Complainant is Pinsent Masons LLP, United Kingdom, represented internally.
Respondent is Contact Privacy Inc. Customer 1245578856, Canada / James Ann, United States of America. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 17, 2019. On December 17, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 17, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on December 19, 2020 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 December 23, 2020. 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 Respondent of the Complaint, and the proceedings commenced on January 9, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 29, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 30, 2020. The Center appointed Marina Perraki as the sole panelist in this matter on February 7, 2020. 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 Per Complaint, Complainant is a full service international law firm engaged in the provision of legal services across a broad spectrum of practice areas. It operates internationally with 25 offices and ranks amongst the top 20 law firms in the United Kingdom. Complainant operates under the name Pinsent Masons LLP and maintains its website at “www.pinsentmasons.com”. Complainant owns trademark registrations for PINSENT MASONS, including the International trademark registration No. 977347, designating the United States of America, registered on April 30, 2008, for goods and services in International classes 9, 16, 35, 36, 41 and 45. The Domain Name was registered on October 2, 2019 and resolves to an inactive web page. 5. Parties’ Contentions A. Complainant Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Name. B. Respondent Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Domain Name incorporates Complainant’s trademark PINSENT MASONS in its entirety. This is sufficient to establish confusing similarity (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525). The addition of the letter “n” in the “masonns” portion of the Domain Name is disregarded, as it is not readily noticeable (Express Scripts, Inc. v. Whois Privacy Protection Service, Inc. / Domaindeals, Domain Administrator,WIPO Case No. D2008-1302; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.9). Furthermore, such addition is an obvious or intentional misspelling of Complainant’s trademark PINSENT MASONS which further supports the finding of confusing similarity to such trademark (WIPO Overview 3.0, section 1.9). The Panel finds that the Domain Name Complainant has established Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements: (i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or (ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or (iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name. Respondent has not submitted any response and has not claimed any such rights or legitimate interests with respect to the Domain Name. As per Complaint, Respondent was not authorized to register the Domain Name. Respondent did not demonstrate, prior to the notice of the dispute, any use of the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services. On the contrary, as Complainant demonstrates, the Domain Name leads to an inactive website. The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Name. Complainant has established Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides that the following circumstances, in particular but without limitation, are evidence of the registration and use of the Domain Name in bad faith: (i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or (ii) that Respondent has registered the 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 Respondent has engaged in a pattern of such conduct; or (iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or (iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location. The Panel concludes that Respondent has registered and used the Domain Name in bad faith. As per Complaint, Complainant’s PINSENT MASONS trademark is well known in the field of legal services. Because the PINSENT MASONS mark had been widely used and registered at the time of the Domain Name registration, the Panel finds it more likely than not that Respondent had Complainant’s mark in mind when registering the Domain Name. Respondent should have known about Complainant’s rights, due to the fact that Complainant’s mark had goodwill and reputation when the Domain Name was registered. Furthermore, such knowledge is readily obtainable through a simple browser search due to Complainant’s use of PINSENT MASONS mark on the Internet (“www.pinsentmasons.com”) (Caesars World, Inc. v. Forum LLC.,WIPO Case No. D2005-0517; Compart AG v. Compart.com / Vertical Axis, Inc.,WIPO Case No. D2009-0462). As regards bad faith use, Complainant demonstrated that the Domain Name leads to an inactive website. The non-use of a domain name would not prevent a finding of bad faith (Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; WIPO Overview 3.0, section 3.3). The Panel considers the following factors: (i) the reputation of Complainant’s mark, (ii) the failure of Respondent to submit a response, and (iii) the implausibility of any good faith use to which the Domain Name may conceivably be put, given the nature of the Domain Name. Under these circumstances and on this record, the Panel finds no good faith basis for Respondent’s conduct vis-à-vis the Domain Name. Complainant has established Policy, 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 Marina Perraki
Sole Panelist
Date: February 21, 2020
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