The Complainant is Linklaters LLP, United Kingdom, internally represented.
The Respondent is WhoisGuard, Inc., Panama / Jackie Piper, Baker Mckenzie Inc., United States of America (“United States”). 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 6, 2020. On May 6, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 6, 2020, 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 May 7, 2020 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 May 14, 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 the Respondent of the Complaint, and the proceedings commenced on May 15, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 4, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 5, 2020. The Center appointed Nicholas Weston as the sole panelist in this matter on June 11, 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 The Complainant is a limited liability partnership registered in England and Wales on February 27, 2007. The Complainant operates a legal services business with 30 affiliated offices in 20 countries. Although the firm’s name has changed several times, the firm’s name has included the word LINKLATERS since 1838. The Complainant holds registrations for the trademark LINKLATERS in several countries, including in the United States where the Respondent is located, as exhibited by Registration No. 2633820, registered since October 15, 2002. The Complainant is also the owner of, inter alia, the domain name The Disputed Domain Name The Complainant cites its trademark registrations of the trademark LINKLATERS in various countries as prima facie evidence of ownership. The Complainant submits that the mark LINKLATERS is well known and that its rights in that mark predate the Respondent’s registration of the Disputed Domain Name The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it is being used to perpetrate an email scam, and because its web presence resolves to a parking page with pay-per-click (“PPC”) links. The Complainant contends that the Respondent has no rights or legitimate interests in the Disputed Domain Name. Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to the Policy and Rules having regard to the fame and long standing prior use of the Complainant’s trademark, and that it was being used to further the perpetration of a fraud as part of a “phishing” scheme. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following: (i) that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) that the 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. A. Identical or Confusingly Similar The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark LINKLATERS in numerous countries including the United States and United Kingdom. The requirements of the first element for purposes of the Policy may be satisfied by a trademark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree,WIPO Case No. D2002-0358). Turning to whether the Disputed Domain Name is identical or confusingly similar to the LINKLATERS trademark, the Panel observes that the Disputed Domain Name comprises: (a) an exact reproduction of the Complainant’s trademark LINKLATERS; (b) with the letter “s” replaced by the letter “z”; (c) followed by the gTLD “.com”. It is well-established that the gTLD used as technical part of a domain name may be disregarded (see Autodesk v. MumbaiDomains,WIPO Case No. D2012-0286). The relevant comparison to be made is with the second-level portion of the Disputed Domain Name, specifically: “linklaterz”. It is also well established that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, it may be confusingly similar to that mark despite the addition of a word or, in this case, the substitution of one letter for another: (see Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; Wal-Mart Stores, Inc. v. Kuchora, Kal,WIPO Case No. D2006-0033). This Panel finds that the exchange of the letter “s” for the letter “z”, is confusing and does not in itself prevent a finding of confusing similarity. The Panel finds that the Complainant has established paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy lists the ways that the respondent may demonstrate rights or legitimate interests in the disputed domain name. The Policy also places the burden on the complainant to establish the absence of respondent’s rights or legitimate interests in the disputed domain name. Because of the inherent difficulties in proving a negative, the consensus view is that the complainant need only put forward a prima facie case that the respondent lacks rights or legitimate interests. The burden of production then shifts to the respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc v. Ringside Collectibles,WIPO Case No. D2000-1306; WIPO Overview of WIPO Panel Views on Selected URDP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1). The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because the mark LINKLATERS is not a dictionary word but rather a highly distinctive and well-known name. The Complainant also has not licensed, permitted or authorized the Respondent to use the Complainant’s trademark. The Complainant submits that the Respondent “uses the disputed domain name as email-address … for fraudulent e-mails … [and that the] Respondent used this email address to send an email to employees of (a LINKLATERS distributor)” purporting to be “a Sales Support Advisor of Complainant and that Complainant’s account for incoming payments had been changed” with new bank account details to be advised also by email. On any objective view, the Respondent is not a reseller with a legitimate interest in a domain name incorporating a manufacturer’s mark, such that it could meet the tests set out in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. Nor, alternatively, is the Respondent commonly known by the Disputed Domain Name. This Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it is engaging in an online phishing scam using email communications pretending to be from an actual employee of the