WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

McGrigors LLP v. Fraser Coutts

Case No. DCO2011-0022

1. The Parties

The Complainant is McGrigors LLP of Edinburgh, the United Kingdom of Great Britain and Northern Ireland, represented internally.

The Respondent is Fraser Coutts of Edinburgh, the United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name, <mcgrigors.co> (the “Domain Name”), is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 6, 2011. On April 7, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 7, 2011, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 15, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 5, 2011. The Response was filed with the Center on May 2, 2011.

The Center appointed Tony Willoughby as the sole panelist in this matter on May 11, 2011. 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, long-established Scottish law firm trading under the names McGrigor Donald & Co from 1871 to 1987, McGrigor Donald from 1987 to 2004 and McGrigors from 2004 to date. It is the registered proprietor of United Kingdom trade mark registration number 2340333 dated August 12, 2003 (registered on January 23, 2004) McGRIGORS (word) in classes 35, 36 and 42 for various advisory and legal services. The Complainant operates a website connected to its domain name <mcgrigors.com>, a domain name which it registered on July 10, 1996.

The Domain Name was registered on September 11, 2010. As at the date of the Complaint the Domain Name was connected to a holding page hosted by EasySpace.

On November 22, 2010 the Complainant wrote to the Respondent drawing the latter’s attention to the Complainant’s trade mark rights and seeking transfer of the Domain Name.

On November 25, 2010 the Respondent replied objecting to the tone of the Complainant’s letter and stating that he registered the Domain Name because he was proposing to produce a whisky brand under the Mcgrigors (or Clan Mcgrigors) name for export to the Americas. He indicated a willingness to consider undertaking not to use the Domain Name for any law-related business.

On December 6, 2010 the Complainant wrote again to the Respondent doubting the veracity of the Respondent’s response, it having discovered that on the same day that the Respondent registered the Domain Name he also registered other ‘.co’ domain names featuring the names of other well-known Scottish law firms e.g. <brodies.co>, <burness.co>, <turcanconnell.co> and <mortonfraser.co>, to name but a few. The Complainant repeated its request for transfer of the Domain Name.

On December 12, 2010 the Respondent wrote refusing to accede to the Complainant’s demands and characterizing the Complainant’s “attitude deplorable and arrogance incorrigible.”

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is identical or confusingly similar to its registered trade/service mark, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name was registered and is being used in bad faith.

B. Respondent

The Respondent denies that he registered the Domain Name in bad faith and contends that he has a legitimate interest in respect of it. The Respondent asserts that he registered the Domain Name because he proposed to launch an export brand of whisky under the name Mcgrigors (or Clan Mcgrigors) and targeting the Americas. He states that he selected the “.co” domain because it was suitable for his target market.

The Respondent places much weight not only on the fact that his intentions for the Domain Name are so far away from the Complainant’s field of activity, but also on the fact that domain names are supplied on a first-come-first-served basis and had the Complainant any real interest in the Domain Name, the Complainant would have registered it. He also cites a number of other “mcgrigors”-related domain names, which are still available for acquisition, the Complainant not having acquired them.

6. Discussion and Findings

A. General

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:

(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(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.

B. Identical or Confusingly Similar

The Domain Name comprises the Complainant’s registered trade mark (albeit all in lower case) and the “.co” generic domain suffix.

It is now well-established that for the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, the Panel may ignore, amongst other things, lower/upper case variations in the name/mark and the generic domain suffix in the domain name at issue.

The Panel finds that the Domain Name is identical to a trade/service mark in which the Complainant has rights.

C. Rights or Legitimate Interests

As to this head of the Policy, paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) is of relevance.

“Consensus view: While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP. If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”

The Complainant has demonstrated (and the Respondent has not denied) that on September 11, 2010 the Respondent registered a series of domain names (including the Domain Name) featuring the names or abbreviations of names of leading Scottish law firms. The Complainant has produced details of nine such registrations, four of which are identified in section 4 above. For what possible reason could the Respondent have obtained those registrations?

