The Complainant is Linklaters LLP, United Kingdom, represented internally.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Paolo Bessieres, BOSE MATCH, 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 February 17, 2021. On February 17, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 17, 2021, 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 February 18, 2021, 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 February 18, 2021. 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 February 26, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 18, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 19, 2021. The Center appointed Andrew Brown Q.C. as the sole panelist in this matter on March 29, 2021. 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 states that it is a limited liability partnership registered in England and Wales under the name “Linklaters LLP” and has been since February 27, 2007. It also states that it provides legal services under the name “Linklaters” from 30 offices in 20 countries worldwide. The Complainant owns (via its wholly owned subsidiary, Linklaters Business Services) registered trade marks for the word “LINKLATERS” in various countries worldwide, including (but not limited to) the following registered trade marks: Trade mark Jurisdiction Registration No. Filing Date Registration date IC Class(es) LINKLATERS United Kingdom 1274996 October 1, 1986 May 19, 1989 35 LINKLATERS United Kingdom 1315277 July 9, 1987 June 23, 1989 42 LINKLATERS United Kingdom 2200536 June 17, 1999 April 21, 2000 9, 16, 35, 36, 41, 42, 45 LINKLATERS Europe 165043 April 1, 1996 November 20, 1998 35, 42 LINKLATERS Europe 1209477 June 17, 1999 February, 1, 2001 9, 16, 35, 36, 41, 42 LINKLATERS Australia 802545 August 4, 1999 August 4, 1999 35, 36, 42 LINKLATERS Japan 4504832 January 19, 2000 September 7, 2001 36, 42 LINKLATERS New Zealand 313900 August 4, 1999 February 8, 2000 42 LINKLATERS United States 2633820 August 25, 1999 October 15, 2002 16, 35, 36, 41, 42 LINKLATERS International 723079 June 17, 1999 August 17, 1999 9, 16, 35, 36, 41, 42 These are collectively referred to as the “LINKLATERS Marks”. The Complainant’s own website is located at the domain name The Respondent registered the disputed domain name The Complainant asserts its rights in the LINKLATERS Marks. The Complainant contends that the disputed domain name is confusingly similar to its LINKLATERS Marks. In this respect, the Complainant states that the disputed domain name comprises LINKLETERS in identical form, save for the letter “e” in place of the letter “a”, with no other amendment, prefix, or suffix. The Complainant contends that the replacement of the letter “a” with the letter “e” is likely to go unnoticed by many readers. The Complainant also contends that the Respondent has no rights or legitimate interests in the disputed domain name. In this respect, the Complainant states neither the Respondent, nor any third party, appears to be making any legitimate commercial (or non-commercial) use of the disputed domain name, nor to have any legitimate rights or interests in respect of the disputed domain name. The Complainant notes that the website to which the disputed domain name resolves is not active. Finally, the Complainant contends that the disputed domain name was registered and has been used in bad faith. The Complainant states that the disputed domain name has been used to create an email address in the name of a partner who works from the Complainant’s branch office in London and without their knowledge or authorisation. The Complainant asserts that this email address has been used in a way that has attempted to deceive recipients of emails sent from it into falsely believing for the purposes of financial gain that the email address is controlled by the Complainant. The Complainant therefore contends that the disputed domain name is being used in an abusive manner as it could confuse people into thinking that it is controlled by the Complainant or an entity affiliated to the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Pursuant to paragraph 4(a) of the Policy, a Complainant must prove each of the following elements with respect to the disputed domain name in order to succeed in this proceeding: (i) That the disputed domain name is identical or confusingly similar to a trade 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 provided evidence of its registrations in relation to the LINKLATERS Marks in the United Kingdom, Europe, Australia, Japan, New Zealand, and the United States. It has also provided evidence of its international registration designating Switzerland, China, Czech Republic, Estonia, Hungary, Republic of Korea, Montenegro, Serbia, Poland, Romania, Russian Federation, Slovenia, Slovakia, and Turkey. It is the Panel’s view that the Complainant has clearly and sufficiently demonstrated its rights in the LINKLATERS Marks. The Panel is also satisfied that the Complainant is well-known by its LINKLATERS Marks as a provider of legal services given that it has 30 offices in 20 countries worldwide. The Panel accepts that the disputed domain name is confusingly similar to the Complainant’s LINKLATERS Marks. Section 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), states that a domain name which consists of a common, obvious, or intentional misspelling of a trade mark is considered to be confusingly similar to the relevant mark for the purposes of the first element. The replacement of the letter “a” with the letter “e” in the disputed domain name is, in the Panel’s view, an obvious and intentional misspelling, especially given that the Respondent had made no other amendment to the Mark nor has it added any prefix or suffix. In summary, the Panel therefore finds that the disputed domain name is confusingly similar to the Complainant’s LINKLATERS Marks. Therefore, the Panel finds that paragraph 4(a)(i) of the Policy is satisfied in favor of the Complainant. B. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, the Respondent may establish that it has rights or legitimate interests in the disputed domain name, among other circumstances, by showing any one of the following elements: (i) That before notice of the dispute, the Respondent used or made demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or (ii) That the Respondent has been commonly known by the disputed domain name, even if it had acquired no trade mark or service mark rights; or (iii) That the Respondent is making a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue. The overall burden of proof for establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name lies with the Complainant. There is no evidence of the existence of any of the rights or legitimate interests on the part of the Respondent pursuant to paragraph 4(c). The Complainant has (prior) rights in the LINKLATERS Marks which well precede the Respondent’s registration of the disputed domain name. The Complainant has provided as evidence, a screenshot of the website to which the disputed domain name resolves (Annex 9 of the Complaint). This screenshot shows that the disputed domain name resolves to an inactive website. The Complainant has also provided as evidence, a chain of emails showing use of the disputed domain name to create an email impersonating a partner of the Complainant’s branch office in London (Annex 10 of the Complaint). This evidence, together with the intentional misspelling of the LINKLATERS Marks in the disputed domain name, suggests that the Respondent likely intended to capitalize on the reputation and goodwill of the Complainant’s LINKLATERS Marks for financial gain. Section 2.13.1 of the WIPO Overview 3.0 states that use of a domain name for illegal activity (including impersonation) can never confer rights or legitimate interests on a Respondent. The Respondent has failed to show that it has acquired any rights with respect to the disputed domain name or that the disputed domain name is used in connection with a bona fide offering of goods and services. The Respondent had the opportunity to demonstrate its rights or legitimate interests, but it did not reply to the Complainant’s Complaint. The Panel therefore finds that the Complainant has satisfied the burden of establishing a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and accordingly finds paragraph 4(a)(ii) of the Policy is satisfied in favor of the Complainant. C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the disputed domain name in bad faith. The Panel is satisfied that the disputed domain name has been registered in bad faith for the following reasons: (i) The Panel is satisfied that the Complainant’s LINKLATERS Marks are well-known for legal services. The Panel is also satisfied that the Respondent was, and is, aware of the Complainant and its LINKLATERS Marks. This is evidenced by the fact that the disputed domain name is confusingly similar to the LINKLATERS Marks. (ii) Paragraph 2 of the UDRP puts a burden on registrants where it states “by applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that […] to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of a third party […]. It is your responsibility to determine whether your domain name infringes or violates someone else’s rights.” Even a most cursory trade mark or other online search or any online search of existing domain names prior to the Respondent registering the disputed domain name would have instantly revealed the Complainant and its LINKLATERS Marks. See in this regard section 3.2.3 of the WIPO Overview 3.0. The Respondent’s use of the LINKLATERS Marks in a fraudulent email attempting to impersonate a partner of the Complainant’s London branch office supports a finding that the Respondent knew of the Complainant, the Complainant’s LINKLATERS Marks and the Complainant’s services as at the date of registration of the disputed domain name. (iii) The circumstances of the case and, in particular, the adoption of the Complainant’s LINKLATERS Marks in a fraudulent email scam, indicates to the Panel that the Respondent registered the disputed domain name to create a likelihood of confusion with the Complainant’s LINKLATERS Marks for the purposes of financial gain. The Panel is also satisfied that the disputed domain name has been used in bad faith for the following reasons: (iv) As already noted, the Complainant has provided evidence (Annex 10 of the Complaint) of an email chain showing the use of the disputed domain name in an email address impersonating a partner of Linklaters LLP who works from the Complainant’s branch office in London. Annex 10 shows that the email address was used to pursue an allegedly unpaid invoice and asked that the invoice be settled as soon as possible. The Panel accepts that the email address was created without the knowledge or authorisation of the partner concerned or the Complainant (or any of its agents or affiliates). The Panel also accepts that the email address was not controlled by the partner concerned. It is the Panel’s view that such impersonation for obvious financial gain constitutes use of the disputed domain name for fraudulent activity and therefore clearly constitutes bad faith. (v) Further, the Respondent has made no submissions in these proceedings and so the Panel infers that the Respondent has intentionally used the disputed domain name with an intent to confuse people into thinking that it is controlled by the Complainant or an entity affiliated with the Complainant. Accordingly, the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied in favor of 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 disputed domain name Andrew Brown Q.C.
Sole Panelist
Date: April 9, 2021
Full & Egal Universal Law Academy