WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Daly & Figgis Advocates v. Dwayne Tilleman

Case No. D2011-0153

1. The Parties

The Complainant is Daly & Figgis Advocates of Nairobi, Kenya, represented by Ashwini Bhandari, Daly & Figgis Advocates.

The Respondent is Dwayne Tilleman of Alberta, Canada.

2. The Domain Name and Registrar

The disputed domain name <dalyfiggis.com> (“the Domain Name”) is registered with GoDaddy.com, Inc. (“the Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 27, 2011. On January 28, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same day, 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. In response to a notification by the Center regarding the Registrar information, the Complainant filed an amended Complaint on February 1, 2011.

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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 2, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 22, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 23, 2011.

On February 23, 2011, the Respondent sent two email communications to the Center. The Center acknowledged receipt of the Respondent’s Supplemental Filing on February 24, 2011 and informed the Respondent that “the Panel when duly appointed will be informed of the Center’s receipt of this Supplemental Filing. It will be in the sole discretion of the Panel to determine whether to consider and/or admit the Supplemental Filing in rendering its decision, and whether to order further procedural steps, if any.”

The Center appointed Karen Fong as the sole panelist in this matter on March 4, 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.

The Panel accepts the Respondent’s unsolicited Supplemental Filing filed two days after the due date for Response and has given it due consideration in its decision. The Panel did not consider it necessary for the Complainant to file a reply to the Supplemental Filing. On March 4, 2011, the Center received a request from the Respondent to file additional evidence. On the same day the Panel issued Procedural Order No. 1 requesting the Respondent to file the evidence by close of business on March 7, 2011 and provide reasons why the Panel should consider this evidence filed out of time. To date, the Respondent has not filed the evidence.

4. Factual Background

The Complainant is a firm of advocates located in Nairobi, Kenya practicing under the name Daly & Figgis. It is the oldest law firm in Kenya and was established in 1899 and initial registration of its business name by the Kenyan Registrar of Business Names was in 1938. The firm’s website under the domain name <daly-figgis.com> was established on June 9, 2004. Daly & Figgis is a reputable firm within Kenya and the East African region and recognized in industry journals and directories like Legal 500, Chambers and IFLR 1000 which reviews law firms in various jurisdictions. The Complainant is known by its name Daly & Figgis. The Complainant’s reputation in the marketplace was recognized in the judgment by the High Court of Nairobi in an action filed by the Complainant against the Respondent for defamation. The Complainant’s application to register as a trade mark DALY & FIGGIS in classes 16 and 45 was accepted for advertisement on January 4, 2011.

The Respondent registered the Domain Name on December 6, 2008. The Domain Name is connected to the website “www.dalyfiggis.com” (‘the Website’) has at the top of the home page the words Daly & Figgis Advocates within a maroon border. The words are in exactly the same stylized form and typeface as the name that appears on the Complainant’s website. The maroon border is also the same colour as the maroon border on the Complainant’s website. The main content of the Website denigrates the Complainant as well as partners and lawyers of the firm.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has unregistered rights in the name Daly & Figgis by virtue of its long use and reputation such that the Daly & Figgis name has become a unique identifier associated with the Complainant and its services. The Domain Name is identical or confusingly similar to the Daly & Figgis name, the Respondent has no rights or legitimate interests with respect to the Domain Name, and that the Domain Name was registered and used in bad faith. The Complainant requests transfer of the Domain Name.

B. Respondent

The Respondent makes a number of allegations in its Supplemental Filing that are not relevant to the Complaint. The following are the relevant contentions:

(1) He does not have time to go through the fine print of the Complaint as he is too busy;

(2) Since the Complainant is a firm of lawyers, they would find ways of arranging for the decision to be in its favour;

(3) It is unfair that he needs to spend money to engage lawyers to respond to the Complaint;

(4) The Domain Name belongs to him and he will not surrender it.

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 was registered and is being used in bad faith.

B. Identical or Confusingly Similar

The Panel accepts that the Complainant has established unregistered trade mark rights in the Daly & Figgis name (‘the Trade Mark’) through use of more than a hundred years in connection with the provision of legal services. From the evidence filed, the Panel also accepts that the Trade Mark has become a distinctive identifier associated with the Complainant in Kenya and possibly other parts of the East African region.

The Domain Name comprises the Trade Mark in its entirety save for the ”&“ (ampersand) sign which cannot be registered in a domain name registration and the ”.com” generic suffix. The ”&“ sign is commonly used in the name of firms providing legal services. The functional equivalent of the ”&” sign is the word ”and” or deletion of the sign. (Kirkland & Ellis LLP v. DefaultData.com, American Distribution Systems, Inc., WIPO Case No. D2004-0136). Moreover for the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy it is permissible for the Panel to ignore the generic domain suffix. The Panel therefore finds that the Domain Name is the functional equivalent of the Trade Mark and is identical or confusingly similar to the Trade Mark.