The Respondent has provided no answer save that in relation to the Domain Name, his plan is to launch a brand of whisky under the name Mcgrigors (or Clan Mcgrigors). He has also claimed that all the names in question are generic surnames. However, McGrigors is not a generic surname. McGrigor is the surname. One of the other domain names in this category of the Respondent’s registrations is <shepwedd.co>, Shepherd and Wedderburn being a Scottish law firm with a website connected to its domain name, <shepwedd.co.uk>. Shepwedd is not a surname, nor, in the Panel’s view, is it likely to be a roaring success as a brand name for a whisky whether for export to the Americas or anywhere else.

For the Respondent to succeed under this head, he has to provide a credible answer to the Complainant’s allegations and the less immediately obvious the credibility of the answer, the greater the amount of supporting evidence the Panel will require.

In the view of the Panel the Respondent’s answer is hopelessly inadequate. Indeed, it is disingenuous. Moreover there is no supporting evidence. All that the Respondent has done (beyond bare assertions) is to point the Panel in the direction of a website at “www.rocketfuel.co.uk”. That website is a website of the Rocket Fuel Drinks Company and appears to be devoted exclusively to a “Rocket Fuel” brand of vodka. Even if the Panel were to accept that the Respondent is associated with that company (the Panel was unable to find a connection on visiting the site), there was nothing there to connect that company with whisky, still less plans for the launch of a brand under the name Mcgrigors (or Clan Mcgrigors).

The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.

D. Registered and Used in Bad Faith

Examples of what shall constitute registration and use in bad faith within the meaning of paragraph 4(a)(iii) of the Policy are set out in paragraph 4(b) of the Policy, but it is a non-exhaustive list.

The Panel has found that the Domain Name is identical to the Complainant’s trade/service mark. Furthermore it is plain that when the Respondent registered the Domain Name he knew that it was the Complainant’s name, he having on the same day registered a number of other law firms’ names as domain names in the ‘.co’ domain. In other words, it was not a coincidence. Further, in Section C above the Panel has dismissed his explanation for his registration of the Domain Name as false. In this Panel’s view, his explanation is not credible.

Yet the Respondent claims to be a businessman. Why would a businessman register a series of names of law firms as domain names and then provide a false explanation for having done so?

Inevitably, the Panel has to conclude that the Respondent’s intentions were abusive. The Complainant contends that his purpose was to sell the domain names to the law firms in question. That may well be so, in which case the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(b)(i) of the Policy and even though the Domain Name is not in active use, save to connect to a holding page hosted by EasySpace. As to this latter point paragraph 3.2 of the WIPO Overview 2.0 is apposite:

“Consensus view: With comparative reference to the circumstances set out in paragraph 4(b) of the UDRP deemed to establish bad faith registration and use, panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant's concealment of its identity. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa. Some panels have also found that the concept of passive holding may apply even in the event of sporadic use, or of the mere ‘parking’ by a third party of a domain name (irrespective of whether the latter should also result in the generation of incidental revenue from advertising referrals).”

In this case the Respondent has provided an explanation for his registration of the Domain Name, but the Panel does not believe the explanation. The Panel does not know what the Respondent’s true intentions are in relation to the Domain Name, but as indicated above believes them to be abusive. Were it otherwise the Respondent would have been open and candid with the Panel. The Respondent’s purpose may have been, as the Complainant contends, to sell the Domain Name to the Complainant or it may have been to in some way disrupt the business of the Complainant or it may have been with a view at some stage in the future to monetise the Domain Name by connecting it to a site earning money for the Respondent. However, all these uses would be abusive, relying as they would on the trade mark value of the Domain Name. The Panel believes it probable on the evidence before it that the Respondent registered the Domain Name for one of these reasons.

In these circumstances, the Panel finds that the Respondent’s continued holding of the Domain Name constitutes a real and continuing threat hanging over the head of the Complainant, which should not be allowed to remain.

The Panel finds that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <mcgrigors.co>, be transferred to the Complainant.

Tony Willoughby
Sole Panelist
Dated: May 13, 2011