The Complainant is Hodge Jones & Allen LLP of London, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), represented by SafeNames Ltd., United Kingdom.
The Respondent is Roland James, E-Global of Abuja, Nigeria. 2. The Domain Name and Registrar
The disputed domain name (the "Disputed Domain Name") is registered with PDR Ltd. d/b/a PublicDomainR (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 27, 2018. On June 27, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 28, 2018, 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").
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 29, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 19, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 20, 2018.
The Center appointed Neil J. Wilkof as the sole panelist in this matter on August 7, 2018. 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 a London law firm. Founded in 1977, it currently provides legal advice and support in 14 practice areas, including civil liberties, criminal defense, family law, personal injury, and social housing. It employs over 220 employees.
The Complainant has won various awards and recognitions for its work in the legal field, including the Commended Legal Aid Team of the Year by Solicitors Journal Awards 2017 and Personal Injury Team of the Year by Eclipse Proclaim Personal Injury Awards 2016. It also presents a monthly radio show on Betar Bangla Radio 1503 AM, entitled "Legal Hour". On this program, which enjoys a substantial number of listeners, both on air and over the Internet, a range of legal topics and current legal items are discussed; as well, the program takes call from listeners.
The Complainant has adopted and registered in various forms the mark HJA, which is a shortened form of the full firm name, "Hodge Jones & Allen", and this mark has come to identify its legal services to the public.
The Complainant inter alia is registered as the owner of the following trademarks:
United Kingdom registration no. UK00002537618 for the mark HJA, registered on May 14, 2010, in international classes 35, 36, 38, 41 and 45.
United Kingdom registration no. UK00002547885 for the mark HJA (figurative), registered on August 27, 2010, in international classes 35, 36, 38, 41 and 45.
United Kingdom registration no. UK00002580893 for the mark HJA(figurative), registered on August 5, 2011, in international classes 35, 36, 38, 41 and 45 (collectively, the "HJA Mark").
The Disputed Domain Name was registered on October 25, 2016. At some point, a pathway of the Disputed Domain Name, , resolved to an active website resembling the website of the Complainant. Currently, the Disputed Domain Name does not resolve to an active website.
On April 26, 2018, the Complainant sent a cease and desist letter, offering to resolve the matter with respect to the Disputed Domain Name. The Respondent did not reply to the cease and desist letter. The Complainant then filed the instant URDP action, seeking transfer of the Disputed Domain Name. 5. Parties' Contentions A. Complainant
The Complainant asserts that the registration of the Disputed Domain Name was abusive within the meaning of the UDRP.
The Complainant's contentions may be summarized, in relevant part, as follows:
The Complainant asserts the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Disputed Domain Name incorporates Complainant's HJA Mark with the addition of the element "llens". The addition of the letters "llens" by the Respondent in the disputed domain name aims at causing consumer confusion. The addition of the "s" after the term "allen" does not alter the confusing similarity.
The Complainant further asserts the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent has no registered trademark rights for "HJA" or "HJALLENS". The Disputed Domain Name does not resolve to active content. At some point, a pathway of the Disputed Domain Name resolved to a copycat version of the Complainant's website. The Respondent improperly tried to impersonate the Complainant's company. The Respondent has never been commonly known by the Disputed Domain Name. There is no evidence that the Respondent is making noncommercial or fair use of the Disputed Domain Name.
The Complainant also asserts the Disputed Domain Name was registered and is being used in bad faith. The HJA Mark predates the registration of the Disputed Domain Name by at least six years. The Respondent set up a website impersonating the Complainant. The Respondent registered and uses the Disputed Domain Name to set up a scam to lure victims into making payments. The Respondent did not reply to the cease and desist letter sent by the Complainant.
Accordingly, the Complainant requests transfer of the Disputed Domain Name. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
The Respondent has failed to respond to the Complaint. Therefore, the Panel may accept all reasonable allegations set forth by the Complainant as true and accurate.
According to paragraph 4(a) of the Policy, the Complaint must prove the following:
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
(ii) The Respondent has no rights or legitimate interests in the Disputed Domain Name.
(iii) The Disputed Domain Name was registered and is being used in bad faith. A. Identical or Confusingly Similar
It is well-established that "a domain name that wholly incorporates a Complainant's registered mark may be sufficient to establish confusing similarity for purposes of the UDRP" (Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin,WIPO Case No. D2003-0888). This is especially so when the registered mark is the first part of the domain name, since "… a consumer encountering a mark is likely to give greater attention to the first part of the mark" (ASOS plc v. Liu Tao / Tao Tao Liu,WIPO Case No. D2017-0048).
A domain name that includes the complainant's trademark in its entirety, together with a descriptive term, would not prevent a finding of confusing similarity under the first element (Merrell Pharmaceuticals Inc., Aventis Pharma SA. v. Filips Kostins,WIPO Case No. D2004-0943; and Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil,WIPO Case No. D2000-1409). See also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.8.
