WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pinsent Masons LLP v. Caryll Mcconnell

Case No. D2021-0923

1. The Parties

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

The Respondent is Caryll Mcconnell, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <pinsenttmasons.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 24, 2021. On March 26, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 27, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the disputed domain name.

The Center verified that the 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 April 21, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 11, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 12, 2021.

The Center appointed Cherise Valles as the sole panelist in this matter on May 20, 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 Pinsent Masons LLP. The Complainant is a full-service international law firm engaged in the provision of legal services across a broad spectrum of practice areas, including construction, dispute resolution, outsourcing and technology, corporate finance, and intellectual property. The Complainant operates internationally with 25 offices across the United Kingdom, Europe, the Gulf, Asia Pacific, and Africa.

The Complainant ranks amongst the top 20 law firms in the United Kingdom and has over 400 partners, an overall legal team of around 1,800, and more than 2,500 staff. The Complainant is a result of a number of mergers. In 1995, Pinsent & Co, a Birmingham based law firm merged with Simpson Curtis, a Leeds-based law firm, and commenced trading as “Pinsent Curtis”. In 2001, Pinsent Curtis merged with Biddle & Co, to form “Pinsent Curtis Biddle”. In 2002, the Birmingham office of Garrets was incorporated into the firm. Pinsent Biddle Curtis was subsequently renamed “Pinsents” in 2003. In December 2004, Pinsents merged with law firm Masons and commenced trading as “Pinsent Masons”. On May 1, 2012, Pinsent Masons merged with the law firm McGrigors LLP.

The Complainant offers its services primarily under the name Pinsent Masons LLP at “www.pinsentmasons.com”.

The Complainant is the registered proprietor of several United Kingdom registered and European Union registered trademarks in PINSENTS, MASONS, and PINSENT MASONS in a variety of classes including in relation to legal services. A partial listing of the Complainant’s registered trademarks is provided below:

- PINSENTS, United Kingdom Trade Mark No. UK00002236613, registered on July 13, 2001;

- MASONS, European Union Trade Mark No. 002084754, registered on July 10, 2002;

- PINSENT MASONS, European Union Trade Mark No. 006819197, registered on November 26, 2008;

- PINSENT MASONS, United Kingdom trade mark No. UK00002484418, registered on September 12, 2008; and,

- PINSENT MASONS, International trade mark No. 977347, registered on April 30, 2008.

The Complainant has used the trademarks continuously since they were registered. The trademarks have been used extensively across a range of services. In addition, the Complainant has advertised services bearing the trademarks - both online through its websites and off-line in a variety of publications. As a result of the Complainant’s activities, it has developed substantial goodwill and gained a valuable reputation in the trademarks in relation to the services with which the Complainant is associated.

The Complainant is the registrant of a portfolio of domain names including <pinsentmasons.com>, which was registered on June 1, 2014. The Complainant uses these domain names to promote and offer its goods and legal services.

The disputed domain name <pinsenttmasons.com> was registered on March 17, 2020. The disputed domain name does not resolve to an active site.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisfied. In particular, the Complainant asserts that:

The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.

- The disputed domain name is confusingly similar to the Complainant’s registered PINSENT MASONS trademark, in light of the fact that it wholly incorporates the Complainant’s mark. The addition of an extra letter “t” does not distinguish the disputed domain name from the Complainant’s mark, and is a classic example of typo-squatting.

The Respondent lacks rights or legitimate interests in the disputed domain name.

- The Complainant states that the Respondent should be considered as having no rights or legitimate interests in the disputed domain name. The Respondent has registered the disputed domain name knowing that it is likely to attract interest from Internet users searching for the Complainant, and further the Respondent is clearly not making a legitimate noncommercial fair use of the disputed domain name.

The disputed domain name has been registered and is being used in bad faith.

- The Complainant asserts that the disputed domain name was registered and is being used in bad faith. Noting the widespread use and reputation of the Complainant’s marks, the Respondent must have been aware of the Complainant and its marks when registering the disputed domain name. Further, the Respondent will never be able to use the disputed domain name for a legitimate purpose as the nature of the disputed domain name suggests an association between the Respondent and Complainant that does not exist.

The Complainant requests the Panel to issue a decision finding that the disputed domain name be transferred to the Complainant, in accordance with paragraph 4(i) of the Policy.

B. Respondent

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

6. Discussion and Findings

The Policy provides specific remedies to trademark owners against registrants of domain names where the owner of the mark (a complainant) establishes each of the following elements:

(i) the domain name is identical or confusingly similar to a trademark 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 was registered and is being used in bad faith.

The Complainant has the burden of proof in establishing each of these elements.

The Respondent has failed to file a Response in this proceeding. The Panel may draw appropriate inferences from the available evidence submitted by the Complainant.

A. Identical or Confusingly Similar

To prove this element, the Complainant must have trademark rights and the disputed domain name must be identical or confusingly similar to the Complainant’s trademark.

The Complainant submits that the disputed domain name is confusingly similar to the trademark in which it has rights. The disputed domain name incorporates the PINSENT MASONS trademark in its entirety with the addition of the letter “t”. Given the Complainant’s trademark registration as detailed above, the Complainant has established its trademark rights in the PINSENT MASONS trademark for the purposes of paragraph 4(a)(i) of the Policy.

As stated in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) “[w]here 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”.

