WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Mishcon de Reya v. Domains Hosting Services

Case No. D2014-1334

1. The Parties

The Complainant is Mishcon de Reya of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented internally.

The Respondent is Domains Hosting Services of Highland Park, Illinois, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <mishcondereya.com> is registered with Network Solutions, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 6, 2014. On August 6, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 6, 2014, 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 August 11, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was August 31, 2014. The Center received communications from the Respondent on August 29, 2014, and on September 7, 2014. No formal Response was filed by the Respondent.

The Center appointed WiIliam A. Van Caenegem as the sole panelist in this matter on September 15, 2014. 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 Respondent requested an extension of the term for filing a formal Response. The Complainant opposed the granting of the extension and there appeared to be no legitimate grounds for the granting of an extension. The Center thus informed the parties that the due date for Response remained unchanged, by email of September 9, 2014.

4. Factual Background

The Complainant filed an application for the trademark MISCHCON DE REYA in the United Kingdom on December 8, 1999. The trademark was entered on the register on June 2, 2000 (UK 00002216534) for services in classes 35, 36 and 45. The Complainant filed an application for the same trademark in the United States on January 8, 2010 for legal services. The trademark was registered on May 15, 2011 (Reg No 3930596), also for a number of other classes of services, including publications.

The disputed domain name was registered on January 9, 1999.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that it has used the mark MISCHCON DE REYA continuously since 1988, and contends that it is a unique mark, consisting of words that do not form part of the English language. Online searches the Complainant conducted for MISCHCON DE REYA generate results that almost universally refer to the Complainant. Prior to the registration of the disputed domain name the Complainant already had a well established reputation in the field of legal services, it asserts. It has a strong reputation partly connected to its representation of Princess Diana of Wales in her divorce proceedings, and had a turnover of close to GBP 100 million in 2013. According to the Complainant the disputed domain name was registered at a time when the Complainant was one of the most high profile law firms, regularly referred to in the media. The Complainant also asserts that it has expended “hundreds of thousands” of GBP and USD on promoting its business.

The Complainant asserts that it is prevented from using the disputed domain name as its primary web presence and therefore uses the domain name <mischcon.com>. It has also registered a number of other domain names incorporating its mark and name in various ways. The Complainant also states that it employs some 300 lawyers many of whom have a high profile, and was named “law firm of the year” in the 2012 Lawyer Awards. It has also enjoyed other awards and nominations.

According to the Complainant, the website to which the disputed domain name resolves remained undeveloped until October 2013. In that month, the Respondent developed a webpage with images of legal figures and a list of links to diverse legal service providers, and also to websites not providing legal goods or services such as hotels and handyman services. In November 2013, the Complainant emailed the Respondent Domain Name Host and spoke with a representative of the latter in early December, the same person then replying by email to the Complainant. At some point after these exchanges, and before June 2014 the relevant website content was changed to include four articles relating to a fraud perpetrated by an ex-partner of the Complainant. The pages also contain click-through advertisements, for legal services, bankruptcy advice, legal jobs and currency advice. According to the Complainant, the intention of the Respondent is to rely on the Complainant’s reputation to attract potential clients to its website, only to tarnish its reputation and recommend alternative legal services providers, with a presumed “pay-per-click” (“PPC”) benefit.

Further, according to the Complainant, the disputed domain name is identical to its registered trademark MISCHCON DE REYA. The Complainant has also not authorized or licensed the Respondent to use the Complainant’s trademark or incorporate it in any domain name. According to the Complainant, the Respondent is not commonly known by the name “Mishcon de Reya”, nor has it ever used that name or been known under it in any bona fide manner. By the time the Respondent registered the disputed domain name, the Complainant was already well-known under the name “Mischcon de Reya”. Further, using another person’s mark to offer directory services is not a bona fide offering of goods or services, according to the Complainant. The Complainant cites a previous UDRP panel decision where it was stated that using a domain name identical to a Complainant’s trademark for the purpose of otherwise lawful criticism is not legitimate, and that references on the most recent version of the relevant website to a fraud scandal involving an ex-partner of the Complainant need to be assessed in that light.

