WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Osborne Clarke LLP v. WhoisGuard Protected, WhoisGuard, Inc. / Johnson James

Case No. D2021-0548

1. The Parties

The Complainant is Osborne Clarke LLP, United Kingdom (“UK”), internally represented.

The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Johnson James, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <mail-osborneclarke.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 22, 2021. On February 23, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 23, 2021, 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, 2021 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 8, 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 the Respondent of the Complaint, and the proceedings commenced on March 10, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 30, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 7, 2021.

The Center appointed Zoltán Takács as the sole panelist in this matter on April 12, 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.

The language of the Registration Agreements for the disputed domain names is English, which the Panel establishes as the language of this administrative proceeding.

4. Factual Background

The Complainant is a firm of solicitors that was founded in the UK in 1748 and is a part of international legal practice Osborne Clarke Verein, whose member firms are located in the UK and other countries in Europe, Asia and in the United States.

The Complainant and the international legal practice of which it is a member operate under the trademark OSBORNE CLARKE.

The Complainant is owner of several OSBORNE CLARKE trademarks, including:

- the UK Trademark Registration No. 00002129400 for the word mark OSBORNE CLARKE, registered on September 26, 1997 for services of classes 35, 36 and 42 of the Nice Agreement Concerning the International Classification of Good and Services for the Purpose of the Registration of Marks (“Nice Agreement”), and

- the European Union Trademark Registration (“EUTM”) No. 005981279 for the word mark OSBORNE CLARKE, registered on September 18, 2008 for services of classes 35, 36 and 45 of the Nice Agreement.

Since March 17, 1998 the Complainant owns the domain name <osborneclarke.com>, which links to its principal website.

The disputed domain name was registered on July 6, 2020 and used for a parking page with several Pay-Per-Click (“PPC”) links listing services closely related to those of the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name <mail-osborneclarke.com> is confusingly similar to its OSBORNE CLARKE trademark, which is clearly recognizable within the disputed domain name. The Respondent’s use of the word “mail” in the disputed domain name is not sufficient to avoid confusing similarity.

The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name and is unable to rely on any of the circumstances set out in paragraphs 4(c)(i), (ii), or (iii) of the Policy.

The Complainant claims that it is reasonable to infer that the Respondent has registered the disputed domain names with knowledge of its well-known legal services under the trademark OSBORNE CLARKE.

The Complainant further claims that registration of the disputed domain name indicates a clear intention on the part of the Respondent to capitalize on the Complainant’s goodwill and to gain unfair commercial benefit from holding and using the disputed domain name to host PPC links to third party services.

The Complainant requests that the disputed domain name be transferred from the Respondent to the Complainant.

B. Respondent

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

6. Discussion and Findings

Paragraph 15(a) of the Rules requires that the Panel’s decision be made “on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

It has been a consensus view in previous UDRP decisions that a respondent’s default (i.e., failure to submit a response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

A complainant must evidence each of the three elements required by paragraph 4(a) of the Policy in order to succeed on the complaint, namely 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

Under paragraph 4(a)(i) of the Policy, there are two requirements which the Complainant must establish, first that it has rights in a trademark or service mark, and second that the disputed domain name is identical or confusingly similar to the trademark or service mark.

It has been a consensus view among previous UDRP panels that if the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights.

The Complainant produced evidence of having registered rights in the OSBORNE CLARKE trademark. For the purpose of this administrative proceeding, the Panel finds that the UK Trademark Registration No. 00002129400 and EUTM No. 00005981279 satisfy the requirement of having trademark rights for the purpose of the Policy.

Having determined the presence of the Complainant’s trademark rights in the OSBORNE CLARKE trademark, the Panel next assesses whether the disputed domain name <mail-osborneclarke.com> is identical or confusingly similar to the Complainant’s trademark.

According to section 1.7 of the WIPO Overview 3.0, the standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. This test typically involves a side-by-side comparison of the disputed domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.

According to section 1.8 of the WIPO Overview 3.0, where 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.

According to section 1.11.1 of the WIPO Overview 3.0, the applicable generic Top-Level Domain (“gTLD”) in a domain name (e.g., “.com”, “.int” etc.) is viewed as a standard registration requirement and as such is generally disregarded under the first element confusingly similar test.

The Complainant’s OSBORNE CLARKE trademark is clearly recognizable within the disputed domain name and the Respondent’s use of the term “mail” in the disputed domain name in view of the Panel does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark.

Accordingly, the Panel finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Under paragraph 4(c) of the Policy, a respondent may demonstrate its rights or legitimate interests in a domain name by showing any of the following circumstances, in particular but without limitation:

(i) its use of, or demonstrable preparation to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services;

(ii) it has been commonly known by the domain name;

(iii) it is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.

In the present case, the Complainant has submitted sufficient and uncontested evidence that it holds well-established rights in the OSBORNE CLARKE trademark.

The Complainant has never authorized the Respondent to use its OSBORNE CLARKE trademark in any way, and its prior rights in the OSBORNE CLARKE trademark long precede the date of registration of the disputed domain names.

According to section 2.1 of the WIPO Overview 3.0, while the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent.

As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with the relevant evidence demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.

The Respondent defaulted and failed to respond, and by doing so failed to offer the Panel any type of evidence set forth in paragraph 4(c) of the Policy, or otherwise counter the Complainant’s prima facie case.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names in accordance with paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists a number of factors which, if found by the panel to be present, shall be evidence of registration and use of a domain name in bad faith. This non-exclusive list includes:

“(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 website 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 website or location or of a product or service on your website or location.”

Use of the Complainant’s distinctive trademark in the disputed domain name convinces the Panel that the Respondent registered the disputed domain name with the Complainant’s trademark in mind.

The Respondent’s use of the disputed domain name for a parking web page showing sponsored third party advertiser listings of legal services (the Complainant’s primary area of business) is in the view of the Panel evidence of the Respondent’s clear intention to unlawfully capitalize on the Complainant’s trademark and goodwill.

Further to the Respondent’s lack of any rights to or legitimate interests in the disputed domain names, the above discussed facts and circumstances convince the Panel that the Respondent has intentionally attempted to attract, for commercial gain Internet users to its websites (or websites under its control) by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of such sites or the services advertised on such sites, within the meaning of paragraph 4(b)(iv) of the Policy.

Accordingly, the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied.

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 <mail-osborneclarke.com> be transferred to the Complainant.

Zoltán Takács
Sole Panelist
Date: April 20, 2021