WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Injury Lawyers 4U Limited v. M A Case No. D2008-2005 1. The Parties
1.1 The Complainant is Injury Lawyers 4U Limited of Manchester, United Kingdom of Great Britain and Northern Ireland, represented by Redd Solicitors LLP, United Kingdom of Great Britain and Northern Ireland.
1.2 The Respondent is M A of Gwent, United Kingdom of Great Britain and Northern Ireland. 2. The Domain Names and Registrars
2.1 The disputed domain names and (the “Domain Names”) are registered with Tucows Inc (the “Registrar”). 3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 31, 2008. On December 31, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 31, 2008 and January 5, 2009, 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”).
3.2 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 January 9, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was January 29, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 30, 2009.
3.3 The Center appointed Matthew S. Harris as the sole panelist in this matter on February 9, 2009. 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
4.1 The Complainant is a non-profit making company that represents a consortium of personal injury solicitors' firms. The Complainant has been trading since 2003 under the name “Injury Lawyers 4 U”. It has spent in excess of £34 Million in the United Kingdom on various forms of advertising using that name.
4.2 The Complainant is also the owner of United Kingdom registered trade mark No. 2393674 in classes 35 and 42 and filed on June 7, 2005, which takes the following form:
4.3 The Complainant also operates websites in respect of its services from the domain names , and .
4.4 Very little is known about the Respondent. He did not provide either a full name or address in respect of the Domain Name registrations. The only name given is “A, M”, the address given is simply “West Newport, Gwent NP20 3EW” and he gives as his email addresses “niceic@” and “admin@”. He also did not provide a contact telephone number, listing his telephone number as “+44. 0000000”
4.5 The Domain Name was registered on April 22, 2008.
4.6 Initially, the Domain Name directed Internet users to the website operating from the Domain Name . This is a website operated by Webwise Marketing Limited and offers a solicitor referral service in relation to personal injury claims in the United Kingdom.
4.7 When approached by the Complainant's lawyers in May 2008, the operators of this website confirmed that they did not own the Domain Name, but confirmed that it was owned by an “online affiliate domain”, which pointed traffic to their site in return for affiliate fees. According to “”, the details provided to them for the Respondent were essentially the same as those set out in the WhoIs register for the Domain Name .
4.8 Following a letter before action sent on June 10, 2008 by email to the Respondent's “niceic@” email address, the Respondent sent an email in response to the Complainant's lawyers. In that email the Respondent appeared to identify himself as “Michael” and made the following statement:
“Never heard of your clients please send proof that they have exclusive rights to Injury Lawyers 4 u as I bought it in good faith to use for people who require help after an accident and as I am unemployed and live with mum need a way to make an extra income.”
4.9 Over the next few days, there then followed a fair degree of correspondence between the Respondent and the Complainant's lawyers. In that correspondence, the Respondent made the following statements:
(a) Redirection of the Domain Name away from the “” website would mean that he was “going to lose major incomes”;
(b) “If I was not to have the domain how come your client did not buy it, I own its mine unless some needs it more then an offer may be look at”;
(c) “Like I said I am out and use the computer for fun and try to make a few quid”; and
(d) “This is being resolved I have found out I can sell it more than likely to someone abroad as I will never use it now seeing that you say it is illegal. Probably to Nigerians so you can bug them instead seeing your clients expected something for nothing”
4.10 On June 11, 2008 and during the course of these discussions the Respondent registered the Domain Name .
4.11 At about this time the Respondent also initially redirected the Domain Name to the Complainant's website but a couple of days later he redirected it to the “” website operated by GX Networks Ltd.
4.12 By November 2008 the Domain Name resolved instead to a web page headed “100% Compensation” but not, it would appear, a web page operated by “”. It contained the text “We find the best Injury Lawyers 4 U” and “Click on the following to start your claim FREE: ” and when that link was clicked upon, it would take the Internet user to the “” website. Below that link was the following text:
“Disclaimer: We are not associated with anyone using the same or similar domain name, we recommend the website that have Injury Lawyers 4 U offering 100% Compensation which in our opinion give you the best deal. We only recommend online firms who have Injury Lawyers 4 U who work to get you what you are entitled to in respect of any accident or injury claim”
4.13 At the date of this decision both of the Domain Names resolve directly to the “” website. 5. Parties' Contentions A. Complainant
5.1 The Complainant contends that by reason of its use and promotion of the INJURY LAWYERS 4U mark and name, the INJURY LAWYERS 4U mark has become “a distinctive identifier associated with the Complainant or its services” and has “significant unregistered rights at common law in the UK” in relation to this mark.
