given an opportunity to comment on the language of the proceeding and failed to do so. The Panel notes that the Disputed Domain Name resolves to a website that contains content in English and Chinese languages. The Panel is satisfied that the Respondent has sufficient familiarity with English that the Respondent should be able to understand the language of the Complaint. Therefore, it will not be prejudicial to the Respondent in its abilities to articulate its arguments in Chinese or English in the administrative proceeding, whereas requiring the Complainant to translate the Complaint and all supporting materials into Chinese would cause unnecessary delay to the administrative proceeding. (Dolce & Gabbana S.r.l. v. Zhang Yali, WIPO Case No. D2013-1101).

In order to ensure fairness to the Parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding and the decision will be rendered in English. The Panel accepts the submissions in both English and Chinese.

6.2 Substantive Issues

In this UDRP proceeding, the Complainants must prove, by a preponderance of the evidence, each of the following UDRP elements:

(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainants have 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

Paragraph 4(a)(i) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable Provider, in compliance with the Rules of Procedure, that (i) [the disputed domain name] is identical or confusingly similar to a trade mark or service mark in which the complainant has rights[.]”

The Complainant has established that it owns a number of relevant marks containing the “Lewis Silkin” element in United Kingdom.

The Disputed Domain Name consists of the Complainant’s LEWIS SILKIN mark in its entirety, the word “law” and the generic Top-Level Domain (“gTLD”) “.com”. It is well established that where the distinctive and prominent element of a disputed domain name is the Complainant’s mark, and the only deviation is the inclusion a term or the gTLD as prefix, such prefix does not negate the confusing similarity between the domain name and the mark. Here, the Complainant’s mark is the distinctive and prominent element of the Disputed Domain Name. The term “law” is purely descriptive of the services provided by the Complainant and its business. Neither the word “law”, nor the gTLD “.com” negate the confusing similarity between the Disputed Domain Name and the Complainant’s LEWIS SILKIN mark.

Furthermore, the Respondent also agrees that the Disputed Domain Name is confusingly similar to a service mark in which the Complainant has rights.

The Panel therefore finds that the Disputed Domain Name is confusingly similar to the Complainant’s LEWIS SILKIN mark, and the condition of paragraph 4(a)(i) of the Policy has been fulfilled.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable Provider, in compliance with the Rules of Procedure, that [...] (ii) [the respondent has] no rights or legitimate interests in respect of the [disputed] domain name[.]”

Paragraph 4(c) of the Policy sets out the following several circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:

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

(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trade mark or service mark rights; or

(iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.”

The Complainant affirms the fact that the Respondent has not been authorized, licensed or otherwise permitted by the Complainant to use the LEWIS SILKIN name or marks. The Respondent is not in any way connected to the Complainant.

The Complainant further submitted that the Respondent is not commonly known by the Disputed Domain Name, and the Disputed Domain Name has not been actively used in a manner which could be considered legitimate noncommercial or fair use nor is there any evidence of the Respondent’s preparations to use the Disputed Domain Name in such manner.

The Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. The burden of production shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the Disputed Domain Name.

To rebut the allegation of the Complainant, the Respondent provides the registration of its trade mark LEWIS SILKIN in China prior to the registration of the Disputed Domain Name as evidence of Respondent’s rights or legitimate interests to use the Disputed Domain Name.

UDRP panels have recognized that a respondent’s prior registration of a trade mark which corresponds to a domain name will ordinarily support a finding of rights or legitimate interests in that domain name for purposes of the second element. The existence of a respondent trade mark does not however automatically confer rights or legitimate interests on the respondent. For example, panels have generally declined to find respondent rights or legitimate interests in a domain name on the basis of a corresponding trade mark registration where the overall circumstances demonstrate that such trade mark was obtained primarily to circumvent the application of the UDRP or otherwise prevent the complainant’s exercise of its rights (even if only in a particular jurisdiction). See section 2.12 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

When considering the question of “rights or legitimate interests” under paragraph 4(a)(ii) of the Policy, a panel can, in an appropriate case, question the legitimacy of a trade mark relied upon by a respondent (Al Arabiya News Channel FZ - LLC v. ALCLICK, WIPO Case No. D2013-0079).

The Complainant has submitted evidence showing that the Respondent has applied to register dozens of trade marks that correspond to well-known third-party trade marks, and a number of domain names that appear to correspond to trade marks or domain names of others. The Panel issued the Procedural Order No. 1 in order to provide the Respondent with an opportunity to respond to the Complainant’s allegations and evidence. The Respondent provided no convincing explanation as to why the Respondent chose LEWIS SILKIN as its trade mark for business in China.

