WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Linklaters LLP v. WhoisGuard, Inc / David Balevic, edcc
Case No. D2021-0723
1. The Parties
The Complainant is Linklaters LLP, United Kingdom, internally represented.
The Respondent is WhoisGuard, Inc, Panama / David Balevic, edcc, United States of America.
2. The Domain Name and Registrar
The disputed domain name <linklatar.com> (the “Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 10, 2021. On March 10, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 10, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the 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 12, 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 16, 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 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 11, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 14, 2021.
The Center appointed Warwick Smith as the sole panelist in this matter on April 22, 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. Factual Background
The Complainant is a limited liability partnership registered in England and Wales since February 2007. It carries on business as a firm of solicitors and provides services under the name “Linklaters”, from its headquarters in London and from 30 offices in 20 countries.
Through its wholly-owned subsidiary Linklaters Business Services, the Complainant owns registered trade marks for the word LINKLATERS in a number of countries around the world. Its registrations include the following:
1. United Kingdom (UK) registration 1274996 in class 35 – filing date October 1, 1986;
2. UK registration 1315277 in class 42 – filing date July 9, 1987;
3. UK registration 2200536 in classes 9, 16, 35, 36, 41, 42 and 45 – filing date June 17, 1999; and
4. United States registration 2633820 in classes 16, 35, 36, 41 and 42 – filing date August 25, 1999.
The Respondent and the Domain Name
The Respondent is David Balevic of Texas, United States of America.
The Domain Name was registered on November 4, 2020. It does not resolve to any active website, but it has been used to create the email address “[name redacted]@linklatar.com”. The name used in the email address is of a partner in the Complainant, who works from the firm’s London office. She uses the email address “[name redacted]@linklaters.com” in connection with her work.
The Complainant asserts (and the Respondent does not deny) that on November 27, 2020 an email was received by the financial controller of one of the Complainant’s clients, from the email address “[name redacted]@linklatar.com”. The email had the subject line “Unpaid invoice”, and it included an email signature which identified the sender as a “Senior Associate at Linklaters, Linklaters LLP”. The email sought payment of the unpaid invoice as soon as possible.
The “[name redacted]@linklatar.com” email address is not controlled by the Complainant (or any of the Complainant’s agents or affiliates), and its use has been without the knowledge of the Complainant.
5. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to the LINKLATERS marks in which it has rights. The Domain Name is identical to the marks, save for the substitution of the letter “a” for the letter “e” near the end of the mark, and the removal of the letter “s” at the end. Those changes would likely go unnoticed by many readers.
The Complainant next contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. Neither the Respondent nor any third party appears to be making any legitimate use (commercial or non-commercial) of the Domain Name.
Finally, the Complainant contends that the Domain Name was registered and is being used in bad faith. The email address “[name redacted]@linklatar.com” has been used in a way that has attempted to deceive recipients of emails sent from it into falsely believing that the email address is controlled by the Complainant.
Given the Complainant’s rights in the LINKLATERS marks, and the use made of the Domain Name, the registration and use of the Domain Name has been abusive, as it could confuse people into thinking that the Domain Name is controlled by the Complainant or an entity controlled by the Complainant. There is also a very significant risk that there will be further such use of the Domain Name if it is not transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, a Complainant is required to establish each of the following:
(i) the domain name is identical or 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 domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
There is a preliminary question as to whether the Complainant has “rights” in the LINKLATERS marks on which it relies. The various marks relied upon are registered (in various jurisdictions) in the name of a wholly-owned subsidiary of the Complainant.
The point is addressed at paragraph 1.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition(“WIPO Overview 3.0”), where the consensus view of WIPO panels is summarized in the following terms –
“1.4.1 A trade mark owner’s affiliate such as a subsidiary of a parent or a holding company, or an exclusive trade mark licensee, is considered to have rights in a trade mark under the UDRP for purposes of standing to file a complaint.
While panels have been prepared to infer the existence of authorization to file a UDRP case based on the facts and circumstances described in the complaint, they may expect parties to provide relevant evidence of authorization to file a UDRP complaint. In this respect, absent clear authorization from the trade mark owner, a non-exclusive licensee would typically not have standing to file a UDRP complaint.”
WIPO Overview 3.0 refers to a number of panel decisions supporting that summary, including Grupo Televisa, S.A. Televidsa, SA de C.V., Estrategia Televisa, S.A. de C.V., Videoserpel, Ltd v. Party Night Inc. a.k.a. Peter Carrington, WIPO Case No. D2003-0796. In that case, the panel observed:
“[The words in paragraph 4(a)(i) of the Policy in which Complainant has rights] do not require the Complainant to be the owner of the mark and would include, for example, a licensee of the mark. It has been accepted in several decisions that a company related as subsidiary or parent to the registered holder of the mark may be considered to have rights in the mark. See for example Miele, Inc. v. Absolute Air Cleaners and Purifiers, WIPO Case No. D2000-0756 […]. The decision reads in part:
“In this Panel’s view the test under paragraph 4(a)(i) of the Policy, which makes no mention of “exclusive rights”, is or ought to be a relatively easy test for a Complainant to satisfy, its purpose simply being to ensure that Complainant has a bona fide basis for making the Complaint in the first place”.”