5.2 It claims that the domain name is identical or confusingly similar to both its registered and unregistered trade mark. In assessing the question of confusing similarity, the Complainant suggests that reference be made to the decision of English High Court in Samann v. Tetrosyl [2006] EWHC 529 (Ch).
5.3 The Complainant also contends that there is confusing similarity between its marks and the Domain Name, as the replacement of the term “lawyers” with “claims” is insufficient “to displace the visual similarities” that otherwise exist between the Domain Name and its mark.
5.4 On the question of rights or legitimate interests, the Complainant contends that the use of the Domain Names to derive “affiliate” or “click through” revenue from “100% Compensation” does not provide rights or legitimate interests in a domain name (citing MasterCard International Incorporated v. Bob Norton,WIPO Case No. D2008-0703).
5.5 On the question of bad faith, the Complainant claims that bad faith may be present “where a domain name is so obviously connected with a well-known mark that its very use by someone with no connection with the mark suggests opportunistic bad faith” (citing Safoni-aventis v. Nevis Domains LLC,WIPO Case No. D2006-0303).
5.6 The Complainant also contends that it has engaged in “sponsored keyword advertising” for the term “injurylawyers4u”, such that search engine searches for this term would produce results related to the Complainant. It claims that it is reasonable to infer that the Respondent would have carried out searches prior to registering the domain names and had it done so, it would have been aware of the Complainant and its marks. Reference is also made to the decision of ACCOR v. Eliah Zusstone,WIPO Case No. D2006-0362, which it claims establishes that knowledge of another's mark when registering a domain name that incorporates that mark constitutes bad faith registration.
5.7 Further the Complainant contends that the Respondent's activities fall within the scope of paragraph 4(b)(iv) of the Policy given that the purpose of the registration and use of the Domain Names was said to be to earn affiliate fees. Reference is also made to the decision of AT&T Corp v. Yong Li,WIPO Case No. D2002-0960 as authority for the proposition that “initial interest confusion” is sufficient in this respect.
5.8 The Complainant also contends that correspondence with the Respondent suggests that the Domain Names were for sale, and that this in turn suggests that it was with such sale in mind that the Domain Names were registered.
5.9 Lastly, reference is made to the disclaimer which for a period appeared on the website operating from the Domain Name. It claims that this does not prevent a finding of bad faith registration (citing Volkswagen AG v. David's Volkswagen Page,WIPO Case No. D2004-0498). B. Respondent
5.10 The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
6.1 There are no exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response.
6.2 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects under paragraph 4(a) of the Policy. Namely the Complainant must prove that:
(i) the Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names (paragraph 4(a)(ii)); and
(iii) the Domain Names have been registered and are being used in bad faith (paragraph 4(a)(iii)).
6.3 However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”. A. Identical or Confusingly Similar
6.4 The Complainant relies upon a UK registered trade mark that is a device mark, but the design for the most part takes the form of stylized text. There are differing views expressed in cases under the Policy as to how marks that contain both textual and non-textual elements should be treated when it comes to assessing confusing similarity. One view is that the non-textual elements can be disregarded, whilst the other is that the non-textual elements can be taken into account and this may be a factor that makes confusing similarity less likely (see Minibar North America Inc. v. Ian Musk & GEMS Global Electronic Minibar Systems AS,WIPO Case No. D2005-0035). The Panel is of the view that the second approach is to be preferred. The mark is what it is, and in the view of the Panel believes it is in principle wrong to try and assess confusing similarity by simply ignoring the non textual elements of that mark 1.
6.5 Nevertheless, the Panel accepts that in this case the most distinctive element of the Complainant's registered trade mark is the textual element. The only difference between the textual element of the mark and the Domain Name is the “.net” TLD. In the circumstances, the Panel concludes that the Domain Name is confusingly similar to the Complainant's registered trade mark.
6.6 The Panel also accepts that the Complainant has by reason of its activities built up sufficient goodwill in the United Kingdom in the term “injurylawyers4u” to have “unregistered trade mark rights” in that term in England and Wales2 for the purposes of the Policy. Again the Domain Name is, in the opinion of the Panel, confusingly similar to that unregistered mark.
6.7 The Panel has reached a similar conclusion in relation to the Domain Name. The Domain Name still shares the “injury” and “4u” elements with the Complainant's registered and unregistered mark and the words “claims” and “lawyers” are to some degree conceptually related.
6.8 The Panel accepts in undertaking the necessary comparison that the term “4u” is common short hand for the words “for you” and therefore the term “injurylawyers4u” is inherently suggestive of some sort of service or website that provides information about, or services that relate in some way to, personal injury lawyers. However, the undisputed evidence of the Complainant is that by reason of its extensive advertising and use, the term has nevertheless become one that is associated with the Complainant.
