The Complainant is Hogan Lovells International LLP of London, the United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Proxy Protection LLC of Brea, California, United States of America (“US”). 2. The Domain Name and Registrar
The disputed domain name is registered with DreamHost, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 9, 2017. On May 10, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 12, 2017, the Registrar transmitted by email to the Center its verification response indicating that:
(a) it is the Registrar for the disputed domain name;
(b) the disputed domain name “was registered by an unknown party who used a stolen credit card” and that the Registrar’s abuse team “disabled the account for fraud”; and
(c) English is the language of the registration agreement.
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 June 1, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 21, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 22, 2017.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on June 28, 2017. 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 an international law firm formed in 2010 on the merger of the US-based law firm Hogan & Hartson and the European-based law firm, Lovells. Prior to the merger, both law firms had been operating for more than 100 years. The Complainant has over 2,500 lawyers operating out of 40 offices around the world.
In 2015, the Complainant’s gross revenue was USD 1.82 billion, which placed the firm ninth in The American Lawyer’s 2016 Am Law 200 ranking. In the course of its business, it has received numerous accolades. For example, in 2015, it was listed as one of the ten most innovative law firms by the Financial Times. Also, in 2016, Acritas ranked the Complainant among the top ten US law firms.
It has a number of registered trademarks;
− United Kingdom Trademark No. 2539736, HOGAN LOVELLS, registered on June 18, 2010;
- US Trademark No. 3972647, HOGAN LOVELLS, registered on June 7, 2011;
− European Union Trademark No. 008866501, HOGAN LOVELLS, registered on August 2, 2010; and
− International Trademark No. 1038263, HOGAN LOVELLS, registered on March 31, 2010.
These trademarks are registered for a wide range of goods and services in International Classes 16, 35, 36, 41 and 45.
The disputed domain name was registered on August 16, 2016. It has never resolved to an active website.
The Respondent is in effect the “privacy protection” service provided by the Registrar (or may be treated as such for the purposes of this proceeding).
As noted above, when the Center contacted the Registrar upon the filing of the Complaint for the purposes of verifying the details, the Registrar advised as follows:
“The domain was registered by an unknown party using a stolen credit card to fraudulently open an account with [the Registrar]. [The Registrar’s] Abuse Team disabled the account for fraud on August 19, 2016. The domain registration in question has been on hold status since then, and is unavailable for anyone’s use [...].” 5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service 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 Center has forwarded the case documents to the Respondent in accordance with the contact details entered in the public WhoIs record for the disputed domain name. However, there has been no response.
Paragraph 1 of the Rules defines the respondent for the purposes of a dispute as meaning “the holder of a domain name registration against which a complaint is initiated”. That is the Respondent in the present case. The Respondent is, or is in effect, the Registrar’s privacy protection service. The person who actually registered the disputed domain name is apparently unknown.
Under the Policy, a person who registers a domain name has an obligation to provide complete and accurate contact details and, if necessary, to update them: paragraph 2 of the Policy. Where the person who registered the domain name using the Respondent’s service cannot be ascertained because that person has not provided accurate details, it is appropriate to proceed on the basis of the details formally entered in the public WhoIs register: see, e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.4.1.
This situation in the present case is very similar to the situation which arose in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, in which the learned Panel proceeded on the basis of the details entered in the public WhoIs registry. In accordance with that approach and on the basis of the information provided by the Registrar that the disputed domain name has been registered fraudulently using a stolen credit card, the Panel considers it appropriate to proceed on the basis of the named Respondent.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and in accordance with the Policy, these Rules and any rules and principles of law deemed applicable. A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of at least the registered trademarks referred to in Section 4 above. In addition, the Panel considers that the extent of sales and promotion of the trademark by the Complainant is more than sufficient to qualify the trademark as widely known in many countries around the world.
The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top-Level Domain (“gTLD”) component as a functional aspect of the domain name system: WIPO Overview 3.0, section 1.2. Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of bad faith are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
Apart from the “.com” gTLD, the disputed domain name differs from the Complainant’s registered trademarks by:
(a) the substitution of an “e” for the “a” in the first word of the Complainant’s name; and
(b) the omission of the space between the two words comprising the Complainant’s name.
Plainly, these differences are quite minor and do not distinguish the disputed domain name from the Complainant’s registered trademarks at all. Indeed, the disputed domain name appears to be an example of what is commonly referred to as “typosquatting”. See, e.g., Debevoise & Plimpton LLP v. Keyword Marketing, Inc. / Web Advertising, Corp.,WIPO Case No. D2007-1679.
Accordingly the Panel finds that the disputed domain name is confusingly similar to the Complainant’s proven trademarks. B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use 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) [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 trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. UDRP panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See, e.g., section 2.1 of the WIPO Overview 3.0.
The Complainant says it has not authorised the Respondent to register the disputed domain name or use the Complainant’s trademark, and the Respondent is not in any way associated with the Complainant. Given the information provided by the Registrar that some person giving false details has fraudulently registered the disputed domain name using a stolen credit card, the Complainant’s statements are not implausible.
In these circumstances and as the disputed domain name has never resolved to an active website, the circumstances specified in paragraph 4(c)(i) and (iii) do not apply. The disputed domain name is plainly not derived from the Respondent’s name (nor does the Respondent claim any such thing). There is no information to suggest that the person who actually registered the disputed domain name has been commonly known by some name from which the disputed domain name could be derived.
Accordingly, the Panel finds that the Complainant has established (at the least) a clear prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name and that prima facie case has not been rebutted.
Therefore, the second requirement under the Policy has been established. C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see, e.g., Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd,WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
As already noted, the disputed domain name is an obvious misspelling of the Complainant’s formal name and appears to be an example of the practice of “typosquatting”. It would seem clear, therefore, that the person who actually registered the disputed domain name was well aware of the Complainant and was seeking to take advantage of its name. Having done so in circumstances where that person:
(a) had no rights nor a legitimate interest in the disputed domain name; and
(b) provided false details using a stolen credit card,
the Panel finds that the disputed domain name has been registered and is being used in bad faith in the sense established in Telstra Corporation Limited v. Nuclear Marshmallows, supra.
Accordingly, the Panel finds that the Complainant has established the third requirement under the Policy as well. 6. 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 be transferred to the Complainant.
Warwick A. Rothnie
Sole Panelist
Date: July 13, 2017
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