As noted in the passage from WIPO Overview 3.0 quoted above, some WIPO panels have issued procedural orders seeking further evidence or submissions in circumstances where the complainant is not the owner of the registered mark on which it relies. For example, in Spherion Corporation v. Peter Carrington d/b/a Party Night Inc., WIPO Case No. D2003-1027, the complainant contended that it wholly owned the companies that had rights in the relevant SPHERION marks. But because the complainant did not provide evidence of its holding company status, the panel issued a procedural order seeking further evidence on the point. A similar procedural order seeking evidence of standing to bring the complaint as a licensee was issued in RGM Trading, LLC v. rgm-trading.com, RGM-Trading / Ronald Perry, rgmthk.com, RGM-Trading / Bushan Shimpi, WIPO Case No. D2012-1049.
However, in the later case of BSH Home Appliances Corporation v. Michael Stanley / Michael Sipo, WIPO Case No. D2014-1433, the panel did not consider it necessary to seek further evidence. The issue in that case was whether a wholly-owned subsidiary could file a complaint under the Policy based on trade marks owned by its parent company. The experienced panel in that case referred to the limited precedents that existed on the point, suggesting that the subsidiary company may file a complaint either under the theory of implied license (DigiPoll Ltd v. Raj Kumas, WIPO Case No. D2004-0939), or a more general notion based on corporate control and common sense (referring to the Grupo Televisa case mentioned above). The panel in the BSH Home Appliances case was content to follow the Grupo Televisa approach, noting that the case was not one where there existed any obvious impediment to the mark owner bringing the complaint directly, and there was nothing in the record that suggested any advantage sought or gained by having the subsidiary rather than the parent file the complaint.
In this case, the Panel’s view is that no procedural order is necessary. The Complainant has provided a copy of its website, and in the “Legal Notices” section there is a statement confirming that “Linklaters is the business name for an international legal practice carried on by the Complainant, its affiliated firms and other entities carrying on business under or including the name Linklaters. The webpage states that references on the website to “Linklaters” mean [the Complainant] and the other partnerships and affiliated firms or entities authorised to carry the name “Linklaters” […].” In the context, the reference to “authorised to carry the name “Linklaters”” must include authority from the owner of the relevant LINKLATERS marks.
In the absence of any response challenging the Complainant’s standing, the Panel finds it is probable that the Complainant, being the parent company of the registered owner of the LINKLATERS marks, is authorized by that owner to use the marks (and indeed has been doing so extensively). The Complainant’s control of the owner of the marks puts it, if anything, in a stronger position than the subsidiary company complainant in BSH Home Appliances case,and there could be no realistic suggestion that the Complainant’s entitlement to commence this proceeding could be challenged by its own wholly-owned subsidiary. In these circumstances the Panel is content to apply the approach adopted in Grupo Televisa and BSH Home Appliances cases.
The Panel concludes that the Complainant does have rights in the LINKLATERS marks in the sense required by paragraph 4(a)(i) of the Policy.
There is no doubt that the Domain Name is confusingly similar to the LINKLATERS marks in which the Complainant has rights. It is similar both visually and phonetically to that mark, the only differences being the substitution of an “a” for an “e” near the end of the mark, and the deletion of the “s” at the end. The Panel agrees with the Complainant’s contention that many Internet Users would not notice these differences.
The Complainant has made out its case on this part of the Complaint.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy set out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a domain name for the purposes of paragraph 4(a)(ii) of the Policy. The circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] 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) Where [the respondent] (as an individual business or other organisation) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trade mark or service mark rights; or
(iii) Where [the respondent is] making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly direct consumers or to tarnish the trade mark or service mark at issue.
“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 relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
In this case, there is nothing to suggest that the Respondent (or any entity associated with him) has been commonly known by the Domain Name, and the Complainant has not licensed or authorized him to use the Domain Name. Nor is there any evidence of the Respondent having used (or made demonstrable preparations to use) the Domain Name, or any name corresponding to it, in connection with any bona fide offering of goods or services. The Respondent’s sole purpose in registering the Domain Name appears to have been to create the “[name redacted]@linklatar.com” email address at the Domain Name, so that he could pose as the Complainant. That could never have been a bona fide use of the Domain Name.
Nor could paragraph 4(c)(iii) of the Policy provide a basis for a claim to a right or legitimate interest in respect of the Domain Name. Creating an email address designed to facilitate the impersonation of a partner or senior staff member of the Complainant for the apparent purpose of fraudulently demanding payment of an amount the email recipient did not owe, could never be described as “legitimate”, or “fair”.
