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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pinsent Masons LLP v. Registration Private, Domains By Proxy, LLC / Pinsent Masons invoicing

Case No. D2020-0533

1. The Parties

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

The Respondent is Registration Private, Domains By Proxy, LLC, United States of America (“United States”) / Pinsent Masons invoicing, United States.

2. The Domain Name and Registrar

The disputed domain name <pinsentmaisons.com> is registered with Wild West Domains, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 4, 2020. On March 4, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 5, 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 6, 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 on March 10, 2020.

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 March 11, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 31, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 1, 2020.

The Center appointed Mario Soerensen Garcia as the sole panelist in this matter on April 6, 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 Pinsent Masons LLP, a full service international law firm operating with 25 offices across the United Kingdom, in addition to different countries in Europe, Asia Pacific, Africa, and the Gulf. The Complainant currently ranks amongst the top 20 law firms in the United Kingdom having over 400 partners and more than 2,500 staff.

The Complainant owns several registrations for its marks, including the International registration no. 977347 for the word mark PINSENT MASONS, which was registered on April 30, 2008.

The Complainant operates a website from the domain name <pinsentmasons.com>, duly registered on June 1, 2004.

The disputed domain name <pinsentmaisons.com> was registered on February 6, 2020, and resolves to an inactive page.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the disputed domain name is a classic case of typosquatting, since the Respondent added a letter “i” to the word “masons”, making no difference to the overall impression of the trademark PINSENT MASONS incorporated in the disputed domain name.

According to the Complainant, given the international presence and reputation of the name “Pinsent Masons”, the disputed domain name was registered with the clear intention to create a false impression of association with the Complainant aiming to attract business or misleadingly divert the public.

The Complainant alleges that UDRP panels have previously recognized that the mere misspelling or omission of letters is insufficient to distinguish a domain name from a complainant’s trademark.

The Complainant claims that the Respondent lacks rights and any legitimate interests in the disputed domain name, and that it has not made a legitimate noncommercial or fair use of the disputed domain name.

Additionally, the Complainant mentions that the Respondent’s reasons for registration of the disputed domain name are unclear but that it must have been made to sell the disputed domain name, to use it for the purpose of generating click through revenue, to redirect Internet traffic to an alternative website, or even to facilitate the creation of email addresses for purposes of future fraudulent messages. The Complainant concludes that none of these uses would constitute fair use by the Respondent and that the disputed domain name was registered with full knowledge of the Complainant’s rights in the trademark PINSENT MASONS.

Finally, the Complainant requests the transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

As per paragraph 4(a) of the Policy, the Complainant must prove that:

(i) the disputed domain name is identical 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 evidence presented in the Complaint demonstrates that the Complainant is the owner of trademark registrations for PINSENT MASONS in different jurisdictions as well as the domain name <pinsentmasons.com>.

The disputed domain name is confusingly similar to the Complainant’s trademark PINSENT MASONS. Indeed, the misspelling between the disputed domain name and the Complainant’s trademark does not prevent a finding of confusing similarity and it seems evident that the addition of the letter “i” was intentional.

Previous UDRP panels have consistently held that a domain name is identical or confusingly similar to a trademark for purposes of the Policy when the domain name “consists of a common, obvious, or intentional misspelling of a trademark” (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.9).

The Panel finds that paragraph 4(a)(i) of the Policy has been proved by the Complainant, i.e., the disputed domain name is confusingly similar to the Complainant’s trademarks.

B. Rights or Legitimate Interests

The Respondent has not submitted a response to the Complaint.

There is no evidence that the Respondent has any authorization to use the Complainant’s trademark or to register a domain name containing the trademark PINSENT MASONS.

There is no evidence that the Respondent is commonly known by the disputed domain name.

There is also no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name or that before any notice of the dispute the Respondent has made 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.

The Panel finds that the use of the disputed domain name, which incorporates the Complainant’s trademark, does not correspond to a bona fide use of the disputed domain name under the Policy.

For the above reasons, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been satisfied, i.e., the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The trademark PINSENT MASONS is registered by the Complainant in different jurisdictions and has been used for years. Also, the Complainant registered the domain name <pinsentmasons.com>, which resolves to its official website. These registrations predate the registration date of the disputed domain name.

Indeed, it is clear that the disputed domain name represents an intentional misspelling of the Complainant’s mark and the Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant’s PINSENT MASONS mark is already recognized in its area and one of the ways the Complainant advertises its services is certainly through its website, which therefore plays a very important role for the Complainant’s activities. It is not conceivable that the Respondent would not have been aware of the Complainant’s services and its trademark rights at the time of the registration of the disputed domain name.

A domain name that imitates the mark PINSENT MASONS adding a letter “i” to the word “masons” is undoubtedly suggestive of the Respondent’s bad faith. It does not seem to make any sense for the Respondent to register the disputed domain name, except to mislead potential clients of the Complainant. Therefore, this Panel finds that the Respondent has intentionally attempted to cause confusion with the Complainant’s trademark by misleading Internet users to believe that the disputed domain name belongs to or is associated with the Complainant.

This Panel finds that the Respondent’s attempt of taking unfair advantage of the trademark PINSENT MASONS as described in paragraph 4(b)(iv) of the Policy has been demonstrated. In the circumstances, passive holding of the disputed domain name is further evidence of the Respondent’s bad faith.

Moreover, the Respondent has chosen not to respond to the Complainant’s allegations. In these circumstances, and as found in the panel’s decision in The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610, “the failure of the Respondent to respond to the Complaint further supports an inference of bad faith”.

For the above reasons, the Panel finds that the condition of paragraph 4(a)(iii) of the Policy has been satisfied, i.e., the disputed 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 disputed domain name <pinsentmaisons.com> be transferred to the Complainant.

Mario Soerensen Garcia
Sole Panelist
Date: April 17, 2020

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