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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bryan Cave Leighton Paisner LLP v. Contact Privacy Inc., Customers 1248344569 and 1248799750 / Bryan Cave

Case No. D2020-3419

1. The Parties

Complainant is Bryan Cave Leighton Paisner LLP, United States of America (“United States”), represented internally.

Respondent is Contact Privacy Inc., Customers 1248344569 and 1248799750, Canada / Bryan Cave, United States.

2. The Domain Names and Registrar

The disputed domain names <bryancavelawfirm.net> and <bryancavelawfirm.org> are registered with Google LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 15, 2020. On December 16, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 16, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on January 7, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on January 11, 2021.

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 Respondent of the Complaint by email and through a hardcopy sent by overnight courier and delivered to and signed for at Respondent’s address in Chicago, Illinois. The proceedings commenced on January 15, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 4, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 5, 2021.

The Center appointed Georges Nahitchevansky as the sole panelist in this matter on March 5, 2021. 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. Preliminary Issue Regarding the Request for Consolidation

Complainant has submitted a request that the disputed domain names be consolidated in this proceeding.

In determining whether a single consolidated complaint can be brought against multiple respondents and/or disputed domain names, panels typically look at whether (i) the disputed domain names or the corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. See section 4.11.2, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Based on the evidence submitted, which is not contested by Respondent, the Panel accepts Complainant’s contention that the disputed domain names are subject to common control. The disputed domain names share the same registrant name but different physical addresses. The disputed domain names also use the same contact telephone number and email address. Under the circumstances, the Panel finds that consolidation would be fair and equitable to all parties.

5. Factual Background

Complainant, Bryan Cave Leighton Paisner LLP, is an international law firm with thirty one offices around the world. Prior to April 2018, Complainant was known under the name Bryan Cave LLP. In April 2018, Bryan Cave LLP combined with Berwin Leighton Paisner LLP, a law firm in the United Kingdom. The combined firm has since used the name and mark Bryan Cave Leighton Paisner LLP.

Complainant is the owner of several trademark registrations for the names and marks BRYAN CAVE and BRYAN CAVE LEIGHTON PAISNER in connection with its legal services. These include trademark registrations for BRYAN CAVE in the European Union (Registration No. 008806036, which issued to registration on June 2, 2010) and the United Kingdom (Registration No. 2307344, which issued to registration on August 6, 2002). Of particular relevance to this proceeding, Complainant also owns a registration for BRYAN CAVE LLP in the United States that issued to registration on January 15, 2002 (Registration No. 2529214) and a registration for BRYAN CAVE LEIGHTON PAISNER in the United States that issued to registration on December 3, 2019 (Registration No. 5927177).

Respondent registered the <briancavelawfirm.org> disputed domain name on October 1, 2020 and the <briancavelawfirm.net> disputed domain name on December 1, 2020. The disputed domain names have not, and do not, currently resolve to an active website or page.

6. Parties’ Contentions

A. Complainant

Complainant contends that it has strong rights in the name and mark BRYAN CAVE in connection with legal services on account of its use of BRYAN CAVE for many years and as a result of its many trademark registrations. Complainant asserts that it was known a BRYAN CAVE prior to its combination with Berwin Leighton Paisner LLP in April 2018 and that since the combination is it also commonly referred to as BRYAN CAVE.

Complainant argues that the disputed domain names are confusingly similar as they each fully contain Complainant’s BRYAN CAVE name and mark with the descriptive term “law firm” that designates the very services offered by Complainant.

Complainant asserts that Respondent has no rights or legitimate interest in the disputed domain names as Respondent (i) is not associated in any way with Complainant and has never sought or obtained authorization or a license from Complainant to use the BRYAN CAVE name and mark, (ii) is not commonly known by the name “Bryan Cave” and has never obtained a trademark or business name containing the BRYAN CAVE name and mark, and (iii) has registered disputed domain names that include the term “law firm,” the very service provided by Complainant, for likely purposes of attracting “consumers to an imposter’s website for commercial gain.”

Lastly, Complainant contends that Respondent has registered and used the disputed domain names in bad faith as the disputed domain names are designed to trade upon the reputation and goodwill that Complainant has developed in the BRYAN CAVE name and mark in connection with legal services. Complainant also contends that because Respondent has passively held the disputed domain names since registering them, and has not used them for anything, Respondent is acting in bad faith. Finally, Complainant argues that Respondent has no rights in the BRYAN CAVE name and mark and certainly has no intellectual property rights in BRYAN CAVE in connection with legal services.

B. Respondent

Respondent did not reply to Complainant’s contentions.

7. Discussion and Findings

Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:

(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names were registered and are being used in bad faith.

Here, although Respondent has failed to respond to the complaint, the default does not automatically result in a decision in favor of Complainant, nor is it an admission that Complainant’s claims are true. The burden of proof remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. A Panel, however, may draw appropriate inferences from a respondent’s default in light of the particular facts and circumstances of the case, such as regarding factual allegations that are not inherently implausible as being true. See WIPO Overview 3.0, paragraph 4.3; see also The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006‑0340.

A. Identical or Confusingly Similar

Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0 at paragraph 1.2.1. Complainant has provided evidence that it owns trademark registrations for the BRYAN CAVE, BRYAN CAVE LLP and BRYAN CAVE LEIGHTON PAISNER trademarks in several countries, and that such issued to registration well before Respondent registered the disputed domain names. Complainant has also provided evidence of its use of the BRYAN CAVE mark in connection with its legal services.