The addition of the generic Top-Level Domain ("gTLD") ".org" is typically disregarded in determining whether a mark is confusingly similar to a disputed domain name. See, e.g., Busy Body, Inc. v. Fitness Outlet Inc.,WIPO Case No. D2000-0127 ("… the addition of the generic top-level domain (gTLD) name '.com' is … without legal significance since use of a gTLD is required of domain name registrants"). The same applies to the gTLD ".org" in the present case.
The Disputed Domain Name wholly incorporates the HJA mark. The letter "a" elides into the remainder of the disputed domain name ("llens") thus visually appearing as "Allens". However, the HJA Mark remains recognizable in the Disputed Domain Name. Neither the addition of the element "llens" nor the gTLD ".org" changes the conclusion that there is confusing similarity between the HJA Mark and the Disputed Domain Name.
The Panel also notes, in addition to its finding above, that this case presents an instance where it is also appropriate to note the content of the website that was associated with the Disputed Domain Name, from which the Panel concludes that the Respondent was clearly targeting the Complainant's HJA Mark. See WIPO Overview 3.0, section 1.15.
Based on the foregoing, the Panel finds that the Disputed Domain Name is confusingly similar to the HJA Mark. B. Rights or Legitimate Interests
There is no evidence that the Respondent has registered any mark that consists of, or contains, the HJA Mark, or any material portion thereof. The Respondent's name does not bear any resemblance to the Disputed Domain Name nor is there any basis to conclude that the Respondent is commonly known by the HJA Mark or the Disputed Domain Name. There is no evidence that the Complainant has entered into any agreement, authorization or license with the Respondent with respect to the use of the HJA Mark or that the Respondent has ever been authorized to serve as a franchisee of the Complainant.
Having regard to the three non-exclusive circumstances set out in paragraph 4(c) of the Policy, on the basis of which a respondent may support a claim that it has rights or legitimate interests in the disputed domain name, the Respondent has not submitted any response to support such a claim. The Respondent does not use the Disputed Doman Name in connection with a bona fide offering of goods or services nor is the Respondent making any legitimate noncommercial or fair use of the Disputed Domain Name. Rather, it appears that the only use that the Respondent has made of the Disputed Domain Name has been to misleadingly impersonate the Complainant.
Based on the foregoing, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that point to bad faith registration and use on the part of the respondent, as follows:
(i) circumstances indicating that the respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark 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 disputed domain name; or
(ii) the respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's website or other online 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 the respondent's website or location.
Under the circumstances, the Respondent's selection of the Disputed Domain Name supports the conclusion that the registration was made in bad faith. The Respondent registered the Disputed Domain Name only in 2016, six years after the registration of the first HJA Mark. It is not reasonable that the Disputed Domain Name, combining the three-letter combination "HJA" together with the name "Allens", was accidental. "HJA" is the acronym for Hodge, Jones & Allen, the full name of the Complainant, and "Allens" is virtually identical with the name "Allen".
Moreover, while the website under the Disputed Domain Name currently is not active (in attempting to access the website, one receives the following message – "This Account has been suspended"), the Complainant has brought evidence (Annex 14) that, at one point, the Disputed Domain Name, with a further path, , did resolve to an actual website that contained contents which resembled the Complainant's website.
In light of the foregoing, it is inconceivable that the Respondent was not aware of the HJA Mark and its connection to the Complainant. The Panel concludes that the Disputed Domain Name was registered in bad faith.
As for use of the Disputed Domain Name, as noted above, the Disputed Domain Name under a further path, , resolved to an actual website that contained contents which resembled the Complainant's website. In that connection, the Complainant states that the contents of this webpage "seems more likely than not … to set up a scam to lure victims into making payments", noting that "it has been the victim of such scam recently."
While the Complainant does not provide any further details about the nature of this scam, reticence to disclose additional particulars is understandable, given the sensitivity of such a disclosure. Under the circumstances, it is reasonable to conclude that the use of this page was made for commercial purposes.
The words of the panel in the case of Walgreen Co. v. Muhammad Azeem / Wang Zheng, Nicenic International Group Co., Limited,WIPO Case No. D2016-1607, are apt:
"… [T]he layout of the website clearly resembles that of the Complainant's own website. This clearly gives Internet users the impression that the website is an official website of the Complainant or a website that is authorized by the Complainant which is not the case. The Panel therefore finds that the Respondent by its registration and use of the disputed domain name intentionally creates a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the disputed domain name with the purpose of attracting Internet users to the website for commercial gain as per paragraph 4(b)(iv) of the Policy."
The Panel concludes that the Disputed Domain Name was registered and used in bad faith pursuant to paragraph 4(a)(iii) of the Policy. 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 Name be transferred to the Complainant.
Neil J. Wilkof
Sole Panelist
Date: August 26, 2018
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