WIPO Domain Name Decision D2009-0720 for thelawsociety.org

WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION The Law Society v. RareNames WebReg / Rarenames, Inc. Case No. D2009-0720 1. The Parties

The Complainant is The Law Society of London, United Kingdom of Great Britain and Northern Ireland (“UK” or United Kingdom), represented by Rouse Legal, United Kingdom.

The Respondent is RareNames WebReg / Rarenames, Inc. of Waltham, Massachusetts, United States of America, represented by NameMedia, Inc. Massachusetts, United States of America. 2. The Domain Name and Registrar

The disputed domain name is registered with Azdomainz, LLC. 3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 3, 2009. On June 3, 2009, the Center transmitted by email to Azdomainz, LLC a request for registrar verification in connection with the disputed domain name. On June 10, 2009, after the Center had sent two reminders regarding the registrar verification, Azdomainz, LLC 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 June 12, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was July 2, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 3, 2009.

The Center appointed Alistair Payne as the sole panelist in this matter on July 15, 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.

The Center received the Respondent's Response after the deadline indicated in the Notification of the Complaint, and therefore drew the same to the Panel for determination as to admissibility. The Panel finds it helpful to admit and consider the Respondent's belated Response in this case, for reasons discussed further below. 4. Factual Background

The Complainant is the Law Society of 113 Chancery Lane, London. The Complainant is the representative and regulatory body for solicitors in England and Wales. The Complainant was founded on June 2, 1825 under the name of the Law Institution. It acquired its Royal Charter in 1831 and in 1845 it was granted a new Royal Charter which defined it as an independent, private body empowered to undertake a representational function for the solicitors' profession in England and Wales. From the late nineteenth century it began to acquire statutory functions and powers to regulate the solicitors' profession in England and Wales. Over the ensuing years the Complainant became known as The Law Society and formally changed its name to The Law Society in 1903. The Complainant is the registered proprietor of THE LAW SOCIETY trade mark (UK Registration No. 2060447).

The Respondent is Rare Names, Inc., successor-in-interest to Rare Names, WebReg, who registered the Disputed Domain Name on April 9, 2004. The Respondent registers domain names that become eligible for registration through expiration and deletion. The Respondent has stipulated that the Panel may transfer the Disputed Domain Name to the Complainant. 5. Parties' Contentions A. Complainant

The Complainant contends that the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights. The Complainant supports this contention by reference to the fact that it is the proprietor of THE LAW SOCIETY trade mark, UK Registration No. 2060447. The Complainant also submits that it has common law trade mark rights in respect of THE LAW SOCIETY mark acquired as a result of long and extensive use of its name.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant supports this contention by reference to the fact that the Respondent is not known by the name, “the law society”.

The Complainant contends that the web site to which the Disputed Domain Name resolves is connected to a pay-per-click directory site which the Respondent is using for commercial gain.

The Complainant contends that the Disputed Domain Name was registered and is being used in bad faith. The Complainant contends that the Respondent registered the Disputed Domain Name knowing that it was a term identifying the Complainant and that it knew that Internet users were likely to be deceived in that they would be expecting to reach the Complainant, not a directory site, the sole objective of which was commercial gain. B. Respondent

The Respondent contends that a settlement agreement had been reached with Complainant's Counsel and both parties had agreed to a transfer of the Disputed Domain Name to the Complainant.

The Respondent contends that it did not register or use the Disputed Domain Name in bad faith. The Respondent submits that, although it offered the Disputed Domain Name for sale, it did not register the Disputed Domain Name for the purpose of selling it to the Complainant.

The Respondent contends that it did not register with any bad faith intent as it did not register the Disputed Domain Name with the Complainant's trade mark in mind as, prior to the present Complaint, it had no knowledge of the Complainant's THE LAW SOCIETY trade mark registered in the UK. 6. Discussion and Findings

If the Complainant is to succeed, it must prove each of the three elements referred to in paragraph 4(a) of the Policy, namely that;

(i) the Disputed Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

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

The Panel will proceed to establish whether the Complainant has discharged the burden of proof in respect of the three elements referred to in paragraph 4(a) of the Policy. A. Consent to Transfer

The Panel is of the view that despite the Respondent's apparent consent to transfer the Disputed Domain Name to the Complainant it is still necessary for the Panel to satisfy itself that the three elements of paragraph 4(a) of the Policy are present.

