WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pinsent Masons LLP v. Raymond

Case No. D2019-1730

1. The Parties

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

The Respondent is Raymond, United States of America.

2. The Domain Name and Registrar

The disputed domain name <pinsetmasons.com> (the “Domain Name”) 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 July 22, 2019. On July 22, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 23, 2019, 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 July 24, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 13, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 14, 2019.

The Center appointed Nicholas Smith as the sole panelist in this matter on August 23, 2019. 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 law firm headquartered in the United Kingdom but operating internationally with 25 offices across the United Kingdom, Europe, Asia, and Africa. The Complainant has over 400 partners, 2,500 staff, and has traded under the Pinsent Masons name since 2004. The Complainant has since 2004 operated a website from “www.pinsentmasons.com”.

The Complainant is the owner of trade mark registrations in various jurisdictions (including the European Union, China, United Kingdom and United States) for marks consisting of the words “Pinsent Masons” (the “PINSENT MASONS Mark”) including United Kingdom registration No. 2484418 registered on September 12, 2008, for services in class 42.

The Domain Name was registered on February 3, 2019. The Domain Name does not, and there is no evidence that it ever has, redirect to an active webpage.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

(i) that the Domain Name is confusingly similar to the Complainant’s PINSENT MASONS Mark;

(ii) that the Respondent has no rights nor legitimate interests in respect of the Domain Name; and

(iii) that the Domain Name has been registered and is being used in bad faith.

The Complainant is the owner of the PINSENT MASONS Mark, being the owner of trade marks registered in various jurisdictions for the PINSENT MASONS Mark. The Domain Name is confusingly similar to the PINSENT MASONS Mark since it only removes the second “n” in “pinsent” which is a class case of typosquatting.

There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Complainant has not granted any license or authorization for the Respondent to use the PINSENT MASONS Mark. The Respondent does not use the Domain Name for a bona fide purpose or legitimate noncommercial purpose. Rather the Domain Name has never been used in any active way.

The Respondent has registered and proposes to use the Domain Name in bad faith. Given the fame of the PINSENT MASONS Mark and the nature of the Domain Name, being a minor misspelling of the PINSENT MASONS Mark, there are no plausible circumstances under which the Respondent could legitimately use the Domain Name other than in bad faith. In such circumstances, the Respondent’s passive holding of the Domain Name amounts to use of the Domain Name in bad faith.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.

The Complainant is the owner of the PINSENT MASONS Mark, having registrations for the PINSENT MASONS Mark as a trade mark in the United Kingdom.

Disregarding the “.com” generic Top-Level Domain (“gTLD”) as a necessary technical requirement of the Domain Name, the Domain Name is confusingly similar to the PINSENT MASONS Mark since it wholly incorporates the PINSENT MASONS Mark, other than the removal of the second letter “n” which creates a minor misspelling that would be easy for an Internet user to overlook. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

To succeed on this element, a complainant may make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. If such a prima facie case is made out, the respondent then has the burden of demonstrating rights or legitimate interests in the domain name.

Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating PINSENT MASONS Mark or a mark similar to the PINSENT MASONS Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name.

There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial use. In fact there is no evidence of any demonstrable preparations to use the Domain Name at all.

The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has chosen not to respond to the Complaint and thus has failed to provide any evidence of rights and legitimate interests in the Domain Name. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

For the purposes 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 the Domain Name in bad faith:

(i) circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registrations to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or

(ii) the Respondent has registered the Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) the Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.

The Panel finds on the balance of probabilities that the Respondent was aware of the Complainant and its reputation in the PINSENT MASONS Mark at the time the Respondent registered the Domain Name. “Pinsent Masons” is not an ordinary English word or even an ordinary English name or combination of names. There is no obvious reason, nor has the Respondent offered an explanation, for the Respondent to register a domain name that consists of a minor misspelling of the PINSENT MASONS Mark unless there was an intention to create a likelihood of confusion between the Domain Name and the Complainant and the PINSENT MASONS Mark.

The Panel is prepared to infer, based on the conduct of the Respondent, including the passive holding of the Domain Name, the nature of the Domain Name itself, being a minor misspelling of a distinctive and unusual mark, the failure by the Respondent to participate in this proceeding or otherwise provide any explanation of its conduct in registering a domain name that is confusingly similar to the PINSENT MASONS Mark and the lack of any apparent legitimate reason for the registration and use of the Domain Name, that the Domain Name is most likely being held pending use in a bad faith manner that would take advantage of confusion between the Domain Name and the PINSENT MASONS Mark. As such, Panel finds that the passive holding of the Domain Name does not prevent a finding of bad faith.

Accordingly, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith under 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 Domain Name, <pinsetmasons.com>, be transferred to the Complainant.

Nicholas Smith
Sole Panelist
Date: August 25, 2019