The Complainant is CPA Global Limited of Saint Helier, Bailiwick of Jersey, internally represented.
The Respondent is Perfect Privacy, LLC of Jacksonville, Florida, United States of America (“United States”) / Kobre and Kim LLP of New York, New York, United States, internally represented. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with Network Solutions, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 9, 2017. On October 10, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 11, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 13, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 13, 2017.
The Center verified that the Complaint together with the amended 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 October 16, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 5, 2017. The Response was filed with the Center November 3, 2017.
The Center appointed John Swinson, Clive L. Elliott and David, W. Quinto as panelists in this matter on December 14, 2017. Panelist Clive L. Elliott recused himself on December 15, 2017. The Center appointed a new panel consisting of John Swinson, Philip N. Argy and David, W. Quinto as panelists in this matter on December 18, 2017. The Panel finds that it was properly constituted. Each member of 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 CPA Global Limited, an intellectual property asset management company based in the Channel Islands. The Complainant provides legal administrative services to corporate lawyers and law firms. According to the Complaint, the Complainant has been providing these services worldwide for over 10 years.
The Complainant owns registered trade marks in a number of jurisdictions for CPA GLOBAL (the “Trade Mark”), the earliest of which were filed in the United Kingdom on July 31, 2008 and registered on January 30, 2009 with registration number UK00002494161.
The Respondent is Kobre and Kim LLP, a global law firm specializing in dispute resolution and investigations.
The Respondent registered the Disputed Domain Name on September 6, 2017. The website at the Disputed Domain Name provides information about a potential class action lawsuit which the Respondent is conducting in conjunction with Bailiwick of Jersey law firm Baker & Partners and litigation funder Bentham IMF. The website alleges that the Complainant has engaged in overbilling practices, and invites those who have been affected by the Complainant’s conduct to join the lawsuit. 5. Parties’ Contentions A. Complainant
The Complainant makes the following high level contentions.
Identical or Confusingly Similar
The Complainant has used the Trade Mark globally for over 10 years and has been well known in the intellectual property law industry.
The Disputed Domain Name wholly incorporates the Trade Mark. The descriptive term “litigation” which is added to the Trade Mark is unlikely to differentiate the Disputed Domain Name from the Trade Mark. As such, the Disputed Domain Name is likely to be confused with the Trade Mark.
Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent does not own a trade mark corresponding with the Disputed Domain Name, nor has it used the Disputed Domain Name as a trade mark.
The Respondent’s website does not show a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain. The Respondent is using the website at the Disputed Domain Name to solicit contact details of the Complainant’s customers with a view to offering legal services, or to promote the Respondent’s own services. This is a deliberate use of the Trade Mark to misleadingly divert the Complainant’s customers or to tarnish the reputation of the Trade Mark.
Registration and Use in Bad Faith
The Complainant has a substantial reputation within the intellectual property services industry, so it is likely that the Respondent was aware of the Trade Mark prior to registering the Disputed Domain Name. The Respondent registered the Disputed Domain Name shortly before the Respondent launched its “no win no fee” legal services campaign and attempted to discredit the Complainant.
The Respondent has deliberately registered the Disputed Domain Name with the sole purpose of disrupting the business of a competitor, and to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Trade Mark as to the source, sponsorship, affiliation or endorsement of that website. B. Respondent
The Respondent makes the following contentions. Identical or Confusingly Similar
The Respondent registered the Disputed Domain Name to inform the public about the Complainant’s alleged overcharging for its intellectual property renewal services. The format of the Disputed Domain Name is identical to hundreds of other domain names for websites relating to class action lawsuits in the United States, for example , , and . It is common to add the term “litigation”, “lawsuit”, “settlement”, or “class action” to the relevant trade mark or service mark of a target of the litigation. Courts in the United States have referred to such websites without any controversy.
The Disputed Domain Name adds a hyphen and the word “litigation” specifically to avoid confusion and distinguish it from the Complainant’s website. Actual consumer confusion is unlikely because the Complainant is not a law firm and does not provide litigation services. Rights or Legitimate Interests
The Respondent is using the Disputed Domain Name for the bona fide purpose of providing the public with information about the Complainant’s alleged overcharging practices, and to enable those with claims against the Complainant to pursue a remedy.
The Respondent’s use of the Disputed Domain Name constitutes fair use of the Trade Mark. The Respondent is not a cybersquatter or a competitor of the Complainant. The Respondent is a law firm which focuses on dispute resolution and investigations. It has a legitimate interest in informing the public about potential legal claims they may have against the Complainant. Registration and Use in Bad Faith
The Respondent registered and is using the Disputed Domain Name in good faith for the purpose of educating the public about the Complainant’s billing practices and potential claims against the Complainant. The Complainant’s billing practices have previously been the subject of litigation in the United States. The Respondent did not register the Disputed Domain Name in an attempt to attract Internet users to the Respondent’s website by creating a likelihood of confusion with the Trade Mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website.
Following notice of the Complaint, the Respondent added a prominent disclaimer to the website at the Disputed Domain Name stating that the website is not connected with the Complainant or its services, and providing a link to the Complainant’s own website. This disclaimer dispels any possible confusion between the website at the Disputed Domain Name and the Complainant.
The Respondent did not register the Disputed Domain Name to disrupt the Complainant’s business or to tarnish the Trade Mark, and the Respondent is not a competitor of the Complainant. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark 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 onus of proving these elements is on the Complainant. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.
The Disputed Domain Name wholly incorporates the Trade Mark. The addition of the descriptive term “litigation” does not prevent a finding of confusing similarity under this element of the Policy, as the Trade Mark is recognizable within the Disputed Domain Name (see sections 1.7 and 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”)).
