WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Mills and Reeve LLP v. Peter Smith

Case No. D2015-1994

1. The Parties

The Complainant is Mills and Reeve LLP of London, United Kingdom of Great Britain and Northern Ireland ("UK"), represented by Mills & Reeve LLP, UK.

The Respondent is Peter Smith of Douglas, Isle of Man, UK.

2. The Domain Name and Registrar

The disputed domain name <mills-reeve.lawyer> 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 November 4, 2015. On November 4, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 4, 2015, 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 November 10, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 30, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default December 1, 2015.

The Center appointed Steven A. Maier as the sole panelist in this matter on December 3, 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.

4. Factual Background

The Complainant is a firm of English solicitors with offices at various locations in the UK.

The Complainant is the proprietor of UK trademark number 2354464 for MILLS & REEVE registered on July 2, 2004 in International Classes 16, 35, 36, 41 and 42 for goods and services including legal advice and legal services.

The disputed domain name was registered on October 30, 2014.

On the basis of evidence submitted by the Complainant, the disputed domain name has been used to resolve to a website which appeared to be a website operated by the Complainant.

5. Parties' Contentions

A. Complainant

The Complainant states that the firm of Mills & Reeve was founded in 1880 and that it has continuously provided legal services since that date. It provides legal services in various commercial areas within the UK and internationally and is ranked among the top 50 largest UK law firms. It represents more than 120 universities and colleges and leading international insurers and has been ranked in the top five UK law firms by the Chambers UK legal directory. As a result of these matters, the Complainant submits that the name and mark MILLS & REEVE has acquired substantial goodwill and reputation in the UK and internationally in relation to legal services.

The Complainant states that, apart from the Top-Level Domain ("TLD") ".lawyer" the disputed domain name is identical or very similar to the Complainant's trademark MILLS & REEVE. The Complainant submits that the TLD ".lawyer" does not distinguish the disputed domain name from the Complainant's mark and merely adds to the likelihood of confusion because the Complainant's mark is associated with legal services.

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant states that it has no connection with the Respondent and has never authorized the Respondent to register or use the disputed domain name or to operate the website to which it has resolved. The Complainant submits that the Respondent has used the disputed domain name for the purpose of a website which unlawfully passes itself off as being that of the Complainant and that such use of the disputed domain name cannot represent a bona fide offering of goods and services.

The Complainant submits that the disputed domain name has been registered and is being used in bad faith. The Complainant submits a print-out of the website to which the disputed domain name resolved on November 3, 2015. The website is headed "MILLS & REEVE" and appears on its face to be an official website of the Complainant. The Complainant states that it is not the operator of the website, which in fact comprises a poor rewording of the content of various pages taken from its own website. The Complainant states that the Respondent appears to have used "synonym software" to paraphrase the Complainant's own website content. The Complainant states that the navigation tabs and hyperlinks provided on the Respondent's website in fact redirect to the Complainant's own website.

The Complainant submits a copy of an email dated July 20, 2015 which it received from an organization named "Petersmithwebs" and with the subject line "www.mills-reeve.com". The email stated: "We are the owners of Mills-reeve.lawyer" and that "we are currently in the process of developing this domains [sic] into an online forum to provide members of the public for sharing opinions and/or complaints." The email continued: "At this time we are prepared to let this domain go for £350, once the public complaints forum goes live and we have ad revenue from traffic to the site this will no longer be available for sale." The email concludes by inviting the Complainant to contact the sender by telephone or email.

In the circumstances, the Complainant submits that the Respondent registered the disputed domain name primarily for the purpose of selling the disputed domain name to the Complainant for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the disputed domain name (paragraph 4(b)(i) of the Policy).

The Complainant also submits that the Respondent has used the disputed domain name for the purposes of a website which misrepresents itself as the Complainant's own website, and that in that regard the Respondent has infringed the Complainant's trademark MILLS & REEVE, has passed off its website as being that of the Complainant and has knowingly copied content from the Complainant's website. The Complainant submits that the Respondent registered the disputed domain name for the purposes of damaging the Complainant's reputation and of tarnishing its MILLS & REEVE trademark.

The Complainant further submits that the Respondent has been engaged in a pattern of domain name registration in order to prevent the owner of a trademark or service mark from reflecting the mark in a corresponding domain name (paragraph 4(b)(2) of the Policy. The Complainant cites three UDRP WIPO cases including two relating to English solicitors, namely Taylor Wessing LLP v. Peter Smith, WIPO Case No. D2015-0701 (domain name <taylorwessing.lawyer>) and Pinsent Masons LLP v. Peter Smith, WIPO Case No. D2015-0796 (domain name <pinsentmasons.lawyer>).

The Complainant seeks a transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

Even in a case such as this where the Respondent has not contested the Complaint, it is still necessary for the Complainant to establish that all of the three above elements are present.

A. Identical or Confusingly Similar

The Complainant has established to the satisfaction of the Panel that it has both registered and unregistered trademark rights in the name and mark MILLS & REEVE. The disputed domain name comprises the term "mills-reeve" together with the generic TLD ("gTLD") ".lawyer", which is typically to be ignored for the purposes of comparison under the first element. The Panel is satisfied that the disputed domain name, which incorporates the Complainant's trademark in its entirety, is identical or confusingly similar to the Complainant's trademark. The addition of the gTLD ".lawyer" does not serve to distinguish the disputed domain name from the Complainant's mark, but only adds to the confusion in circumstances where the Complainant's mark is associated with legal services.

B. Rights or Legitimate Interests

The Complainant states that it has no connection with the Respondent and has never authorized the Respondent to use its mark MILLS & REEVE for the purposes of the disputed domain name or the Respondent's website. On the contrary, it submits that the Respondent is using the disputed Domain name for the purposes of a misleading website which impersonates that of the Complainant. The Respondent has made no reply to the Complainant's contentions and has not therefore put forward any claim that it has rights or legitimate interests in respect of the disputed domain name, whether in the circumstances contemplated in paragraph 4(c) of the Policy or otherwise. The Panel concludes in the circumstances that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

The Panel accepts the Complainant's submissions, which have not been challenged by the Respondent, that the Respondent registered and has used the disputed domain name for the purposes of a website which mimics the content of the Complainant's own website and passes itself off as being owned or operated by the Complainant. In the view of the Panel, this conduct in itself constitutes bad faith.

The Panel also accepts the evidence of the July 20, 2015 email which requested a payment of £350 for the disputed domain name and implied that the website would be used for "public complaints" if this payment were not made. On this basis, the Panel finds that the Respondent registered the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the disputed domain name (paragraph 4(b)(i) of the Policy).

Further, the Panel accepts the Complainant 's submission that the Respondent has been found to have made bad faith registrations in prior UDRP WIPO cases, including the two cases cited above involving English solicitors and the domain names <taylorwessing.lawyer> and <pinsentmasons.lawyer>. The Panel finds this to constitute a pattern of bad faith registration on the part of the Respondent for the purposes of paragraph 4(b)(ii) of the Policy.

For the above reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith.

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 <mills-reeve.lawyer> be transferred to the Complainant.

Steven A. Maier
Sole Panelist
Date: December 7, 2015