The Complainant is Linklaters LLP, United Kingdom, represented internally.
The Respondent is WhoisGuard Protected, Panama / Cindy Smith, United Kingdom. 2. The Domain Name and Registrar
The disputed domain name (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 April 25, 2019. On April 25, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 25, 2019, 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 April 26, 2019, 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 April 26, 2019.
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 May 1, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 21, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 22, 2019.
The Center appointed Michael D. Cover as the sole panelist in this matter on May 28, 2019. 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 limited liability partnership and was incorporated on February 27, 2007. The Complainant is a major international law firm, with 30 offices around the world and over 2,400 lawyers and over 5,000 total staff. The predecessor in business to the Complainant was established in 1838.
The Complainant is the proprietor of registered trademarks for its LINKLATERS trademark in the United Kingdom as of October 1986 and in the European Union as of 1996. The Complainant’s LINKLATERS trademark is also registered elsewhere in the world, including in Australia, Japan, New Zealand and the United States of America.
The Complainant is the proprietor, through its subsidiary, Linklaters Business Services, of registered trademarks in the UK and the EU and throughout the world for its LINKLATERS trademark, the earliest of which was filed in the UK in October 1986.
The Disputed Domain Name has been used to create an email address including the full name of an employee of the Complainant. The email address is not authorized by or connected with the Complainant.
The Disputed Domain Name was registered on March 19, 2019.
All that is known about the Respondent is that it has used a WhoIs privacy/proxy service to register the Disputed Domain Name. The website to which the Disputed Domain Name resolves is not active. 5. Parties’ Contentions A. Complainant
Identical or Confusingly Similar to a trademark in which the Complainant has rights
Having set out the background to and history of the Complainant and its extensive portfolio of LINKLATERS trademarks, the Complainant states that the Disputed Domain Name comprises the Complainant’s trademark LINKLATERS in identical form but with no prefix or any other additional elements. The Complainant goes on to submit that the element “lawfirm” is descriptive of the Complainant’s business.
Rights or Legitimate Interests
The Complainant states that it is not aware of any person who owns the trademark or trade name “Linklaters-Lawfirm”, whether as a trademark or a domain name.
The Complainant also notes that neither the Respondent nor any third party appears to be making any legitimate commercial or non-commercial use of the Disputed Domain Name nor has rights or legitimate interests in the Disputed Domain Name. The Complainant notes the Disputed Domain Name resolves to a website that is not active.
The Complainant also states the Disputed Domain Name has been used in conjunction with an email address “[…]@” to impersonate an employee of the Complainant, so as to attempt to mislead a “Mr de Haas” into fraudulently paying out some US$ 945,000.00. The Complainant sets out that two other companies had notified the Complainant of similar attempts fraudulently to pay out money using the same email address connected to the Disputed Domain Name.
Registered or Used in Bad Faith
The Complainant submits that the Disputed Domain Name was registered and is being used in bad faith, as it has been used to create an email address including the name of one of the Complainant’s employees, to which reference has already been made in this Decision, which has been used in a way that has deceived recipients into falsely believing that this email address is controlled by the Complainant, when it was not.
The Complainant concludes that, given the Complainant’s rights in its LINKLATERS trademark and the use made of the Disputed Domain Name, it is clear that the Disputed Domain Name was registered and is being used in bad faith and in a manner which is abusive and intended to confuse people into thinking that the Disputed Domain Name is controlled by the Complainant or one of its agents or affiliates.
The Remedy requested by the Complainant
The Remedy requested by the Complainant is that the Panel order that the Disputed Domain Name be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Complainant must demonstrate on the balance of probabilities that the Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and that the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel accepts the Complainant has established registered rights in its LINKLATERS trademark. The Complainant’s LINKLATERS trademark has been registered since at least as early as 1986 and extensive use has been made of that LINKLATERS trademark by the Complainant and its predecessors in business since 1838.
The Panel also accepts that the Disputed Domain Name is confusingly similar to the Complainant’s LINKLATERS trademark, in which it has rights. The Disputed Name in fact incorporates the Complainant’s LINKLATERS trademark in full. It is well established that the addition of the generic Top Level Domain “.com” does not avoid a finding that the Disputed Domain Name is confusingly similar to the Complainant’s LINKLATERS trademark. It is also well established that the addition of non-distinctive terms, such as, in this case “lawfirm” does not avoid a finding of confusing similarity.
The Panel accordingly finds that Disputed Domain Name is confusingly similar to the Complainant’s LINKLATERS trademark, in which the Complainant has rights, and that paragraph 4(a)(i) of the Policy has been met. B. Rights or Legitimate Interests
The Panel accepts that the Respondent has no rights or legitimate interests in the Disputed Domain Name. There is no evidence that the Complainant has authorized or licensed the Respondent to use its LINKLATERS trademark and the Complainant has made out a prima facie case to that effect, which then places the burden on the Respondent, which it has failed to satisfy.
The Respondent has not demonstrated use or demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services, that it has been commonly-known by the Disputed Domain Name nor that it has been making legitimate noncommercial use of the Disputed Domain Name, without intent from commercial gain or to misleadingly divert consumers or to tarnish the LINKLATERS trademark of the Complainant.
In fact, the evidence shows that the Disputed Domain Name and its associated email address “[...]@linklaters-lawfirm” has been used in an attempted fraud on a an employee of three other companies.
The Panel accordingly finds that paragraph 4(a)iii of the Policy has been met. C. Registered and Used in Bad Faith
The Panel accepts that the Disputed Domain Name has been registered and used in bad faith. The use of the email address already mentioned, which is connected with the Disputed Domain Name, further supports this finding of bad faith.
The Policy, paragraph 4(b), sets out a non-exhaustive list of circumstances which shall be evidence of the registration and use of a domain name in bad faith. In this case, it is a reasonable inference that the Respondent was aware of the Complainant’s rights in its LINKLATERS trademark. The use of the email address including the name of the Complainant’s employee, constitutes the intention of attempting to attract, for commercial gain, in this case through fraud, Internet users to an online location, by creating a likelihood of confusion with the Complainant’s LINKLATERS trademark as to the source or affiliation of a service on the Respondent’s website.
The Panel therefore finds that the Disputed Domain Name has been registered and is being used in bad faith and that paragraph 4(a)(iii) of the Policy has been met. 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.
Michael D. Cover
Sole Panelist
Date: June 7, 2019
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