Complainant is Bryan Cave Leighton Paisner LLP of Saint Louis, Missouri, United States of America (“United States”), represented by Bristows, United Kingdom of Great Britain and Northern Ireland.
Respondent is WhoisGuard Protected of Panama, Panama / Liam Murphy of Hong Kong, China.1 2. The Domain Name and Registrar
The disputed domain name is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 4, 2018. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 5, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on September 10, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on September 13, 2018.
The Center verified that 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 Respondent of the Complaint, and the proceedings commenced on September 17, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 7, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 12, 2018.
The Center appointed Stephanie G. Hartung as the sole panelist in this matter on October 30, 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
Complainant is a limited liability partnership organized under the laws of the United States that offers legal services. Complainant has provided evidence that – following the combination of the companies Brian Cave LLP and Berwin Leighton Paisner LLP of April 1, 2018 – it is the owner of the following trademarks relating to the designation “BCLP”:
- Word mark BCLP, United Kingdom Intellectual Property Office (UK IPO), Registration No.: 3263851, Registration Date: January 26, 2018, Status: Active;
- Word-/device mark BCLP, UK IPO, Registration No. 3293303, Registration Date: June 1, 2018, Status: Active.
Respondent, according to the WhoIs information for the disputed domain name, is a resident of Hong Kong, China and registered the disputed domain name on July 5, 2018. As of the time of the rendering of this decision, the disputed domain name resolves to a website at “www.” which prominently refers to an affiliated entity of Complainant, namely BCLP Intermediary Limited, and which includes two postal addresses, one of which points to Complainant’s London office while the other refers to the Chrysler Building in New York City.
Complainant has produced a variety of documents evidencing fraudulent activities under the disputed domain name, including emails dated July 17, 2018 as well as July 19, 2018, both of which pretend to have been sent by some employee of Complainant’s affiliated entity BCLP Intermediary Limited inducing the email recipient to some kind of unauthorized financial transaction.
Complainant requests that the disputed domain name be transferred to Complainant. 5. Parties’ Contentions A. Complainant
Complainant contends to have made extensive use of its BCLP trademarks in relation to legal services and that – leading up to and following the combination of Brian Cave LLP and Berwin Leighton Paisner LLP in April 2018 – there has been extensive press coverage in relation to and use of Complainant’s company name and trademark BCLP.
Complainant submits that the disputed domain name is literally identical and very confusingly similar to Complainant’s BCLP trademark, since it contains the latter in its entirety and the mere addition of the letter “i”, being a reference to “Intermediary” as in the company name “BCLP Intermediary Limited”, does not affect such finding. In this context, Complainant also concludes that Respondent’s selection and use of the disputed domain name is clearly intended to confuse members of the public to whom Respondent’s phishing activities are directed.
Moreover, Complainant asserts that Respondent has no rights or legitimate interests with respect to the disputed domain name since (1) Respondent is using the disputed domain name as a location for a fraudulent website as part of a phishing scam and not in connection with a bona fide offering of goods or services, (2) the disputed domain name was registered on July 5, 2018 and, thus, only three months after the highly publicized company combination resulting in Complainant’s BCLP firm, while there is no evidence to suggest that Respondent is commonly known by the disputed domain name and (3) Respondent’s phishing scam is being carried out for illegitimate commercial gain and Respondent is unfairly and illegally using the disputed domain name to run a fraudulent website in an attempt to add some credibility to Respondent’s illegitimate activities.
Finally, Complainant argues that Respondent registered and is using the disputed domain name in bad faith since (1) the fraudulent website under the disputed domain name prominently features Complainant’s affiliated entity BCLP Intermediary Limited including reference being made to Complaint’s London office while offering legal services as does Complainant, (2) Respondent obviously is undertaking a phishing scam which is, inter alia, being evidenced by email correspondence of July 17, 2018 and July 19, 2018, pretending to derive from some staff members of BCLP Intermediary Limited inducing the email recipients to unauthorized financial transactions and (3) Complainant has also received a number of telephone calls from members of the public who apparently have been confused and were seeking to verify the source of communications they had received from Respondent. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) That Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Respondent’s default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(f) of the Rules provides that if Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute solely based upon the Complaint. Further, the Panel may draw such inferences as are appropriate from Respondent’s failure to submit a Response. A. Identical or Confusingly Similar
The Panel concludes that the disputed domain name is confusingly similar to the BCLP trademark in which Complainant has rights.
The disputed domain name incorporates the BCLP trademark in its entirety. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that the disputed domain name is at least confusingly similar to a registered trademark (see e.g. PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS),WIPO Case No. D2003-0696). The fact that the disputed domain name, moreover, includes the letter “i” is not in contrast to such finding as it obviously refers to the term “Intermediary” which forms part of the company name of Complainant’s affiliated entity BCLP Intermediary Limited and obviously does not dispel the confusing similarity arising from the incorporation of Complainant’s BCLP trademark in the disputed domain name.
Therefore, Complainant has established the first element under the Policy set forth by paragraph 4(a)(i). B. Rights or Legitimate Interests
The Panel is further convinced on the basis of Complainant’s undisputed contentions that Respondent has not made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent has made a legitimate noncommercial or fair use thereof without intent for commercial gain.
Respondent obviously has not been authorized to use Complainant’s BCLP trademark, either as a domain name or in any other way. Also, there is no reason to believe that Respondent’s name somehow corresponds with the disputed domain name and Respondent does not appear to have any trademark rights associated with the name “BCLP”. Finally, Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair purpose. On the contrary, Respondent obviously uses the disputed domain name for a website that pretends to be an official Internet presence of Complainant’s affiliated entity BCLP Intermediary Limited including e.g. Complainant’s official address in London, all of which is highly likely to confuse Internet users into believing that this is an official website of Complainant and which obviously is meant to add some credibility to Respondent’s phishing activities.
Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1). Given that Respondent has defaulted, it has not met that burden.
Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy. C. Registered and Used in Bad Faith
The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith.
Redirecting the disputed domain name, which is confusingly similar to Complainant’s BCLP trademark, to a website that prominently displays the company name of Complainant’s affiliated entity BCLP Intermediary Limited and referring to Complainant’s official London address while at the same time undertaking phishing activities by sending emails pretending to derive from BCLP Intermediary Limited inducing unauthorized financial transactions and, thus, payments to Respondent, is a clear indication that Respondent intentionally attempted to attract, for commercial gain, Internet users to its own website and corresponding email communication by creating a likelihood of confusing with Complainant’s BCLP trademark as to the source, sponsorship, affiliation or endorsement of Respondent’s website and emails. Such circumstances are evidence of registration and use of the disputed domain name in bad faith within the larger meaning of paragraph 4(b)(iv) of the Policy.
In connection with this finding, it also carries weight in the eyes of the Panel that Respondent made use of a WhoIs privacy shield, apparently in an attempt to conceal its true identity. While doing so is not per se illegitimate, in light of the circumstances to this case such Respondent’s behavior at least supports the conclusion of a bad faith registration and use of the disputed domain name.
Therefore, the Panel finds that Complainant has also satisfied the third element under the Policy as set forth by paragraph 4(a)(iii). 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 Complainant.
Stephanie G. Hartung
Sole Panelist
Date: November 5, 2018
1 It is evident from the case file that WhoisGuard Protected of Panama is a privacy protection service and that Liam Murphy of Hong Kong, China is the underlying registrant of the disputed domain name. Therefore, unless otherwise indicated, the term “Respondent” is used by the Panel in the case at hand to refer to the latter underlying registrant only.
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