With Complainant’s rights in the BRYAN CAVE mark established, the remaining question under the first element of the Policy is whether the disputed domain names, typically disregarding the generic Top-Level Domain (“gTLD”) such as “.org” or “.net”, are identical or confusingly similar with Complainant’s marks. See B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010-0842. The threshold for satisfying this first element is low and generally panels have found that fully incorporating the identical mark in a disputed domain name is sufficient to meet the threshold.

In the instant proceeding, the disputed domain names are confusingly similar to Complainant’s BRYAN CAVE mark as they each incorporate the BRYAN CAVE mark in its entirety. The addition of the terms “law firm” in the disputed domain names do not prevent a finding of confusing similarity between the disputed domain names and Complainant’s BRYAN CAVE mark, as the BRYAN CAVE mark is the dominant component of the disputed domain names (being clearly recognizable). The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in Complainant’s BRYAN CAVE mark and in showing that the disputed domain names are identical or confusingly similar to that trademark.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.

In this proceeding, Complainant has provided evidence that it owns rights in the name and mark BRYAN CAVE in connection with legal services and has used such mark for many years prior to the registration of the disputed domain names. The issue before the Panel then is whether Respondent, who has registered the disputed domain names under the registrant name “Bryan Cave,” has nevertheless a legitimate interest on account of Respondent’s claimed name. Complainant has maintained that Respondent is not commonly known by the name or mark BRYAN CAVE and does not have any intellectual property rights in the name and mark BRYAN CAVE. Notably, Respondent has not appeared in the matter and has not filed anything that would support that it might have rights in the name and mark BRYAN CAVE.

The Panel is mindful that Respondent’s name may in fact be “Bryan Cave” as a simple Internet search does reveal a number of people with the name “Bryan Cave.” However, just as panelists expect that a Complainant needs to prove it owns rights in a trademark that were in effect before a disputed domain name was registered, it is incumbent on a respondent to establish with sufficient and relevant evidence, in the first instance, that its name is what he or she claims it to be. This is particularly so when a Complainant has challenged that a Respondent is not commonly known by a particular name. A Respondent who then fails to provide any evidence, and who chooses to ignore a proceeding altogether, does so at its own peril.

The failure of Respondent to appear and to provide any evidence to support its use of the name “Bryan Cave” renders the potential claim suspicious, particularly when the name in question is used in connection with a term that is directly related to the very service provided under a known trademark.

There is no doubt that in this matter Respondent was provided notice of the proceeding and was made aware of the matter. The Respondent received timely notice via email and through overnight courier, as is the typical practice of the Center. That Respondent then chose to ignore the proceeding amplifies the likelihood that Respondent is not named “Bryan Cave” and has no legitimate interest in the disputed domain names that include the term “law firm,” the very service provided by Complainant over many years. What evidence is before the Panel shows that only Complainant has used the name and mark BRYAN CAVE for years in connection with legal services. It thus seems more likely than not that Respondent registered the disputed domain names under an assumed name and in connection with the term “law firm” in order to take advantage of the rights Complainant enjoys in its BRYAN CAVE mark in connection with legal services.

Once Complainant established its rights in the BRYAN CAVE name and mark in connection with legal services, and made a prima facie showing that Respondent possesses no rights or legitimate interests in a disputed domain name, it was then incumbent on Respondent to provide evidence and arguments why the disputed domain names relate to a legitimate interest of Respondent. Respondent has completely failed to do so and the only conclusion to be drawn is that Respondent has no rights or legitimate interest in the disputed domain names that specifically relate to legal services.

In addition, the Panel finds that the composition of the disputed domain names carry a risk of implied affiliation with the Complainant.

Given that Complainant has established with sufficient evidence that it owns rights in the BRYAN CAVE name and mark, and given Respondent’s above noted actions and failure to file a response, the Panel concludes that Respondent does not have rights or legitimate interests in the disputed domain names and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case.

C. Registered and Used in Bad Faith

Given Respondent’s actions as noted above, and its failure to appear in this proceeding and to provide any evidence that he is known under the name “Bryan Cave,” it is easy to infer that Respondent’s registration of two disputed domain names prominently featuring the name and mark BRYAN CAVE in connection with the term “law firm,” the very service offered by Complainant under that name and mark for many years, has been done in bad faith.

Given that Complainant has established that it owns longstanding rights in the BRYAN CAVE name and mark, particularly with legal services, prior to when Respondent registered the disputed domain name, it is evident that Respondent opportunistically and in bad faith registered and used the disputed domain names for the likely purposes of somehow profiting at the expense of Complainant and its rights in the BRYAN CAVE name and mark. See, e.g. Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226. This is particular so in view of the fact that Respondent has made no use of the disputed domain names since registering them, has provided no information supporting a potential interest for registering or using the disputed domain names, has failed to appear in the matter despite receiving notice, and has failed to provide one iota of evidence that his name might in fact legitimately be “Bryan Cave.” Simply put, on the evidence before the Panel is hard to conceive that Respondent has not acted in bad faith.

Accordingly, the Panel finds that Complainant succeeds under this element of the Policy

8. 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 names <bryancavelawfirm.net> and <bryancavelawfirm.org> be transferred to Complainant.

Georges Nahitchevansky
Sole Panelist
Date: March 17, 2021

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