Finally, the Complainant contends that it is inconceivable that the disputed domain name was chosen without knowledge of the Complainant. There would be no reason for choosing and registering the three terms comprising the Complainant’s name and mark. Until recently, the Respondent did not make any use of the disputed domain name other than to attract Internet users for commercial gain to its website by creating confusion with the Complainant. However, the Respondent then incorporated some press articles concerning fraudulent conduct of an ex-partner, those articles containing many references to the Complainant, and also provided links to competing legal service providers. This had the effect of attracting potential customers to the website at the disputed domain name, then to divert them to other legal service providers by putting before them negative publicity about the Complainant, which was in fact historical in nature.

According to the Complainant, both recent uses made by the Respondent of the website to which the disputed domain name resolves are intended to cause damage to the Complainant by diverting customers and blackening its reputation. According to the Complainant, the Respondent is also involved in a pattern of registering other people’s trademarks to prevent them from reflecting their marks in a corresponding domain name. The Complainant cites <tolerex.com> and <paxene.com> as examples of domain names incorporating well-known trademarks that have been illegitimately registered by the Respondent.

B. Respondent

The Respondent did not file a formal response. The Respondent did engage in some communications with the Complainant, and also with the Center. Such communications as are relevant to the resolution of this matter are referred to in the discussion and findings below.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel finds that the disputed domain name is identical to the registered trademark MISCHCON DE REYA of the Complainant.

B. Rights or Legitimate Interests

The trademark and business name of the Complainant is unique and distinctive. The Complainant has not authorized the use by the Respondent of its name or trademark in any way, including for incorporation in a registered domain name. Nothing before the Panel indicates that the Respondent is known by the name “Mischcon de Reya” or has any legitimate business or goodwill in that name or anything similar to it. It is apparent from the choice of domain name and the contents of the website to which the disputed domain name resolves that the Respondent is aware of the Complainant’s activities as a city law firm. According to the material before the Panel, the Respondent has caused links to competing legal services providers and other businesses to appear at a website which an Internet user would legitimately expect, given the similarity of the disputed domain name to the Complainant’s trademark, to point to the Complainant’s primary website. This conduct is not apt to vest legitimate interests or rights in the Respondent. Nor can the Respondent claim that the website to which the disputed domain name resolves is one established for the purpose of legitimate criticism. As previous Panels have pointed out, the right to establish a website critical of a trademark owner does not necessarily extend to incorporating a literal reproduction of its mark without more in the domain name. Further, including a few articles about a certain adverse event, without any further analysis or comment, and of historical relevance only, does not, in this Panel’s view, amount to a legitimate criticism website. This is all the more the case where that content is surrounded and interspersed by hyperlinks to competing legal services and other websites, intended to generate PPC revenue for the Respondent. It would be illogical if rights or legitimate interests could vest in a Respondent in such circumstances.

Therefore the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

As indicated above, the Complainant’s trademark and business (partnership) name is highly distinctive. It was well established in the public realm at the time that the disputed domain name was registered, and coincidence cannot explain why the Respondent would choose to register such an unusual combination of words. It is also apparent that the Respondent knew of the Complainant’s goodwill and the nature of its business and intended to profit from same, from the nature of the hyperlinks that were displayed on the relevant website from late 2013, as they mainly relate to legal services. The exchanges the Respondent had with the Complainant, during which it advanced entirely spurious grounds for owning the disputed domain name, speak of nothing other than a disingenuous approach to the Complainant and complete disregard for its interests. The disputed domain name is exactly the name the Complainant would choose and expect to use as its principle web platform. Further, the exchanges the Respondent engaged in with the Center, seeking an extension of time to file a Response, were also disingenuous and thoroughly unpersuasive. There were not legitimate grounds for seeking such extension and the Respondent appeared intent only upon disrupting the normal UDRP process.

Therefore the Panel holds that the disputed domain name was registered and used in bad faith.

The Panel is aware that the disputed domain name was registered in 1999 but as indicated in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.10, delay in bringing a complaint does not of itself prevent a complainant from being able to succeed under the UDRP, where it can establish a case on the merits under the requisite three elements. The Complainant in this case succeeded in establishing the three elements of the UDRP and is therefore entitled to have the disputed domain name transferred to it.

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 disputed domain name <mishcondereya.com> be transferred to the Complainant.

WiIliam A. Van Caenegem
Sole Panelist
Date: September 23, 2014