WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bond Dickinson LLP v. Domains by Proxy LLC / Peter Smith

Case No. D2015-1911

1. The Parties

The Complainant is Bond Dickinson LLP of London, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), represented by Bond Dickinson LLP, United Kingdom.

The Respondent is Domains by Proxy LLC of Scottsdale, Arizona, United States of America / Peter Smith of Douglas, Isle of Man, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name, <bonddickinson.lawyer> (the "Domain Name"), is registered with GoDaddy.com, LLC (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 26, 2015. On October 26, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 26, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 27, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on October 28, 2015.

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 October 29, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 18, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 19, 2015.

The Center appointed Tony Willoughby as the sole panelist in this matter on November 23, 2015. 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 invitation to the Complainant to amend the Complaint stemmed from the fact that the underlying registrant had availed himself of a privacy service, the above-named Domains by Proxy LLC. The underlying registrant was identified to the Center by the Registrar as being the above-named Peter Smith. For the purposes of this decision the Panel treats the underlying registrant as having been at all material times the beneficial owner of the Domain Name and henceforth all references herein to the Respondent are references to the above-named Peter Smith.

4. Factual Background

The Complainant is an English law firm formed in 2013 by the merging of two well-known English law firms of long standing, Dickinson Dees and Bond Pearce.

The Complainant is the registered proprietor of several trade mark registrations of or including its name, "Bond Dickinson", including by way of example United Kingdom Trade Mark No. 2653973 dated February 15, 2013 (registered May 24, 2013) BOND DICKINSON (words) for a wide variety of services in classes 9, 16, 35, 36, 38, 41 and 45.

The Domain Name was registered on October 31, 2014 and appears to resolve to the Complainant's website connected to its <bonddickinson.com> domain name. At all events the website connected to the Domain Name looks to the Panel to be substantially identical to the Complainant's website.

On July 2, 2015 the Respondent sent to the Complainant an email in the following terms:

"We recently acquired a large database of new domain name extensions which include Bonddickinson.lawyer.

Our team has started the process of SEO on these sites and Google is currently ranking them. Obviously as the name is pertinent to your company I would like to offer this out to you for £350, in order to cover my costs. Otherwise my business model for such domains is to open up public forums so that views and reviews can be made.

I would be very much interested in talking to you regarding this, please let me know when you are available to talk.

Many thanks and kind regards"

5. Parties' Contentions

A. Complainant

The Complainant contends that the Domain Name is identical or confusingly similar to its BOND DICKINSON registered trade 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 within the meaning of inter alia paragraph 4(b)(i) of the Policy.

B. Respondent

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

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, BOND DICKINSON (albeit without the space) and the ".lawyer" generic Top-Level Domain identifier, which indicates the Complainant's field of activity.

The Panel finds that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights.

C. Rights or Legitimate Interests

The terms of the Respondent's email to the Complainant of July 2, 2015, which are set out in section 4 above, combined with the nature of both the Domain Name and the website to which it is connected, make it clear that the Respondent knows that "Bond Dickinson" is the Complainant's name and that the Complainant is a law firm.

The terms of the email satisfy the Panel that the Respondent registered the Domain Name because it is the Complainant's name and with a view to selling the Domain Name to the Complainant at a profit. The kick in the tail is the threat to make the Domain Name available to third parties if the offer to sell is not taken up. While it is true that the Domain Name appears to resolve to the Complainant's website, there is nothing before the Panel to suggest that the Respondent, a commercial operator, registered the Domain Name for the benefit of the Complainant and, significantly, the Respondent has not sought to justify his actions by filing a Response.

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

D. Registered and Used in Bad Faith

The primary unchallenged contention of the Complainant is that the Respondent registered the Domain Name for the purpose of selling it at a profit to the Complainant. In the view of the Panel the evidence supports that contention.

The Panel finds that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(b)(i) 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 Domain Name, <bonddickinson.lawyer>, be transferred to the Complainant.

Tony Willoughby
Sole Panelist
Date: November 25, 2015