The Panel finds that the Disputed Domain Name is confusingly similar to the Trade Mark. The Complainant succeeds on the first element of the Policy. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Complainant submits that the Respondent is using the website at the Disputed Domain Name to solicit contact details of the Complainant’s customers with a view to offering legal services, or to promote the Respondent’s own services, and that the Respondent is deliberately using the Trade Mark to misleadingly divert the Complainant’s customers or to tarnish the reputation of the Trade Mark.
The Panel does not agree with this assessment.
The Respondent is using the Disputed Domain Name to provide information to the public about a legitimate lawsuit against the Complainant which the Respondent is conducting in relation to the Complainant’s alleged overcharging practices (see, e.g., Newell Operating Company v. HostMonster.Com and Andrew Shalaby,WIPO Case No. D2008-1805, c.f. Titan Enterprises QLD Pty Ltd v. Domain Admin, Whois Privacy Corp.,WIPO Case No. D2016-1949).
Further, as the Respondent submitted, Internet users in the United States are accustomed to seeing terms such as “litigation” used in domain names in connection with business names or trade marks to provide information about class action lawsuits.
It is entirely clear to any visitor to the website at the Disputed Domain Name that the Respondent is not associated with the Complainant (and, in fact, is involved in a lawsuit or potential lawsuit against the Complainant). In registering and using the Disputed Domain Name, the Respondent is not attempting to mislead consumers. Any Internet user who came across the Respondent’s website when looking for the Complainant would instantly realize their error. Following notice of the dispute, the Respondent added a disclaimer to its website containing a link to the Complainant’s website, which has made the Respondent’s lack of association with the Complainant even more apparent.
Finally, the Complainant’s submission that the Respondent is using the Disputed Domain Name to tarnish the Trade Mark is unconvincing. The mere fact that the Respondent is critical of the Complainant is not evidence of tarnishment (see, e.g., Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505 and the cases cited therein).
The Respondent is making a nominative fair use of the Trade Mark in the Disputed Domain Name in connection with its bona fide offering of services. The Panel considers that the Respondent has rights or legitimate interests in the Disputed Domain Name.
The Complainant does not succeed on the second element of the Policy. C. Registered and Used in Bad Faith
In light of the Panel’s finding in relation to the Respondent’s rights or legitimate interests in the Disputed Domain Name, the Panel is not required to address the third element of the Policy. However, the Panel will do so briefly for completeness.
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent has registered and is using the Disputed Domain Name in bad faith.
The Complainant submits that the Respondent registered the Disputed Domain Name for the sole purpose of disrupting the business of a competitor, and to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Trade Mark as to the source, sponsorship, affiliation or endorsement of that website.
Again, the Panel does not accept the Complainant’s contentions.
As submitted by the Respondent, the Complainant and the Respondent are not competitors. The Complainant manages intellectual property portfolios and provides administrative support to lawyers. The Complainant does not (and cannot legally) offer any legal services, including in respect of litigation. In contrast, the Respondent is a law firm which specializes in litigation and investigations. The Respondent clearly did not register the Disputed Domain Name to disrupt the business of a competitor.
Further, as stated above, the Respondent is not attempting to mislead consumers. The website at the Disputed Domain Name is very clear as to its purpose. Even before the addition of the disclaimer, it would have been clear to consumers that the Respondent was not affiliated with the Complainant. Again, given the Complainant does not offer services relating to litigation, the likelihood of any consumer confusion is minimal.
The Panel considers that Respondent did not register, and is not using, the Disputed Domain Name in bad faith.
The Complainant does not succeed on the third element of the Policy. D. Reverse Domain Name Hijacking
In considering the Complaint and making its decision, the Panel must have regard to paragraph 15(e) of the Rules. In particular, that paragraph states:
“If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”
Reverse domain name hijacking (“RDNH”) is defined in paragraph 1 of the Rules as meaning “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.”
The Respondent has not specifically sought a finding of RDNH in this case. However, it is open to the Panel to make such a finding without a request from the Respondent. In fact, the Panel in Dumankaya Yapi Malzemeleri San. VE TiC. A.S v. Domain Administrator, Name Administration Inc. (BVI),WIPO Case No. D2015-1757 stated that “[i]f abuse is apparent on the face of the case papers, the Panel is under an obligation to declare it”.
In this case, the Complainant ought to have known its Complaint was doomed to fail. The Respondent was clearly using the Disputed Domain Name in good faith to promote and provide information about a legitimate service which it offers.
As stated by the Panel in Chuan Sin Sdn. Bhd. v. Internet Admin (not for sale), Reflex Publishing Inc.,WIPO Case No. D2014-0557:
“When the Complainant filed the Complaint, the Complainant knew that there was no proper basis for the Complaint yet it went ahead and filed the Complaint. This alone merits a finding of RDNH.See, Dextra Asia Co., Ltd. v. Lakeside Enterprises Limited, WIPO Case No. D2012-0403. In so doing the Complainant knew that it was accusing an innocent registrant of dishonesty (bad faith) in the hope that it could deprive the Respondent of the Disputed Domain Name. Moreover, the Complainant knew that if the Respondent were to retain the Disputed Domain Name, the Respondent would have to spend time and money and in all likelihood employ representation to defend itself. The Complainant also knew that even if it lost the case, it would not be called upon to compensate the Respondent”.
The Panel considers the Complainant launched the proceedings primarily to harass the Respondent and disrupt its lawsuit.
The Panel finds that the Complaint was brought in bad faith and constitutes an abuse of the Administrative Proceeding. 7. Decision
For the foregoing reasons, the Complaint is denied.
John Swinson
Presiding Panelist
Philip N. Argy
Panelist
David, W. Quinto
Panelist
Date: December 26, 2017
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