The Panel in Research In Motion Limited v. Privacy Locked LLC/Nat CollicotWIPO Case No. D2009-0320 noted that;

“It is tempting to adopt the BSNL approach and treat the consent to transfer as a concession that the three elements of paragraph 4(a) of the Policy are present, but in correspondence between the parties, the Respondent's representative has expressed concern that the Respondent's consent to transfer should not be mis-characterised. Notably, there is nothing before the Panel to merit a finding that the Respondent concedes that he has acted in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.”

It is clear from the Respondent's response that it denies that it has registered or used the Disputed Domain Name in bad faith. The Panel also notes that the Respondent appears to have had a number of previous UDRP decisions issued against it. The Complainant also does not appear to have indicated its willingness to a ‘no-fault' transfer on the basis of Respondent's consent and has alleged in the Complaint that the Domain Name at issue here was registered and used in bad faith. In these circumstances the Panel considers that it must be satisfied that three elements of paragraph 4(a) of the Policy are present.

Further, as the Panel in Davis + Henderson, Limited Partnership v. Whois Privacy Protection Service, Inc./ Demand Domains Inc WIPO Case No. D2008-1162 stated, where a complainant has invoked the Policy and paid the appropriate fee and does not appear to be seeking to resolve the matter on the basis of agreement with the Respondent, it is entitled to a reasoned decision from the Panel.

The purpose of the Policy is to counter abusive domain name registration and cybersquatting and the Panel is of the view that in a case of this kind, a decision is therefore necessary, as otherwise, if found to be in breach of the Policy, a respondent will not be dissuaded from this type of activity and in the event that the Respondent engages in similar conduct in the future then a future panel will not be able to decide the case in light of a full record of the respondent's past conduct. B. Identical or Confusingly Similar

There is no dispute between the parties that the Disputed Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights. The Complainant has nonetheless provided sufficient evidence that it is the proprietor of the registered trade mark THE LAW SOCIETY. The Complainant has also established that prior to registration it had common law trade mark rights in THE LAW SOCIETY mark.

The Disputed Domain Name is made up of the registered trade mark THE LAW SOCIETY to which the generic top level domain “.org” has been added. The Panel in Sensis Pty Ltd., Research Resources Pty Ltd. v. Kevin Goodall, WIPO Case No. D2006-0793 noted that:

“To make a true comparison between a trade mark and a domain name, the suffix of the domain name is ignored, enabling the real substance of the two expressions to be compared”.

The Panel is therefore satisfied that the “.org” generic top-level domain does not serve to distinguish the Disputed Domain Name from the Complainant's registered trade mark. The Panel therefore finds that the Disputed Domain Name is identical and confusingly similar to the Complainant's trade mark and the Complainant has satisfied paragraph 4 (a)(i) of the Policy. C. Rights or Legitimate Interests

A Complainant is required to make out an initial prima facie case that the Respondent lacks rights or legitimate interests. Once such prima facie case is made, the Respondent carries the burden of producing evidence establishing that it has rights or legitimate interests in the Disputed Domain Name.

Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a Respondent to demonstrate that it has rights to, or legitimate interests in, a Disputed Domain Name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:

(i) Before any notice to the Respondent of the dispute, use by the Respondent of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or

(ii) Where the Respondent as an individual, business, or other organization, has been commonly known by the Disputed Domain Name, even if the Respondent has acquired no trade mark or service mark rights; or

(iii) Where the Respondent is making a legitimate non-commercial use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

It is generally regarded as prima facie evidence if: (a) a complainant shows that the disputed domain name is identical or confusingly similar to the complainant's trade mark; (b) that the respondent is not commonly known by the disputed domain name; and (c) that the complainant has not authorized the respondent to use his mark (or an expression which is confusingly similar to its mark), whether in the disputed domain name or otherwise. See Roust Trading Limited v. AMG LLC,WIPO Case No. D2007-1857.

The Panel notes that the Disputed Domain Name without addition of the .org suffix is identical to the Complainant's THE LAW SOCIETY mark. The Panel accepts the Complainant's contentions that the Respondent is not commonly known by the Disputed Domain Name and there is no evidence that the Respondent has ever been authorized by the Complainant to use the Complainant's mark. The Panel accepts the Complainant's contention, in the absence of any evidence to the contrary having been provided by the Respondent, that the web site to which the Disputed Domain Name resolves is connected to a pay-per-click directory site which the Respondent is using for commercial gain and does not of itself constitute a bona fide offering of goods or services.

