WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

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

Case No. D2021-1086

1. The Parties

The Complainant is Pinsent Masons LLP, United Kingdom (“UK”), internally represented.

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

2. The Domain Name and Registrar

The disputed domain name <pinnsentmasons.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 April 9, 2021. On April 9, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 12, 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 April 14, 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 April 15, 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 April 20, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 10, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 17, 2021.

The Center appointed Geert Glas as the sole panelist in this matter on June 1, 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, Pinsent Masons LLP, is a full service international law firm engaged in the provision of legal services across a broad spectrum of practice areas. The Complainant ranks amongst the top 20 law firms in the UK and operates internationally with 25 offices across the UK, Europe, the Gulf, Asia Pacific and Africa.

The Complainant owns the domain name <pinsentmasons.com>, registered on June 1, 2014. This domain name gives access to the Complainant’s global website through which it promotes and offers its legal related goods and services.

The Complainant also owns a large number of International, European and national trademarks that consist of or include the words “Pinsent Masons”, among which, by way of example, the following:

International word mark PINSENT MASONS, registration No. 977347, registered on April 30, 2008 in classes 9, 16, 35, 36, 41 and 45.

European Union word mark PINSENT MASONS, registration No. 006819197, registered on November 26, 2008 in classes 9, 16, 35, 36, 41 and 45.

UK figurative mark PINSENT MASONS, registration No. UK00002377047, registered on April 15, 2005 in classes 9, 16, 35, 36, 41 and 42.

The disputed domain name, <pinnsentmasons.com>, was registered on February 14, 2020 and leads to an unsecured page displaying links to other websites, including links to legal services. It also displays a banner which offers the disputed domain name for sale.

5. Parties’ Contentions

A. Complainant

The following is a summary of the Complainant’s contentions.

The Complainant requests that the disputed domain name be transferred to it on the following grounds:

The Complainant claims that the disputed domain name is confusingly similar to its many trademarks which consist of or include the words “Pinsent Masons” and its registered domain name <pinsentmasons.com>. It considers that the additional letter “n” in the disputed domain name makes no difference to the overall impression of the dominant words “Pinsent Masons” and constitutes a classic example of “typosquatting”. The Complainant also highlights its international presence and the reputation associated with the name “Pinsent Masons”.

The Complainant further contends that the Respondent does not have rights or legitimate interests in respect of the disputed domain name. Given that the disputed domain name resolves to a webpage displaying links to legal services as well as a banner which offers the disputed domain name <pinnsentmasons.com> for sale, the Complainant considers it reasonable to conclude that the Respondent registered the disputed domain name knowing that it is likely to attract interest from Internet users who are searching for the Complainant.

Finally, the Complainant argues that the disputed domain name was registered and is being used in bad faith. The widespread use and reputation of the name “Pinsent Masons” as well as the absence of any legitimate interests are relevant in reaching this conclusion. According to the Complainant, the Respondent will never be capable of using the disputed domain name <pinnsentmasons.com> for a legitimate purpose as the notoriety of the words “Pinsent Masons” is such that members of the public will always assume that there is an association between the Respondent and the Complainant.

B. Respondent

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

6. Discussion and Findings

Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

The onus is on the Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that the Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer the disputed domain name. As the UDRP proceedings are of an administrative nature, the standard of proof is the balance of probabilities.

Thus, for the Complainant to succeed, it must prove, within the meaning of paragraph 4(a) of the Policy, that:

i. the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

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.

The Panel will therefore deal with each of these requirements.

A. Identical or Confusingly Similar

The disputed domain name is <pinnsentmasons.com>.

The Complainant has demonstrated that it owns numerous national, European and international trademarks consisting of the words “Pinsent Masons”.

The disputed domain name comprises the Complainant’s registered PINSENT MASONS trademarks and its <pinsentmasons.com> domain name in their entirety, with as only difference the addition of the letter “n” in the word “Pinsent”.

Section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”) states that “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”. This is certainly the case where, as is the case here, this dominant feature is not descriptive but consists of the combination of two last names which makes it inherently distinctive.

Moreover, section 1.9 of the WIPO Overview 3.0 recognizes that a domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered to be confusingly similar to the relevant mark for this purpose. Such misspelling is also known as typosquatting. It has been ruled on several occasions that the mere addition of one letter makes typosquatting highly probable (Humana Inc. v. Cayman Trademark Trust, WIPO Case No. D2006-0073 (<humanna.com>), Edmunds.com, Inc. v. Digi Real Estate Foundation, WIPO Case No. D2006-1043 (<edmundss.com>), Express Scripts, Inc. v. Whois Privacy Protection Service, Inc. / Domaindeals, Domain Administrator, WIPO Case No. D2008-1302 (<expresscripts.com>). In this context, the Panel finds that the addition of the letter “n” in the disputed domain name does not significantly affect the appearance or pronunciation of the disputed domain name. It thus does not obviate the confusing similarity with the trademark PINSENT MASONS and the <pinsentmasons.com> domain name of the Complainant.

Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks.

B. Rights or Legitimate Interests

Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, the consensus view is that, once the complainant has made 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 paragraph 4(a)(ii) of the Policy (section 2.1 of the WIPO Overview 3.0; Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270; Dow Jones & Company, Inc., (First Complainant) and Dow Jones LP (Second Complainant) v. The Hephzibah Intro-Net Project Limited (Respondent), WIPO Case No. D2000-0704).

