The Complainant is Mills & Reeve LLP, United Kingdom (“UK”), internally represented.
The Respondent is Name Redacted 1 . 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 29, 2019. The Center transmitted its request for registrar verification to the Registrar on November 29, 2019. The Registrar replied on December 3, 2019, confirming that the Domain Name is registered with it, that the Respondent is the current registrant, that the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) applies, that the Domain Name was registered on October 3, 2019, and will expire on October 3, 2020, that a lock of the domain name has been applied and will remain in place during this proceeding, and that the language of the registration agreement is English. The Registrar also provided the full contact details for the Domain Name held on its WhoIs database. The Center wrote to the Complainant on December 13, 2019, inviting the Complainant to amend the Complaint to reflect the registrant information provided by the Registrar. The Complainant submitted an amendment to the Complaint by email on December 16, 2019. The Center verified that the Complaint, together with the amendment to the Complaint, satisfied the formal requirements of the 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 paragraphs 2 and 4 of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 19, 2019. In accordance with paragraph 5 of the Rules, the due date for Response was January 8, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 9, 2020. The Center appointed Jonathan Turner as the sole panelist in this matter on February 11, 2020. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules. Having reviewed the file, the Panel is satisfied that the Complaint as amended complied with applicable formal requirements, was duly notified to the Respondent, and has been submitted to a properly constituted Panel in accordance with the Policy. 4. Factual Background The Complainant is an English firm of solicitors with offices in Birmingham, Cambridge, Leeds, London, Manchester and Norwich. It has provided legal services under the mark MILLS & REEVE in the UK and internationally since 1989 and is now one of the 50 largest law firms in the UK. The firm and its lawyers have been accorded leading rankings in legal directories. The Complainant has registered MILLS & REEVE as a trade mark in the UK for various goods and services in classes 16, 35, 36, 41, and 42 under no. UK00002354464. The mark was registered on July 2, 2004, pursuant to an application filed on January 27, 2004. The Complainant has also registered the domain name The Domain Name has been used to impersonate a member of the Complainant’s staff by means of an email address of the form “[firstname.lastname]@mills-revee.com”, where first name and last name are those of a particular member of staff of the Complainant. Emails using this address were sent to a client of the Complainant’s firm whom that member of staff was assisting, thereby procuring the diversion of large sums of money into accounts identified by the Respondents. 5. Parties’ Contentions A. Complainant The Complainant contends that the Domain Name is confusingly similar to the mark MILLS & REEVE in which it has registered and unregistered rights. The Complainant observes that the Domain Name differs from its mark only in the replacement of the ampersand with a hyphen and the movement of one of the “e” characters in “reeve”. The Complainant submits that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant states that it has not authorized the Respondent to use the Domain Name and that it has no connection with the Respondent. The Complainant maintains that the Respondent has not used the Domain Name in connection with any bona fide offering of goods or services, but rather has used it for commercial gain by intentionally misleading a client of the Complainant to divert funds to accounts controlled by the Respondent. The Complainant alleges that the Domain Name was registered and is being used in bad faith to assist fraud by impersonating one of the Complainant’s staff. The Complainant requests a decision that the Domain Name be transferred to it. B. Respondent As stated above, the Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings In accordance with paragraph 4(a) of the Policy, to succeed in this Complaint, the Complainant must prove: (i) that the Domain Name is identical or confusingly similar to a mark in which it has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith. It is convenient to consider each of these requirements in turn. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences as it considers appropriate from the Respondent’s failure to file a response. This includes the acceptance of plausible evidence of the Complainant which has not been disputed. A. Identical or Confusingly Similar The Panel finds that the Complainant has registered rights in the mark MILLS & REEVE. The Panel also finds that the Domain Name is confusingly similar to this mark from which it differs only in the replacement of the ampersand with a hyphen and the movement of one of the “e” characters in “reeve”. The first requirement of the UDRP is satisfied. B. Rights or Legitimate Interests The Panel is satisfied that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent has not used or made any preparations to use the Domain Name in connection with any bona fide offering of goods or services. Nor has it made any legitimate noncommercial or fair use of the Domain Name. On the contrary, the Respondent has used the Domain Name for commercial gain to mislead a client of the Complainant into diverting funds into accounts identified by the Respondent. The Complainant has not authorized the Respondent to use the Domain Name or any corresponding name and it is evident that the Respondent is not commonly known by the Domain Name. There is no other basis on which the Respondent could claim any rights or legitimate interests in the Domain Name. The second requirement of the UDRP is satisfied. C. Registered and Used in Bad Faith The Panel finds that the Domain Name was registered and used in bad faith as a means of defrauding a client of the Complainant by impersonating a member of the Complainant’s staff in emails instructing the client as to accounts to which funds should be transferred in connection with matters being handled by the Complainant. There is no reason to suppose that the Respondent has ceased this use of the Domain Name and the retention of the Domain Name with the prospect that it may be used for further such fraud would also be a use in bad faith. All three requirements of the UDRP are satisfied and it is appropriate to order the transfer of the Domain Name to the Complainant. 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 Domain Name Jonathan Turner 1 Since the Respondent used the Domain Name to impersonate a member of staff of the Complainant, the Panel has decided to redact the Respondent’s name from the caption and body of this decision. However, the Panel has attached as Annex 1 to this Decision an instruction to the Registrar regarding transfer of the Disputed Domain Name, which includes the name of the registrant according to the Registrar’s WhoIs database. See ASOS plc. v. Name Redacted,WIPO Case No. D2017-1520. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the Decision in this proceeding and has indicated that Annex 1 to this Decision shall not be published due to the exceptional circumstances of this case.
Sole Panelist
Date: February 25, 2020
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