The Complainant is Mayer Brown LLP of Chicago, Illinois, United States of America (“USA”), internally represented.
The Respondents are Mykhailo Loginov and Loginov Enterprises d.o.o. of Belgrade, Serbia. 2. The Domain Names and Registrar
The disputed domain names and (the “Domain Names”) are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 10, 2015.
The Center transmitted its request for registrar verification to the Registrar on July 13, 2015. The Registrar replied on July 14, 2015, confirming that it has received a copy of the Complaint, that the Domain Names are registered with it, that the registrant of the Domain Names is Loginov Enterprises d.o.o., that the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) applies, that the Domain Names have been registered to this registrant since at least October 27, 2014, that they will expire on October 9, 2015, and that they will remain locked during this proceeding subject to expiry or dismissal or suspension of the case, and that the language of the registration agreement is English. The Registrar provided the full contact details held on its WhoIs database in respect of the Domain Names. These identified the registrant name as Mykhailo Loginov and the registrant organization as Loginov Enterprises d.o.o.
The Center verified that the Complaint satisfied the formal requirements of the 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 20, 2015. In accordance with paragraph 5(a) of the Rules, the due date for Response was August 9, 2015. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on August 10, 2015.
The Center appointed Jonathan Turner as the sole panelist in this matter on August 18, 2015. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules. Having reviewed the file, the Panel is satisfied that the Complaint complied with applicable formal requirements, was duly notified to the Respondents and has been submitted to a properly constituted Panel in accordance with the UDRP, the Rules and the Supplemental Rules. 4. Factual Background
The Complainant is a major international law firm with approximately 1,450 lawyers in 20 offices in business centers around the world and headquarters in Chicago, USA. It is one of the 15 largest law firms in the world in terms of revenue. It was formed by a merger of a US firm and a UK firm in 2002. The US firm operated under the name “Mayer, Brown & Platt” from 1970 to 2002. Following the merger, the combined firm operated under the name “Mayer, Brown, Rowe & Maw LLP” until 2007 and “Mayer Brown LLP”, “Mayer Brown International LLP” and “Mayer Brown JSP” since then.
The US firm registered the domain name in 1995. The combined firm registered the trademark MAYER BROWN in USA, the EU and Brazil in 2008.
The Respondents operate a computer programming company. They registered numerous domain names in the “.attorney” and “.lawyer” TopLevel domains (“TLDs”) shortly after they became available, including some with second level domains corresponding to the names of other major law firms, such as , , , , , , and . The Respondents’ registration of the last-mentioned domain name was held to be in bad faith in Clifford Chance LLP v. Mykhailo Loginov, et al.WIPO Case No. D2015-0025.
The Domain Names resolve to web pages displaying sponsored links to websites offering legal services, legal research and/or legal and professional advisory and consultancy services, mostly in the Chicago area (Annex 2 to the Complaint). 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Names are effectively identical to its registered trademark MAYER BROWN, from which they differ only in the generic TLD suffices.
The Complainant submits that the Respondents have no rights or legitimate interests in respect of the Domain Names or any corresponding names. According to the Complainant, the Respondents’ use of the Domain Names does not constitute a bona fide offering of goods or services, nor a legitimate, noncommercial or fair use of the Complainant’s marks. The Complainant notes that the Domain Names are directed to web pages that display pay-per-click links to websites mostly promoting services competing with the Complainant’s. The Complainant contends that the Domain Names are being used to deceive consumers and trade off the Complainant’s goodwill, and that this does not establish rights or legitimate interests in them.
The Complainant further states that there is no relationship between it and the Respondents and that it has not authorized the Respondents to use its name in this fashion. The Complainant adds that the Respondents could not make legitimate use of the Domain Names since they are not licensed attorneys or lawyers.
The Complainant alleges that the Domain Names were registered and are being used in bad faith. The Complainant draws attention to the Respondent’s registration of other domain names in the .attorney and .lawyer TLDs corresponding to the names of major firms, the finding of bad faith in the Clifford Chance case, and the use made of the Domain Names described above. The Complainant also points out that the Respondents are offering to sell the Domain Names.
The Complainant requests a decision that the Domain Names be transferred to it. B. Respondents
As stated above, the Respondents did not reply to the Complainant’s contentions. 6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant must prove: (i) that the Domain Names are identical or confusingly similar to a mark or marks in which it has rights; (ii) that the Respondents have no rights or legitimate interests in respect of the Domain Names; and (iii) that the Domain Names have been registered and are being used in bad faith. It is appropriate to consider each of these requirements in turn.
In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences as it considers appropriate from the Respondents’ default in failing to file a response. This includes the acceptance of plausible evidence of the Complainant which has not been disputed. A. Identical or Confusingly Similar
The Panel finds that the Domain Names are effectively identical and certainly confusingly similar to the mark MAYER BROWN in which the Complainant has registered and unregistered rights. The addition of the generic TLD suffices, which describe the Complainant’s services, do not provide any distinction. The first requirement of the UDRP is satisfied. B. Rights or Legitimate Interests
As stated above, the Respondents have directed the Domain Names to web pages that display pay-per-click links to other websites, mostly promoting services competing with the Complainant’s. The Panel considers that this does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use of the Domain Names. On the contrary, this use of the Domain Names is in bad faith, trading off the Complainant’s goodwill by attracting Internet users seeking the Complainant’s website through confusion with its name and marks.
The Respondents are evidently not commonly known by the Domain Names. On the material in the file there is no other basis on which the Respondents could have rights or legitimate interests in the Domain Names. The Panel finds that the Respondents have no such rights and the second requirement of the UDRP is satisfied. C. Registered and Used in Bad Faith
The Panel finds on the evidence that the Respondents have used the Domain Names intentionally to attract Internet users to their web pages for commercial gain, in the form of click-through commissions on sponsored links, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of these web pages or of services promoted on them. In accordance with paragraph 4(b)(iv) of the UDRP this constitutes evidence of registration and use of the Domain Names in bad faith.
There is no material on the file that displaces this presumption. On the contrary, it is reinforced by the offer for sale of the Domain Names, the Respondents’ registration of other domain names that are identical or confusingly similar to the names of major law firms, the Respondents’ lack of any legitimate interest or entitlement to carry on a legal practice, and the finding of bad faith in Clifford Chance LLP v. Mykhailo Loginov, supra. The third requirement of the UDRP is satisfied.
All three requirements of the UDRP are met and it is appropriate to direct that the Domain Names be transferred to the Complainant. 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 names and be transferred to the Complainant.
Jonathan Turner
Sole Panelist
Date: August 31, 2015
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