The Complainant states that it has no ties whatsoever with the Respondent and has no knowledge of any legitimate noncommercial or fair use of the disputed domain name. There is also no indication that the Respondent would have been commonly known by the disputed domain name.

The Panel observes that the Complainant has generated an international reputation and goodwill in the field of legal services over many decades under and by reference to its name “Pinsent Masons”.

The disputed domain name resolves to a webpage displaying a variety of links, including links to solicitor services. It also displays a banner which offers the disputed domain name <pinnsentmasons.com> for sale. It is thus reasonably likely that the Respondent registered the disputed domain name knowing that it would attract interest from Internet users who are searching for the Complainant. It is also likely that every time a misled Internet user clicks on a link on that webpage, the Respondent generates revenues. In this context, UDRP panels have found that the use of a domain name to host a parked page comprising so-called pay-per-click links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the Complainant’s trademarks or otherwise mislead Internet users (section 2.9 of the WIPO Overview 3.0). Moreover, where the disputed domain name does not consist of an actual dictionary word or phrase, it is even more likely that the word is only being used as a keyword tied directly to the trademark value of the Complainant’s trademarks (National Trust for Historic Preservation v. Barry Preston, WIPO Case No. D2005-0424 (<historichotels.com>; Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415 (<proforcemartialarts.com>)).

As a result, the Panel cannot conceive of any basis upon which the Respondent could be said to have rights or legitimate interests in respect of the disputed domain name. The Panel thus believes that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. It is in other words a case calling for an answer from the Respondent. However, the Respondent has not answered the Complainant’s contentions.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

The third element of paragraph 4(a) refers to the question of whether the disputed domain name has been registered and is being used in bad faith by the Respondent.

Paragraph 4(b) of the Policy describes some circumstances which, if found to exist, will be evidence of the registration and use of the domain name in bad faith. Among these circumstances is the use of a domain name to intentionally attempt to attract, for commercial gain, Internet users to a 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 website or location or of a product or service on the website or location (paragraph 4(b)(iv) of the Policy).

(a) Registered in bad faith

The Complainant has been benefitting from trademark protection for its PINSENT MASONS mark from 2005 onwards. Moreover, the PINSENT MASONS trademarks are distinctive and enjoy a substantial international reputation in the legal services sector.

UDRP panels have consistently found that the mere registration of a domain name that is virtually identical to a famous or widely known trademark by an unaffiliated entity can by itself create a presumption of bad faith (section 3.1.4 of the WIPO Overview 3.0; Barclays Bank PLC v. PrivacyProtect.org / Sylvia Paras, WIPO Case No. D2011-2011). This is particularly true where the registered trademark has a highly distinctive character and has acquired a certain reputation. Moreover, the fact that the Respondent is attempting to take advantage of the Complainant’s reputation by capturing traffic from Internet users looking for the Complainant, by misspelling its name, adds to this presumption. The conduct of typosquatting has indeed been recognized as evidence of bad faith registration per se (Paragon Gifts, Inc. v. Domain.Contact, WIPO Case No. D2004-0107; ESPN, Inc. v. XC2, WIPO Case No. D2005-0444).

Therefore, it can reasonably be inferred that the Respondent knew, or should have known, the PINSENT MASONS trademarks when it registered the disputed domain name. The fact that the Respondent chose to register the disputed domain name (with the additional letter “n”) and opted not to offer any explanation in response to the Complainant, strongly suggests that the decision to register the disputed domain name <pinnsentmasons.com> was made in bad faith.

In light of the above, the Panel finds that the Respondent registered the disputed domain name in bad faith.

(b) Used in bad faith

The disputed domain name is in use. It resolves to a webpage displaying a variety of links, including links to legal services, and displays a banner which offers the disputed domain name <pinnsentmasons.com> for sale.

UDRP panels have found that attracting Internet traffic and diverting it to website(s) selling products of complainant’s competitors by using a domain name identical or confusingly similar is evidence of bad faith use (see Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556; Edmunds.com v. Ultimate Search, Inc., WIPO Case No. D2001-1319; National City Corporation v. MH Networks LLC, WIPO Case No. D2004-0128; and Sanofi-aventis v. Elizabeth Riegel and Andrew Riegal, WIPO Case No. D2005-1045). Moreover, the Panel observes that it is likely that the Respondent is benefiting from this confusion and diversion by receiving “click-through” commissions in accordance with conventional practices on the Internet when customers reach a site through a link on a portal. (Humana Inc. v. Domain Deluxe, WIPO Case No. D2005-0231). This strongly suggests bad faith use.

The fact that the portal website to which the disputed domain name leads displays a banner which offers the disputed domain name for sale points in this same direction.

Finally, the Panel believes that, given the well known nature of the PINSENT MASONS trademarks and the Complainant’s internationally established goodwill, members of the public will assume that there is an association between the disputed domain name and the Complainant. Therefore, it is difficult to see how the Respondent could make a good faith use of the disputed domain name <pinnsentmasons.com>.

Consequently, the Panel finds that the Respondent has also been using the disputed domain name in bad faith.

Therefore, the Panel concludes that the disputed domain name was registered and is being used in bad faith by the Respondent.

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 <pinnsentmasons.com> be transferred to the Complainant.

Geert Glas
Sole Panelist
Date: June 14, 2021