WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pinsent Masons LLP v. Sunny Legend

Case No. D2021-1145

1. The Parties

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

The Respondent is Sunny Legend, United States of America.

2. The Domain Name and Registrar

The disputed domain name <pinsnetmasons.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 April 14, 2021. On April 14, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 15, 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.

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 30, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 20, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 21, 2021.

The Center appointed Peter Burgstaller as the sole panelist in this matter on June 2, 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 leading multinational law firm with its roots and head office in the United Kingdom and offices in various countries around the world; it emerged from several merges of independent law firms (Annex 3 to the Complaint).

The company and business name of the Complainant consists of two originally independent law firms, namely PINSENT and MASONS. Now, the Complainant’s business and company name PINSENT MASONS is protected as registered trademark around the world, especially in the United Kingdom, European Union and various American, Asian as well as African countries and Australia from 2003 onwards (Annex 4 to the Complaint).

The domain name <pinsentmasons.com> was registered by the Complainant on April 9, 2014 (Annex 5 to the Complaint).

The disputed domain name <pinsnetmasons.com> was registered on February 19, 2020, by the Respondent Annex 1 to the Complaint). A webpage was not displayed under the disputed domain name since the host name resolution failed (Annex 6 to the Complaint).

5. Parties’ Contentions

A. Complainant

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 is a result of several mergers between law firms from 1995 onwards; finally, in 2004 the law firm PINSENT merged with the law firm MASONS and commenced trading under the business name PINSENT MASONS.

The Complainant now 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, a total legal team of around 1,800 and more than 2,500 staff.

The Complainant offers its services primarily under the business and company name “Pinsent Masons LLP” and especially under the domain name <pinsentmasons.com>, registered on April 9, 2014.

The Complainant is the registered proprietor of a variety of registered trademarks around the world, especially with regard to legal services.

The disputed domain name <pinsnetmasons.com> was registered on February 19, 2020; it is confusingly similar to the registered trademarks and business name PINSENT MASONS in which the Complainant has rights. It is a classic case of typosquatting since the letter “e” and second “n” in the word PINSENT were swapped. This change makes no difference to the overall impression of the dominant words PINSENT MASONS in the disputed domain name.

The Respondent registered the disputed domain name knowing that it is likely to attract interest from Internet users who are searching for the Complainant. It is clear that the Respondent is not making a legitimate noncommercial fair use of the disputed domain name and it have not acquired any legitimate right to use the disputed domain name since its registration either.

The domain name was registered and is used in bad faith.

B. Respondent

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

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove 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 with respect to 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

The Complainant submitted evidence, which incontestably and conclusively establishes rights in the trademark and business name PINSENT MASONS.

The disputed domain name <pinsnetmasons.com> is confusingly similar to the Complainant’s registered trademark PINSENT MASONS since the letters “e” and second “n” in the word “PINSENT” were simply mixed up. A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element (see section 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

It has also long been held that generic Top-Level Domains (“gTLD”) are generally disregarded when evaluating the confusing similarity of a disputed domain name.

The Panel therefore finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

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 (see section 2.1 of the WIPO Overview 3.0 ).

Moreover, the nature of the disputed domain name, comprising the distinctive marks PINSENT and MASONS together with a common, obvious, or intentional misspelling regarding the mark PINSENT, cannot be considered fair as these falsely suggest an affiliation with the Complainant that does not exist. See section 2.5 of the WIPO Overview 3.0.

Accordingly, the conditions set out in paragraph 4(a)(ii) of the Policy have been met by the Complainant.

C. Registered and Used in Bad Faith

As stated in many decisions rendered under the Policy (e.g. Robert Ellenbogen v. Mike Pearson, WIPO Case No. D2000-0001) both conditions, registration and use in bad faith, must be demonstrated; consequently, the Complainant must show that:

- the disputed domain name was registered by the Respondent in bad faith, and

- the disputed domain name is being used by the Respondent in bad faith.

(i) The Complainant is the owner of the distinctive registered trademark PINSENT MASONS, and has registered and used such trademark in many jurisdictions around the world, long before the registration of the disputed domain name. The Complainant also uses the domain name <pinsentmasons.com> to address its website.

The disputed domain name differs from the Complainant’s trademark PINSENT MASONS only in that the letters “e” and the second “n” in “PINSENT” were swapped; this is a typical case of typosquatting.

The registration of a domain name that is identical or confusingly similar especially to a distinctive trademark by an unaffiliated entity can by itself create a presumption of bad faith; this is particularly true if the disputed domain name comprises a distinctive trademark and typos as is the case at present (see section 3.1.4 of the WIPO Overview 3.0).

Therefore, the Panel is convinced that the disputed domain name was registered in bad faith by the Respondent, since it is not believable that the Respondent has registered the disputed domain name without knowledge of the Complainant and its rights.

Although a webpage was not displayed under the disputed domain name since the host name resolution failed, non-use of a domain name (including a blank or “coming soon” page) do not prevent a finding of bad faith under the doctrine of passive holding.

When examine the case, consideration must be given to the totality of the circumstances in each case, especially

(i) the degree of distinctiveness 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; or

(iii) the implausibility of any good faith use to which the domain name may be put.

In the present case the disputed domain name incorporates the entire distinctive Complainant’s trademark PINSENT MASONS together with a common, obvious, and an obvious intentional misspelling – swapping the letter “e” and “n” in “PINSENT”. Furthermore, the Respondent has failed to present any evidence of any good faith registration and use with regard to the disputed domain name, along with the fact, that there is no plausible reason for authorized or bona fide future active usage with regard to the disputed domain name by the Respondent.

These facts bring this case within the concept of bad faith use of the disputed domain name under paragraph 4(a)(iii) of the Policy (see especially Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Ladbroke Group Plc v Sonoma International LDC, WIPO Case No. D2002-0131; Philip Morris USA Inc v. Contact Privacy Inc / Stephanie Sutton, WIPO Case No. D2019-3073; see also section 3.3 of the WIPO Overview 3.0).

On the basis of these findings, the Panel finds that the disputed domain name was registered and is being used in bad faith according to 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 <pinsnetmasons.com> be transferred to the Complainant.

Peter Burgstaller
Sole Panelist
Date: June 10, 2021