To judge whether a corresponding trade mark registration was obtained primarily to circumvent the application of the UDRP, the Panel must examine with overall circumstances. The knowledge and intention of the Respondent at the time the Disputed Domain Name was registered is highly relevant (British Sky Broadcasting Group Plc. and British Sky Broadcasting Limited v. Global Access, WIPO Case No. D2009-0817). In some circumstances, the UDRP panels have found that the registration of a trade mark does not per se give rise to rights or legitimate interests in the disputed domain name which also incorporates the Complainant’s longstanding registered mark, in the absence of a convincing explanation from the Respondent. (Canon U.S.A., Inc. v. Clinet Domain Administrator and www.eos1.net, WIPO Case No. D2012-0703).

The Complainant has submitted evidence that appears to suggest the purpose of the Respondent’s trade mark and domain name registrations is to leverage trade mark owners into paying sums to settle the ensuing trade mark and domain name disputes. This is supported by the Respondent’s email to the Complainant requesting whether the Complainant is open to “negotiation” and if so whether it “agrees to keep all communication contents between two parties confidential and will not mention or reveal them to any third party, including but not limited to WIPO Arbitration and Mediation Center;” otherwise, “delete this email” if not interested. The Complainant has also submitted evidence that the Respondent has generated another almost identical website under the name of another foreign law firm. The Complainant has even submitted a list of over 70 trade mark applications in the Respondent’s name. Many of these applications correspond to third-party marks, including Chinese mobile phone brands, sports cars and firm names including two United State of America law firms and two United Kingdom law firms. Furthermore, the Complainant has submitted evidence that Respondent owns a number of other typo-squat domain names corresponding to third-party businesses, including other law firms.

The Respondent has chosen not to provide any direct response to these allegations, but restates that it owns a registered trade mark in China and that its registration of other trade marks or domain names is not relevant to the case at hand.

Upon reviewing the evidence submitted in this proceeding, it appears that the Respondent’s LEWIS SILKIN mark was not registered for a bona fide purpose. The Panel finds the overall circumstances demonstrate that the Respondent’s LEWIS SILKIN trade mark was primarily obtained as a pretense for the registration of the Disputed Domain Name. This is insufficient to serve as a right or legitimate interest in the Disputed Domain Name for the purpose of the second element as provided in paragraph 4(a)(ii) of the Policy.

The Panel concludes that the Complainant has fulfilled the condition of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable Provider, in compliance with the Rules of Procedure, that [...] (iii) [the respondent’s] domain name has been registered and is being used in bad faith.”

Paragraph 4(b) of the Policy explicitly states, in relevant part, that “the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that [the respondent has] registered or [the respondent has] 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 trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the domain name; or

(ii) [the respondent has] registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or

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

The Complainant’s LEWIS SILKIN marks have been registered in several countries in the world for years. The Respondent chose “Lewis Silkin” as the only distinctive part of the Disputed Domain Name. The additional term “law” in the Disputed Domain Name is associated with the Complainant’s core business. In addition, the screenshot of the website under the Disputed Domain Name provided by the Complainant shows that the Respondent obviously knew the Complainant’s trade mark before registering the Disputed Domain Name.

Furthermore, in the Panel’s view, the email sent by the Respondent to the Complainant during the proceeding appears to suggest that the Respondent selected the LEWIS SILKIN trade mark as used in the Disputed Domain Name for use as leverage in approaching the Complainant in connection with paying sums to settle the ongoing disputes between them.

Based on the evidence submitted in this proceeding, the Panel finds the Respondent intentionally chose the Disputed Domain Name because of its similarity to the Complainant’s trade mark. The Panel concludes the Disputed Domain Name was registered in bad faith.

The content of the website to which the Disputed Domain Name resolves suggests that it was designed to attract Internet users for commercial gain and use of the Disputed Domain Name in relation to identical services. The Complainant has submitted evidence that the Respondent has generated another almost identical website under the name of another foreign law firm. The Complainant has also submitted a list of over 70 trade mark applications in the Registrant’s name. Many of these applications correspond to third-party marks, including Chinese mobile phone brands, sports cars and firm names including two United States of America law firms and two United Kingdom law firms. The Complainant has submitted evidence that Registrant owns a number of other typo-squat domains corresponding to third-party businesses, including other law firms.

The overall circumstances provide that the Respondent has engaged in a pattern of such conduct to prevent the owners of the trade marks or service marks from reflecting the marks in a corresponding domain name. The overall circumstances also suggest that the Respondent intentionally attempted to attract, for commercial gain, Internet users to the Disputed Domain Name by creating a likelihood of confusion with the Complainant’s mark as to the affiliation of its website and of the provision of legal services on its website.

The Panel finds the Disputed Domain Name is being used in bad faith.

The Panel concludes that the Complainant has fulfilled the condition of paragraph 4(a)(iii) of the Policy.

D. Reverse Domain Name Hijacking

Considering the above, the Panel finds that the Complaint was not brought 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 <lewissilkinlaw.com> be transferred to the Complainant.

Peter J. Dernbach
Sole Panelist
Date: April 24, 2020