Complainant is Linklaters LLP, United Kingdom (“United Kingdom” or “UK”), represented internally.
Respondent is Whois Privacy Protection Foundation, Netherlands / Alton Screen, United Kingdom. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 6, 2020. On January 7, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 8, 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 January 9, 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 January 13, 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 14, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 3, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 4, 2020. The Center appointed Clive Elliott Q.C., as the sole panelist in this matter on February 13, 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 Complainant is a limited liability partnership registered in England and Wales under the name “Linklaters LLP” and has been since February 27, 2007. It has its headquarters in the UK and, together with its affiliates, provides legal services under the name “Linklaters” from 30 offices in 20 countries worldwide. It is authorised and regulated by the Solicitors Regulation Authority of England and Wales. Complainant, its affiliates and predecessor entities have been providing legal services under the “Linklaters” name since 1838. It owns (via its wholly owned subsidiary, Linklaters Business Services) registered trade marks for the word LINKLATERS in various countries, including the following registered trade marks: UK registration number 1274996, in class 35, registered on May 19, 1989; UK registration number 1315277, in class 42, registered on June 23, 1989; UK registration number 2200536, in classes 9, 16, 35, 36, 41, 42 and 45, registered on April 21, 2000; European Union (“EU”) registration number 165043, in classes 35 and 42, registered on November 20, 1998; EU registration number 1209477, in classes 9, 16, 35, 36, 41 and 42, registered on February 01, 2001; Australian registration number 802545, in classes 35, 36 and 42, registered on March 05, 2020; Japanese registration number 4504832, in classes 36 and 42, registered on September 07, 2001; New Zealand registration number 313900, in class 42, registered on February 08, 2000; United States of America (“US”) registration number 2633820, in classes 16, 35, 36, 41, 42, registered on October 15, 2002; and International trade mark registration 723079 designating China, Czech Republic, Democratic People’s Republic of Korea, Estonia, Hungary, Montenegro, Poland, Republic of Korea, Romania, Russian Federation, Serbia, Slovakia, Slovenia, Switzerland, and Turkey in classes 9, 16, 35, 36, 41 and 42, registered on August 17, 1998. The Domain Name comprises Complainant's trade mark LINKLATERS, in identical form, with the suffix “-LLP”. “Linklaters LLP” is Complainant's full registered name. According to the publicly available WhoIs, the Domain Name was registered on October 23, 2019. The Domain name does not resolve to an active website. 5. Parties’ Contentions A. Complainant Complainant asserts that the Domain Name comprises Complainant’s trade mark. Complainant asserts that neither Respondent, nor any third party, appears to be making any legitimate commercial (or noncommercial) use of the Domain Name, or to have any rights or legitimate interests in respect of the Domain Name. The website connected to the Domain Name is not active. Complainant contends that the Domain Name was registered and is being used in bad faith as it has been used to create email addresses which have been used in a way that has deceived recipients of emails sent from them into falsely believing that those email addresses are controlled by Complainant or one of its employees. Complainant confirms that the names used in the deceptive emails are individuals employed by Complainant (or one of its affiliates). However, the activities detailed in this section of the Complaint have been conducted without the knowledge or authorization of Complainant (or any of its agents or affiliates). The email addresses referred above are not controlled by Complainant (or any of its agents or affiliates). Complainant advises that on September 11, 2019, Complainant issued an invoice to its client. The invoice was emailed by Complainant to its client on October 14, 2019. On October 23, 2019, an individual impersonating an employee of its client telephoned Complainant’s central switchboard and asked to speak to a member of the credit control team. The impersonator had details of the September 11, 2019 invoice, including the invoice number and amount invoiced. Complainant goes on to assert that the impersonator then sought to put into effect a scheme whereby emails were sent from the Domain Name as if they came from Complainant. On October 24, 2019, emails were sent to Complainant’s client attaching a copy of the September 11, 2019 invoice, without the knowledge or consent of Complainant (or any of its agents or affiliates). Complainant further asserts that the intention appears to have been that money owed by its client to Complainant under the September 11, 2019 invoice should be paid into an account controlled by the impersonator and not Complainant. This use appears to have had a fraudulent or criminal intent and Complainant and its client have alerted law enforcement agencies in the United Kingdom. Complainant submits that given Complainant’s rights in the “Linklaters” name, and the use made of the Domain Name, Respondent’s registration has been made and used in bad faith and in a manner which is abusive, as it was intended to and has confused people into thinking it is controlled by Complainant or an entity affiliated to Complainant. There is also a very significant risk that it will continue to be used in such a manner as to confuse people into thinking it is controlled by Complainant or an entity affiliated to Complainant in the future. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings For the reasons set out below Complainant is entitled to relief sought and orders are made accordingly. A. Identical or Confusingly Similar Complainant, either itself or through its affiliates and predecessor entities, have been providing legal services under the “Linklaters” name since 1838 and as noted above, through its wholly owned subsidiary, Linklaters Business Services has registered trade marks for the word LINKLATERS in a number of countries. Complainant trades as Linklaters LLP. Complainant’s trade mark LINKLATERS is confusingly similar to the Domain Name. Complainant has clearly established rights in a trade mark. The Domain Name is confusingly similar to the said trade mark. B. Rights or Legitimate Interests Having found that Complainant has rights in Complainant’s trade mark, the question is whether Respondent has any countervailing claim to rights or legitimate interests in the Domain Name. Having failed to file a response, the Panel is unaware of any basis upon which Respondent might claim to have a legitimate interest in the Domain Name. Instead, Respondent appears to be using the Domain Name as an instrument of deception, by falsely making recipients of emails believe that those email addresses are controlled by Complainant or one of its employees, contrary to the fact. Complainant has plainly established this ground. C. Registered and Used in Bad Faith Given the long-standing and extensive use and registration of Complainant’s trade mark, the Panel finds that Respondent knew of Complainant’s rights and interests in the trade mark and registered and used the Domain Name to impersonate Complainant and mislead clients of and suppliers to Complainant. On that basis, the Panel is of the view that the Domain Name was registered and used in bad faith. 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 Clive Elliott Q.C.
Sole Panelist
Date: March 3, 2020
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