C. Rights or Legitimate Interests

From the contents of the Website and the evidence filed, the Respondent had occasion to engage one of the lawyers of the Complainant to notarise an Affidavit and for reasons which are not clear was dissatisfied with the services rendered. The Respondent’s purpose for registering the Domain Name was to disparage the Complainant. The Overview of WIPO Panel View on Selected UDRP Questions states that there are two views in relation to the use of a domain name for a criticism site and whether that generates rights and legitimate interests. The Complainant has not alleged that the Respondent’s use is noncommercial. Assuming that the criticism site is noncommercial, the Panel is of the view that the right to criticize does not extend to registering a domain name that is identical or confusingly similar to the owner’s trade mark or conveys an association with the trade mark. In this case, the name that is adopted is functionally identical to the Trade Mark with nothing in the Domain Name to indicate that the site is devoted to criticism.

The Respondent is not commonly known by the Domain Name and it does not does not have the right to identify itself as the Complainant’s firm. Neither is there any bona fide offering of legal services or goods or services of any kind nor is there any legitimate noncommercial fair use of the Domain name. The use of the Domain Name is likely to confuse the Complainant’s peers, colleagues, client and prospective clients who mistype the Complainant’s website address “www.daly-figgis.com” as the only difference between the Domain Name and the Complainant’s domain name is the absence or the hypen between Daly and Figgis.

The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent’s response in the Supplemental Filing does not address any of the issues raised by the Complainant to support its Complaint and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.

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

For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

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

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

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

(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s web site or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on the holder’s web site or location.

The Panel is not limited by the circumstances listed in paragraph 4(b) to determine whether the Domain Name was registered and used in bad faith and the Panel can infer the proof of bad faith from additional circumstances provided that the two requirements, i.e. that the Domain Name was registered in bad faith and that the Domain Name is used in bad faith, are proven.

With respect to the registration of the Domain Name, the Panel is satisfied that the Respondent was aware of the Complainant and the Trade Mark when it registered the Domain Name. The Respondent had engaged the Complainant to notarise an Affidavit and was not satisfied with the services provided. It is clear from the contents of the Website that the Respondent’s intention for the registration of the Domain Name was to warn others not to do business with the Complainant. The fact that the Domain Name incorporates the Trade Mark almost in its entirety and the look and feel of the layout, typeface and colours used on the Website are identical and/or closely resemble the Complainant’s website is further evidence that the registration of the Domain Name was made in bad faith.

With respect to the use of the Domain Name, the main purpose of the Website is to denigrate the Complainant. It accuses the firm as being a “corrupt law firm” and names two of its lawyers as having “committed fraud against a client” and names two of the senior partners as having “chosen to sweep the matter under the rug”. “Do not patronize Daly & Figgis. Take your legal business elsewhere”. It also accuses the firm for engaging in libel. In addition, the Website also disparages the Law Society of Kenya for colluding with the Complainant. The Respondent does not specify or explain what the corrupt behaviour is or the libel referred to on the Website. The Respondent was given the opportunity to file further evidence under Procedural Order No. 1 but chose not to respond.

The Panel refers to the decision in The Royal Bank of Scotland Group and National Westminster Bank v. Pedro Lopez and A&A System Solutions and Alberto Rodriguez, WIPO Case No. D2002-0823 where the Panel stated as follows:

"without support, this innuendo serves no purpose other than to tarnish the reputations of Complainants and their trademarks. While Complainants need not know the identity of their accusers to respond to the accusations, Complainants cannot defend themselves against Respondents’ slurs without knowing the facts on which they are based. It is here that Respondents’ free speech arguments fail. Respondents may have a valid basis to denigrate Complainants, but having failed to allege any basis for their slurs on their website, Respondents have not demonstrated that use of their Domain Names is legitimate […] Respondents having failed to provide a better explanation (or any explanation) other than that they sought to tarnish Complainants and their trademarks, Panel finds that Respondents have not engaged in legitimate non-commercial or fair use of the Domain Names, nor have they shown a lack of bad faith sufficient to negate Complainant’s showing of bad faith use and registration."

This is just such a case where without giving any reasons, the Respondent has sought to tarnish the reputation of the Complainant over the Internet which is bad faith behaviour. The fact that the Website warns others not to do business with the Complainant shows that the Domain Name is being registered and used primarily for the purpose of disrupting the business of the Complainant. The Respondent however is not a competitor of the Complainant and the conduct there does not fall squarely within paragraph 4(b)(iii). However, the Panel finds that the conduct above can be considered additional circumstances evidencing bad faith (The Royal Bank of Scotland Group plc, National Westminster Bank plc A/K/A NatWest Bank v. Personal and Pedro Lopez, WIPO Case No. D2003-0166).

In view of the above, the Panel finds that the Respondent has registered and used the Domain Name in bad faith.

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 <dalyfiggis.com> be transferred to the Complainant.

Karen Fong
Sole Panelist
Dated: March 15, 2011