WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bryan Cave Leighton Paisner LLP v. Registration Private, Domains by Proxy, LLC / Agapi Burkard
Case No. D2021-3341
1. The Parties
Complainant is Bryan Cave Leighton Paisner LLP, United States of America (“United States” or “US”), represented internally.
Respondent is Registration Private, Domains by Proxy, LLC, United States / Agapi Burkard, United States.
2. The Domain Name and Registrar
The disputed domain name <bclplawv.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 October 8, 2021. On October 8, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 13, 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 Complainant on October 13, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on October 18, 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 Respondent of the Complaint, and the proceedings commenced on October 20, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 9, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 11, 2021.
The Center appointed Phillip V. Marano as the sole panelist in this matter on November 29, 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
Complainant is an international law firm with more than 1,400 lawyers in 31 offices around the world. Complainant owns valid and subsisting registrations for the BCLP and BCLP LAW trademark in numerous jurisdictions, including BCLP (US Reg. No. 5,921,654 registered November 26, 2019) and BCLP LAW (UK Reg. No. 3,263,855 registered January 26, 2018) with the earliest priority dating back to April 1, 2018 and January 26, 2018 respectively.
Respondent registered the disputed domain name on August 31, 2021. At the time this Complaint was filed, the disputed domain name did not resolve to any active website content.
5. Parties’ Contentions
Complainant asserts ownership of the BCLP and BCLP LAW trademarks and has adduced evidence of trademark registrations in numerous jurisdictions around the world including in the United States and the United Kingdom, with earliest priority dating back to January 26, 2018. The disputed domain name is confusingly similar to Complainant’s BCLP and BCLP LAW trademarks, according to Complainant, because it incorporates them in their entirety, with the addition of the letter “v” as a purposeful typographical variation to confuse and misdirect Internet users.
Complainant further asserts that Respondent lacks any rights or legitimate interests in the disputed domain name based on: the lack of evidence that Respondent is in any way associated with Complainant, or otherwise licensed or authorized to use Complainant’s BCLP or BCLP LAW trademarks; and the lack of any evidence that Respondent is known by either of the terms “bclp” or “bclplaw”, or has procured any tradenames or trademarks for those terms.
Complainant argues that Respondent has registered and used the disputed domain name in bad faith for numerous reasons, including: Respondent’s use of the disputed domain name to attempt to defraud others by impersonating one of Complainant’s attorneys and fraudulently communicating via email regarding solicitation of payment for fake invoiced legal fees; Respondent’s intentional typosquatting on the BCLP LAW trademark with the addition of the letter “v” in the disputed domain name; and the fame of Complainant’s BCLP LAW trademark, coupled with Respondent’s otherwise passive holding of the disputed domain name.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
To succeed in its Complaint, Complainant must establish in accordance with paragraph 4(a) of the Policy:
i. The disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights;
ii. 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.
Although Respondent did not reply to Complainant’s contentions, the burden remains with Complainant to establish by a balance of probabilities, or a preponderance of the evidence, all three elements of paragraph 4(a) of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.3 (“A respondent’s default 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 […] UDRP panels have been prepared to draw certain inferences in light of the particular facts and circumstances of the case, e.g. where a particular conclusion is prima facie obvious, where an explanation by the respondent is called for but is not forthcoming, or where no other plausible conclusion is apparent.”); see also The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064 (“The Respondent’s default does not automatically result in a decision in favor of the complainant. The Complainant must still prove each of the three elements required by Policy paragraph 4(a)”).
A. Identical or Confusingly Similar
Ownership of a nationally or regionally registered trademark serves as prima facie evidence that Complainant has trademark rights for the purposes of standing to file this Complaint. WIPO Overview 3.0, section 1.2.1. Complainant submitted evidence that the BCLP and BCLP LAW trademarks have been registered in numerous jurisdictions with priority dating back to January 26, 2018, at least three years before the disputed domain name was registered by Respondent. Thus, the Panel finds that Complainant’s rights in the BCLP and BCLP LAW trademarks have been established pursuant to the first element of the Policy.
The only remaining question under the first element of the Policy is whether the disputed domain name is identical or confusingly similar to Complainant’s BCLP or BCLP LAW trademark. In this Complaint, the disputed domain name is confusingly similar to both Complainant’s trademarks because, disregarding the “.com” generic Top-Level Domain (“gTLD”), both trademarks are contained in their entirety within the disputed domain name. WIPO Overview 3.0, section 1.7. (“This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name … [I]n 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...”). In regards to gTLDs, such as “.com” in the disputed domain name, they are generally viewed as a standard registration requirement and are disregarded under the first element. WIPO Overview 3.0, section 1.11.
Furthermore, it is well established that domain names which consist of common, obvious or intentional misspellings of trademarks are considered to be confusingly similar for the purposes of the first element of the Policy. WIPO Overview, section 1.9 (“Examples of such typos include (i) adjacent keyboard letters, (ii) substitution of similar-appearing characters … (iii) the use of different letters that appear similar in different fonts, (iv) the use of non-Latin internationalized or accented characters, (v) the inversion of letters and numbers, or (vi) the addition or interspersion of other terms or numbers”). See e.g. Edmunds.com, Inc. v. Digi Real Estate Foundation, WIPO Case No. D2006-1043 (“This is clearly a ‘typosquatting’ case where the disputed domain name is a slight misspelling of a registered trademark to divert internet traffic … In fact, the domain name comprises the Complainant’s trademark … with a single misspelling of an element of the mark: a double consonant “s” at the end.”). In view of the evidence proffered by Complainant, the Panel agrees with the conclusion that Respondent purposefully added the letter “v” to the disputed domain name as a typographical variation camouflaged with the preceding letter “w” in the word “law” with the intent to confuse and misdirect Internet users.