For those reasons the Panel is satisfied that the Complainant has made out a prima facie case under paragraph 4(a)(ii) of the Policy, sufficient to shift to the Respondent the onus of proving that some right or legitimate interest exists. In the absence of a response, that onus has not been discharged, and the Complainant’s prima facie proof is therefore sufficient. The Respondent has no rights or legitimate interests in respect of the Domain Name for the purposes of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Under paragraph 4(b) of the Policy, the following circumstances, without limitation, are deemed (if found by the Panel to be present) to be evidence of the registration and use of a domain name in bad faith:
(i) Circumstances indicating that the holder has registered or 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 holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) The holder 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 holder has engaged in a pattern of such conduct; or
(iii) The holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s 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 the holder’s website or location or of a product or service on the holder’s website or location.
In this case, the Domain Name is confusingly similar to the LINKLATERS marks in which the Complainant has rights, and the Respondent has no rights or legitimate interests in respect of the Domain Name.
In Carrefour v WhoisGuard, Inc., WhoisGuard Protected / Robert Jurek, Katrin Kafut, Purchasing clerk, Starship Tapes & Records, WIPO Case No. D2017-2533, the panel found bad faith in circumstances where email addresses at the disputed domain name appeared to have been calculated to obtain an illegitimate benefit from the complainant’s goodwill in its trade mark. The panel considered that the configuration of email servers at the disputed domain name suggested that the respondents were engaged in a phishing scheme, and that “[t]he consequences of such a scheme can be detrimental not only to the company whose goodwill has been taken advantage of, but to third party staff and customers who may entrust what appears to be [the complainant] with sensitive information such as credit card details”.
That is very similar to what occurred in this case, but in the Carrefour case the disputed domain name had an invisible redirection to the complainant’s official website - a factor not present in this case.
On the evidence produced, it is clear that the Respondent has intentionally attempted, for commercial gain, to create a likelihood of confusion with the LINKLATERS marks, as to the source, sponsorship, affiliation or endorsement of the “[name redacted]@linklatar.com” email address. But it is not so clear that the Respondent’s intention was to attract Internet users to any particular “website or other online location” of the Respondent (as opposed to simply tricking the email recipient into paying money that was not owing into some bank account controlled by the Respondent). Thus the situation might not be strictly within paragraph 4(b)(iv) of the Policy. But the subparagraphs of paragraph 4(b) of the Policy do no more than provide non-exclusive examples of bad faith registration and use, and the Panel has no difficulty in concluding that the use of the Domain Name to create email addresses for phishing purposes as alleged in this case amounts to bad faith use of the Domain Name.
Paragraph 4(a)(iii) of the Policy requires proof of bad faith in both the registration and the subsequent use of a disputed domain name. In this case, it is apparent from the Respondent’s creation of the “[name redacted]@linklatar.com” email address that he was well aware of the Complainant and the Complainant’s staff when the email address was created. Given the confusing similarity between the Domain Name and the LINKLATERS marks, and the absence of any response to the Complaint, the Panel considers it reasonable to infer that the Respondent knew of at least the LINKLATERS marks when he registered the Domain Name, and that the registration was made with the intention of putting the Domain Name to the only use to which it was later put (the bad faith creation and use of an email address at the Domain Name to impersonate an employee of the Complainant).
That is enough to decide the Complaint in the Complainant’s favour. The Panel adds that even if the “[name redacted]@linklatar.com” email had not been sent, he would have upheld the Complaint on the basis of passive holding of the Domain Name by the Respondent. In the Panel’s view, it is not possible to conceive of any plausible actual or contemplated active use the Respondent might have made of the Domain Name that would not have been illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trade mark law.1 The use of the “[name redacted]@linklatar.com” email address merely confirms the Panel’s view that the Domain Name was so clearly designed to create confusion with the LINKLATERS marks that it could never have been intended to be used by the Respondent in good faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <linklatar.com> be transferred to the Complainant.
Date: May 4, 2021
1 The consensus view of WIPO panels on bad faith by registering and passively holding a disputed domain name is summarized at WIPO Overview 3.0, section 3.3, as follows:
“While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include:
(i) the degree of distinctiveness or reputation of the complainant’s mark;
(ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use;
(iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement); and
(iv) the implausibility of any good faith use to which the domain name may be put.”
In this case, all of those elements are present. The LINKLATERS marks have a high level of distinctiveness associated with the Complainant’s services, and the Respondent has not provided evidence of any actual or contemplated good faith use of the Domain Name. The Respondent appears to have endeavored to conceal his identity, and given the distinctiveness and widespread use of the LINKLATERS mark, it is difficult to identify any plausible good faith use the Respondent might have made of the Domain Name.