The Complainant submits that disputed domain name is a classic case of typosquatting. The Respondent has added an extra letter “t” to the word “pinsent” in the disputed domain name. The addition of this letter does not prevent the recognizability of the words “pinsent” and “masons” in the disputed domain name, and is a prime example of typo-squatting. In accordance with previous UDRP panels, it is generally accepted that a domain name consisting of a common, obvious, or intentional misspelling of a trademark will be found to be confusingly similar to the relevant mark for purposes of the first limb of the UDRP Policy, due to the fact that the domain name contains sufficiently recognizable aspects of the relevant mark. See Fuji Photo Film U.S.A, Inc v. LaPorte Holdings, WIPO Case No. D2004-0971; see also, section 1.9 of the WIPO Overview 3.0.

It is well established in previous UDRP decisions that, where the relevant trademark is recognizable within the disputed domain name, the addition of additional letters, such as the letter “t” here, would not prevent a finding of confusing similarity under the first element. See section 1.8 of the WIPO Overview 3.0.

It is standard practice when comparing a disputed domain name to a complainant’s trademark not to take the generic Top-Level Domain into account. See section 1.11.1 of the WIPO Overview 3.0, which states that the “applicable Top-Level Domain (“TLD”) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and, as such, is disregarded under the first element of the confusing similarity test”.

In the light of the foregoing, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark and that paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy enumerates three non-exclusive ways in which a respondent may demonstrate rights or legitimate interests in a domain name (with “you” referring to the respondent):

“[a]ny of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

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

The Respondent did not submit a Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b).

Previous UDRP panels have held that the complainant must establish a prima facie case that respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production to respondent. See The American Automobile Association, Inc. v. PrivacyProtect.org/ Domain Tech Enterprises/ and The American Automobile Association, Inc. v. PrivacyProtect.org/Tarun Kumar and The American Automobile Association, Inc. v. Publishier LLC, WIPO Case No. D2011-2202, where the UDRP panel notes that a complainant need only show a prima facie case that respondent lacks rights or legitimate interests in a disputed domain name in order to shift the burden of production to respondent. If the respondent fails to demonstrate rights or legitimate interests in the domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

On the evidence before the Panel, it does not appear there has ever been any relationship between the Complainant and the Respondent. The Respondent does not seem to be licensed, or otherwise authorized, be it directly or indirectly, to register or use the Complainant’s trademarks in any manner, including in, or as part of, the disputed domain name.

The Complainant claims that the goodwill associated with the name “Pinsent Masons” is the property of the Complainant and cannot pass to any third party without a formal assignation. The Complainant asserts that no such assignation in favour of the Respondent has taken place.

The Complainant asserts that the Respondent is unable to invoke any of the circumstances set out in paragraph 4(c) of the Policy in order to demonstrate rights or legitimate interests in the disputed domain name. In particular, the Respondent cannot assert that he was making a legitimate noncommercial fair use of the disputed domain name.

The Complainant submits that the Respondent likely registered the disputed domain name knowing that it would attract internet users who are searching for the Complainant.

In light of the foregoing, the Panel finds that the Complainant has established an unrebutted prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and concludes that paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;

(ii) the respondent has 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 the respondent has engaged in a pattern of such conduct;

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 respondent’s website or location or of a product or service on its website or location.

The term bad faith is “broadly understood to occur where a respondent takes unfair advantage of, or otherwise abuses, a complainant’s mark”. See section 3.1 of the WIPO Overview 3.0.

The Complainant asserts that the disputed domain name was registered and was being used in bad faith. Paragraph 4(b) of the Policy lists four factors which, in particular but without limitation, may be evidence of registration and use of a domain name in bad faith for the purposes of paragraph 4(a)(iii) of the Policy.

Previous UDRP panels have found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely known trademark by an unaffiliated entity can by itself create a presumption of bad faith. See section 3.1.4 of the WIPO Overview 3.0. UDRP panel have held that the “registration of a well-known trademark as a domain name is a clear indication of bad faith itself”. See The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113.

Given the widespread reputation of the Complainant, the Respondent must have been aware of this name when registering the similar disputed domain name. The term PINSENT MASONS is an arbitrary and distinctive mark belonging to the Complainant.

The Complainant considers that the Respondent’s motives for the registration of the disputed domain name are unclear. The Complainant is nevertheless concerned that the disputed domain name may have been registered in bad faith, in order perhaps to use the disputed domain name for the purpose of generating click-through revenue or to redirect Internet traffic to an alternative website. None of these uses would constitute fair use and the Respondent has not generated any legitimate interests in the disputed domain name.

The Panel notes that the disputed domain name does not resolve to an active website, however, this does not prevent a finding of bad faith in these circumstances. See section 3.3 of the WIPO Overview 3.0. In particular, the Panel notes the reputation of the Complainant’s trademarks, the failure of the Respondent to submit a response or to provide any evidence of actual or contemplated good faith use, and the implausibility of any good faith use to which the disputed domain name may be put, all support a finding of bad faith. Further, the nature of the disputed domain name, comprising a typo of the Complainant’s widely-known trademark, affirms a finding of bad faith.

Accordingly, the Panel concludes that the Complainant has satisfied its burden of showing bad faith registration and use of the disputed domain name under paragraph 4(a)(iii) of the Policy.

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 <pinsenttmasons.com> be transferred to the Complainant.

Cherise Valles
Sole Panelist
Date: June 3, 2021