6.9 In IFA Hotels & Resorts FZE v. Jaffar Sharif,WIPO Case No. D2008-0895 this Panel also suggested that it was “rare” for a panel to take into account claims that the elements of a trade mark relied upon were non-distinctive3. This is a statement that requires a little more explanation. It is not that such claims will never be persuasive. Take for example, a hypothetical situation where a complainant in proceedings under the Policy relies upon a mark that had been registered solely in respect of the provision of legal services, one of a number of elements of that mark is the term “lawyers” and the only similarity between that mark and the domain name was that term. In such an unusual case a panel might well find that there is no confusing similarity. However, cases under the Policy are rarely so clear cut. Certainly this is not the situation that arises in the current case. The Complainant's registration covers a number of classes and various services, and the similarities relied upon are more than just a single descriptive word.
6.10 Further, the Panel has also borne in mind the statement by many panels that the confusing similarity requirement involves what has often been described as “low threshold” test (see, for example, Linear Technology Corporation v. Spiral Matrix,WIPO Case No. D2006-0699 and Asset Marketing Systems, LLC v. Silver Lining,WIPO Case No. D2005-0560).
6.11 Another way of looking at this issue and one rationale for the “low threshold” test is that paragraph 4(a)(i) of the Policy merely requires that there be sufficient degree of similarity between the mark and the domain name in issue to persuade a panel that the complainant has an appropriate “interest”, “standing” or “locus” under the Policy to bring a complaint. For this reason reference to cases under local law as to the meaning or assessment of the terms “confusion” or “confusing similarity” (such as the Samann v. Tetrosyl case referred to by the Complainant in this case) is unlikely to be of much assistance.
6.12 That is not to say, that question of the alleged generic or descriptive nature of terms or marks have no place under the Policy. They may be highly relevant to an assessment of whether or not a respondent has a right or legitimate interest in a domain name or registered it in bad faith. It is simply that they will be rarely of significance so far as the paragraph 4(a)(i) test is concerned.
6.13 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
6.14 In this case it seems most likely that the Respondent registered the Domain Names with the intention of obtaining “click-through” revenue by redirecting Internet users to the “100percent-compensation” website.
6.15 It is possible for the use of a domain name to generate click through revenue to provide a legitimate interest within the meaning of paragraph 4(a)(ii) of the Policy. For example, if a respondent intends to profit from the descriptive nature of the word or words in the domain name without intending to take advantage of a complainant's rights and reputation in that term, then it may have a legitimate interest in the domain name (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.2). On the other hand, if the domain name in question was chosen because of the similarity to a name in which a complainant has an interest and in order to capitalise or otherwise take advantage of that similarity, then such registration and use does not provide the registrant with a right or legitimate interest in the domain name. (See, for example, the decision of three member panel in Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright,WIPO Case No. D2007-0267).
6.16 The Complainant refers to the case of MasterCard International Incorporated v. Bob Norton, WIPO Case No. D2008-0703, which it appears to suggest is authority for the proposition that use of a domain name for click through fees cannot provide a right or legitimate interest without the requisite intent to take such unfair advantage. The Panel is unconvinced that this is quite what this case says. It notes that in any event the panel in the MasterCard case clearly held as a matter of fact that the domain name was registered with the intent to take unfair advantage of the reputation of the Complainant's mark.
6.17 Essentially, therefore, in a case such as this, the assessment often boils down to the questions: did the respondent register the domain name with the complainant's mark in mind and has it deliberately used it to take advantage of the reputation of that mark? These are also precisely the questions that have to be addressed in assessing the question of bad faith registration and use and a separate assessment of the question of rights and legitimate interests adds very little. For the reasons that are explained in greater detail under the heading of bad faith, the Panel concludes that in this case the answer to both questions is yes.
6.18 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
6.19 The Complainant suggest that if a domain name is obviously connected with a well-known mark, then its very use by someone with no connection with the mark suggests opportunistic bad faith. It cites in this respect Sanofi-aventis v. Nevis Domains LLC,WIPO Case No. D2006-0303. The Panel agrees. However, it is a statement that needs to be approached with care. Essentially, this is shorthand for a more detailed reasoning. Key to the assessment of bad faith is a respondent's knowledge and intent4. The greater the reputation of a mark, the more distinctive it is in form and the greater the similarity between the domain name and that mark, then the less likely it will be that the domain name was registered without knowledge of that mark. Similarly, (absent any explanation or evidence to the contrary) the less likely it will be that the domain name was registered without some intent to take unfair advantage of the reputation of mark.