Complainant operating under the brand LINKLATERS to the purpose of misleading the recipient based on the wide recognition of the Complainant’s mark LINKLATERS and thereby deceive the recipient of those communications into making a payment. The Panel notes that the Respondent is also using the logo and contact details of the Complainant to reinforce the false impression that the fraudulent communications are legitimate. The Panel notes also that the Disputed Domain Name resolves to a PPC webpage containing links unrelated to the Complainant’s business. However, this Panel infers that the purpose of the links appearing on the website is for commercial gain, derived from consumer confusion with the Complainant. By misleadingly diverting Internet users in this way, it can be inferred that the Respondent is opportunistically using the Complainant’s well-known mark in the Disputed Domain Name to divert Internet traffic to its PPC web page. Naturally too, neither the scam emails provided in the Complainant’s uncontested evidence nor the PPC parking page accurately nor prominently disclose the unauthorized nature of the Respondent’s relationship with the Complainant. It could therefore reasonably be inferred that the Respondent was opportunistically using the Complainant’s mark in the furtherance of the perpetration of a fraud. The Panel finds for the Complainant on the second element of the Policy. C. Registered and Used in Bad Faith The third element of the Policy requires that the complainant must also demonstrate that the disputed domain name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both of these conjunctive requirements. The examples of bad faith registration and use in Policy, paragraph 4(b) are not exhaustive of all circumstances from which such bad faith may be found (see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). The objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another (see Match.com, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230). The Panel finds that the evidence in the case shows the Respondent registered and has used the Disputed Domain Name in bad faith. On the issue of registration, this Panel accepts the Complainant’s evidence of the conduct of the Respondent in impersonating an actual employee of the Complainant in multiple instances of email communications with a third party as evidence that the Respondent was well aware of the Complainant’s trademark LINKLATERS when registering the Disputed Domain Name. The Panel finds that the most likely reason for the Respondent registering the Disputed Domain Name and then using it to send a fictitious email under an assumed identity of an actual employee of the Complainant, is that the Respondent was attempting to perpetrate a fraud. Further, a gap of more than ten years between registration of the Complainant’s trademark and the Respondent’s registration of the Disputed Domain Name (containing the trademark) can in certain circumstances be an indicator of bad faith (see Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415). In this case, the Complainant’s rights in its trademark predate any rights that could flow from the Respondent’s registration by almost 18 years in the United States, where the Respondent is located, and more in other jurisdictions. On the issue of use, the Complainant’s evidence is that the Respondent attempted to deceive the recipient of the phishing email into believing it was a legitimate communication from a domain name associated with the Complainant’s LINKLATERS brand. The obvious risk of deception or confusion as to the origin of such an email, or affiliation of the email communication with the Complainant is, in this Panel’s view, the very essence of bad faith under paragraph 4(b)(iv) of the Policy. See WIPO Overview 3.0, section 3.4. Evidence was also furnished that the Disputed Domain Name also resolves to a PPC parking page unconnected with any bona fide supply of goods or services by the Respondent. Exploitation of the reputation of a trademark to obtain click-through commissions from the diversion of Internet users is a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous UDRP decisions. See WIPO Overview 3.0, section 3.5. The Panel has also considered whether it should draw an adverse inference from the Respondent’s use of a privacy shield. In the circumstances it seems reasonable to infer that the main purpose the Respondent has used a privacy service is to cause the Complainant difficulty in identifying other domain names registered by the same registrant (see Ustream.TV, Inc. v. Vertical Axis, Inc.,WIPO Case No. D2008-0598; Sermo, Inc. v. CatalystMD, LLC,WIPO Case No. D2008-0647). In the absence of any evidence to the contrary, this Panel accepts the Complainant’s evidence and finds that the Respondent has taken the Complainant’s trademark LINKLATERS and incorporated it in the Disputed Domain Name without the Complainant’s consent or authorization, for the very purpose of capitalizing on the reputation of the trademark by creating an email address comprised of the Disputed Domain Name then has used that email address to pretend to be an employee of the Complainant who actually exists, for the purpose of obtaining a financial payment, an activity sometimes referred to as “phishing” but more commonly recognised as an attempt to defraud. Numerous previous UDRP panels have held that the registration and the use of a disputed domain name in connection with a fraudulent “phishing” scheme constitutes bad faith under the Policy (see L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc,WIPO Case No. D2005-0623; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163 and Linklaters LLP v. Domain Admin, Privacy Protect, LLC / Patrick Leitner, WIPO Case No. D2019-0096). Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 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 Nicholas Weston
Sole Panelist
Date: June 25, 2020
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