In view of Complainant’s registrations for the BCLP and BCLP LAW trademarks, Respondent’s incorporation of Complainant’s trademarks in their entirety in the disputed domain name, and Respondent’s clear attempt at typosquatting on the BCLP LAW trademark, the Panel concludes that Complainant has established the first element of the Policy.
B. Rights or Legitimate Interests
Complainant must make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name, shifting the burden of production on this element to Respondent to come forward with evidence demonstrating such rights or legitimate interests. Where, as in this Complaint, Respondent fails to come forward with any relevant evidence, Complainant is deemed to have satisfied the second element of the Policy. WIPO Overview, section 2.1. It is evident that Respondent, identified by WhoIs data for the disputed domain name as “Agapi Burkard”, is not commonly known by the disputed domain name or Complainant’s BCLP or BCLP LAW trademarks.
Moreover, UDRP panels have categorically held that use of a domain name for illegal activity - including the impersonation of the complainant and other types of fraud - can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13. See e.g. Graybar Services Inc. v. Graybar Elec, Grayberinc Lawrenge, WIPO Case No. D2009-1017 (“Respondent has used the domain name to pretend that it is the Complainant and in particular to create false emails pretending that they are genuine emails coming from the Complainant and one of its senior executives”). Seealso The Commissioners for HM Revenue and Customs v. Name Redacted, WIPO Case No. D2017-0501 (“In addition, the disputed domain names … have had their web hosting suspended as a result of fraudulent activities. This is evidence of bad faith registration and use of the disputed domain names.”). As detailed below, Complainant has produced strong evidence to establish that Respondent has used the disputed domain name to impersonate one of Complainant’s employees in an attempt to fraudulently divert fees from Complainant’s client to a bank account controlled by Respondent. To this end, the second and third elements of the Policy may be assessed together where clear indicia of bad faith suggests that there cannot be any respondent rights or legitimate interests. WIPO Overview 3.0, section 2.15.
In view of the absence of any evidence supporting any rights or legitimate interests in the disputed domain name, and Respondent’s use of the disputed domain name to impersonate an employee of Complainant as part of a scheme to defraud Complainant’s clients, the Panel concludes that Complainant has established the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy proscribes the following non-exhaustive circumstances as evidence of bad faith registration and use of the disputed domain name:
i. Circumstances indicating that Respondent has registered or Respondent has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to Complainant who is the owner of the trademark to a competitor of that Complainant, for valuable consideration in excess of Respondent’s documented out of pocket costs directly related to the disputed domain name; or
ii. Respondent has registered the disputed domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
iii. Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
iv. By using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
UDRP panels have held that the use of a domain name for purposes other than to host a website may constitute bad faith. Such purposes include sending email, phishing, identity theft, or malware distribution. Many such cases involve the respondent’s use of the domain name to send deceptive emails, e.g., to obtain sensitive or confidential personal information from prospective job applicants, or to solicit payment of fraudulent invoices by the complainant’s actual or prospective customers. WIPO Overview 3.0, section 3.4. See also Edelman, Inc. v. Devteam Meetey, WIPO Case No. D2016-0500 (“The bad faith of the Respondent follows from the uncontested fact that the Respondent impersonated employees of the Complainant and even used the disputed domain name in requesting a third party to pay a large amount of money to the Respondent. This can only be seen as a very clear fraudulent behavior. Registering a domain name which is confusingly similar to the trademark of a complainant and subsequently using such domain name to impersonate employees of the Complainant in an attempt to commit fraud is a clear example of registration and use in bad faith. This Panel considers such behavior as an attempt to disrupt the business of the Complainant as well as an attempt to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s trademark”); Sumitomo Dainippon Pharma Co., Ltd., Sunovion Pharmaceuticals Inc. v. Raid Benson, WIPO Case No. D2018-2893 (finding bad faith when the domain name wasused to create email addresses that were used to defraud third parties by impersonatingemployees of the complainants).
Complainant has provided as evidence an email with the subject line “Invoice” sent by Respondent from an “@bclplawwv.com” email address to a client of Complainant. In that email, Respondent attempts to impersonate an employee of Complainant and asserts, “The wire is not yet received. There was a bad check deposit into our account, Due to this bank has place a hold on our account until this issue resolved, We need to change our ban account details[.]” The Panel considers this email to constitute uncontroverted evidence that Respondent has registered and used the disputed domain name in bad faith in furtherance of Respondent’s illegal scheme to defraud Complainant’s clients.
Moreover, the act of “typosquatting” or registering a domain name that is a common misspelling of a mark in which a party has rights has often been recognized as evidence of bad faith registration. WIPO Overview, section 3.2.1 (“Particular circumstances UDRP panels take into account in assessing whether the respondent’s registration of a domain name is in bad faith include: (i) the nature of the domain name (e.g., a typo of a widely known mark …”). Based on the evidence submitted by Complainant, it is clear that Respondent registered and used the disputed domain name in bad faith to intentionally typosquat on Complainant’s BCLP LAW trademark, impersonate Complainant, and defraud Complainant’s clients.
In view of Respondents intentional typosquatting on Complainant’s BCLP LAW trademark and Respondent’s use of the disputed domain name in furtherance of Respondent’s illegal scheme to impersonate Complainant and defraud Complainant’s clients, the Panel concludes that Complainant has established the third element of the Policy.
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, <bclplawv.com> be transferred to Complainant.
Phillip V. Marano
Date: December 13, 2021