6.20 Therefore, where a domain name incorporates a mark that comprises an invented word that contains no descriptive element and that mark is very well known, it is relatively easy to infer the relevant knowledge and intent. Using the wording of the Sanofi-aventis (where the mark was the invented word PLAVIX and the domain name ) these facts alone suggest opportunistic bad faith. However, in most cases it will be safer to consider the issues of knowledge and intent in more systematic fashion. In the opinion of the Panel this is the right approach in this case.
6.21 Notwithstanding the descriptive and suggestive content of the term “injurylawyers4U” the Panel accepts that the Respondent was more likely than not to have been aware of the Complainant's trade mark usage of this term in relation to its services at the time he registered the Domain Name. Not only is there the extensive evidence provided by the Complainant of the Complainant's activities under that name, but also the almost immediate usage of the Domain Name after registration to link to the “100percent-compensation” website that offers similar services. This suggests some awareness of personal injury lawyer referral services in the United Kingdom. There is also the fact of the Complainant's use of the pre-existing domain name which is the “.com” equivalent of the “.net” name chosen.
6.22 In short the Panel does not accept the Respondent's assertion, made in his email of June 10, 2008, that prior to that date he had never heard of the Complainant
6.23 Further, the Panel accepts that the subsequent use of the Domain Name indicates why it was that this Domain Name was registered; i.e. for the purposes of generating “click-through” from the company operating the “100percent-compensation” website. The clear and obvious inference in this case is that the Respondent hoped that by reason of the similarity between the Complainant's name and mark and the Domain Name, Internet users intending to obtain information about the Complainant services would instead be directed to the services of a competitor of the Complainant. This constitutes bad faith use within the scope of paragraph 4(a)(iv) of the Policy.
6.24 The Panel also accepts the Complainant's assertion that it does not matter in these circumstances that the confusion is only initial interest confusion on the part of the Internet user that might well be dispelled when the Internet user reaches the “100percent-compensation” website and/or when it read the disclaimer that for a period of time appeared on the webpage at one point used with the Domain Name.
6.25 The Panel also adopts similar reasoning in relation to the Domain Name. Obviously, the points already made about the descriptive and suggestive content of the Domain Name apply equally here. There is also a lesser degree of similarity between the mark and the Domain Name. Nevertheless, this is more than offset by the fact that this Domain Name was registered in the midst of discussions with the Complainant. There is no doubt that the Respondent was aware of the Complainant's rights at the time of registration and the most credible explanation of the Respondent's actions is that he intended to continue to use the fame of the Complainant mark to redirect users to the “100percent-compensation” website but in the hope that “” was sufficiently different from the INJURY LAWYERS 4U mark to be legitimate. If that is what he thought, he was wrong. This was also registration and use in bad faith.
6.26 Other factors that points to a finding of bad faith are as follows:
(i) The fact that correspondence with the Complainant in June 2008 would suggest that he was prepared to sell the Domain Name to the Complainant. It may not be that sale for profit was the primary motivation in the registration of that Domain Name, but it does suggest that at that time the Respondent was seeking to extract financial advantage from the Domain Names arising out of their similarity to the Complainant's marks. This in turn throws light upon the motives of the Respondent at the time of registration.
(ii) The fact that the Respondent has been so coy about disclosing its true identity and address in WhoIs details for the Domain Names. These are not the actions the Panel would expect of a person who believes that his registration and dealing in the Domain Names were legitimate.
6.27 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy. 7. Decision
7.1 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 names and , be transferred to the Complainant.
Matthew S. Harris
Sole Panelist
Dated: February 11, 2009
1 Even if, given the Panel's subsequent comments as to the application of a “low threshold test”, in most cases whichever approach is adopted is unlikely to make a practical difference to the outcome of the assessment.
2 See footnote 4 to the decision of the Panel in Audiotech Systems Ltd. v. Videotech Systems Ltd.,WIPO Case No. D2008-0431 for a further discussion of how the term “unregistered trade mark rights” should be understood for the purposes of the Policy where the rights relied upon arise out of the English law of passing off.
3 It is the alleged non-distinctive element of the mark and not the domain name that is relevant here. It will be no answer under paragraph 4(a)(i) of the Policy for a respondent to claim that a term in a domain name is in some abstract sense “generic” or “descriptive”.
4 Mere knowledge is not enough and the decision of ACCOR v. Eliah Zusstone,WIPO Case No. D2006-0362 cited by the Complainant does not suggest otherewise.
Full & Egal Universal Law Academy