The Panel is therefore satisfied that the Complainant has provided sufficient prima facie proof that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent does not contend and has not provided any persuasive evidence to suggest it has rights or legitimate interests in respect of the Disputed Domain Name. Therefore, the Complainant's have, in the Panel's view satisfied paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith

The Policy requires a complainant to prove both registration and use in bad faith.

Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and used of a domain name in bad faith. Those circumstances are:

(i) Circumstances indicating that the respondent has registered or acquired the domain name primarily for purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's 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 registered the domain name primarily for the purpose of disrupting the business of a competitor; 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 the respondent's website or other on-line 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 respondent's website or location.

For the purposes of paragraph 4(b)(iv) of the Policy the Complainant contends that the Respondent has used the Disputed Domain Name in an attempt to attract, for commercial gain, Internet users to the Respondent's websites by creating a likelihood of confusion with the Complainant's mark as to source, sponsorship, affiliation or endorsement.

The Chairman and Chief Executive of the Respondent, in clause No. 5, of an affidavit submitted with the Respondent's Response on July 15, 2009 states that,

“Although we have offered the disputed domain name for sale, we did not register it for the purpose of selling it to the Complainant. We did not register the disputed domain name with the Complainant's trade mark in mind because, among other reasons, prior to the present Complaint, we had no knowledge of Complainant's extraterritorial trade mark registration in the United Kingdom.”

As noted earlier, the Complainant in this case has established both registered and unregistered trade mark rights in THE LAW SOCIETY mark and at least in the United Kingdom the Complainant's mark has considerable repute. Wilfull blindness, particularly in relation to a well reputed mark is no excuse. The Panel in mVisible Technologies Inc., bitm v. Navigation Catalyst Systems, Inc.,WIPO Case No. D2007-1141 stated:

“Although there may be no obligation that a domain name registrant conduct trade mark or search engine searches to determine whether a domain name may infringe trade mark rights, a sophisticated domainer who regularly registers domain name for use as [pay-per-click] landing pages cannot be wilfully blind to whether a particular domain may violate trade mark rights. In this context, a failure to conduct adequate searching may give rise to an inference of knowledge.”

The Panel notes that the Respondent does not mention conducting any searches of the term “The Law Society” prior to registering the Disputed Domain Name. The Chairman and Chief Executive of the Respondent's affidavit clause No. 3 simply states that:

“Our policy is to register and maintain only domain names that incorporate common words or phrases, descriptive terms, and/or words for which the reasonably available evidence suggests no single party has exclusive rights.”

Had the Respondent conducted even minimal Internet searches before registering the Disputed Domain Name, such searches would have alerted the Respondent to the Complainant's existing mark and the Respondent would have been aware of the likelihood of confusion between the Disputed Domain Name and the Complainant's THE LAW SOCIETY mark. See also, Compart AG v. C / Vertical Axis, Inc.,WIPO Case No. D2009-0462 and City Views Limited v. Moniker Privacy Services / Xander, Jeduyu, ALGEBRALIVE, WIPO Case No. D2009-0643.

Neither has the Respondent provided an explanation as to why the Disputed Domain Name resolves to a web site providing links to third party web sites which largely appear to relate to UK legal services. The Panel can only infer in these circumstances that the Respondent did have an intention to mislead Internet users by creating the false impression that there is an association between the Complainant and the web site to which the Disputed Domain Name resolves for the purposes of generating click through revenue. The use and exploitation of trade marks to obtain click through revenues from the diversion of Internet users has in numerous decisions been found to be use in bad faith under paragraph 4(b)(iv) of the Policy: L' Oreal, Biotherm, Lancome Parfumes et Beaute & Cle v Unasi Inc. WIPO Case No. D2005-0623.

In all the circumstances the Panel infers that the requirements of paragraph 4(b)(iv) of the Policy are fulfilled and that the Complainant has established that the Respondent registered and used the Disputed Domain Name in bad faith.

Accordingly the Panel considers that the Complainant has satisfied paragraph 4(a)(iii) of the Policy. 7. Decision

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 name, be transferred to the Complainant.

Alistair Payne
Sole Panelist

Dated: August 6, 2009

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