The Complainant is Brabners LLP, United Kingdom (“UK”), internally represented.
The Respondent is Privacy Service Provided by Withheld for Privacy ehf, Iceland / Saracens Saracens, United States of America (“United States”).
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 22, 2021. On October 25, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 25, 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 November 1, 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 November 2, 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 November 9, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 29, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 6, 2022.
The Center appointed Andrew Brown Q.C. as the sole panelist in this matter on January 12, 2022. 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 BackgroundThe Complainant is an English law firm which has used the BRABNERS trademark as part of its company name and trading name for over 200 years in the UK and internationally. The Complainant’s registered address is in Liverpool, England. It provides legal services to over 10,000 clients per year and claims that its brand/trademark is “extremely well known throughout the legal industry”.
The Complainant is proprietor of a UK trademark for BRABNERS in relation to (inter alia) legal services. Details are:
Mark
Jurisdiction
No.
Date
Classes
BRABNERS
UK
UK00003008367
3 June 2013
35, 36, 45
The Complainant also claims to have goodwill and reputation in the BRABNERS Mark for legal services, as a result of extensive continuous use of that Mark for over 200 years in the UK and internationally. The Complainant has provided details of its operating profit and marketing expenditure in promoting its BRABNERS Mark.
As to domain names, the Complainant states that it has operated a website at “www.brabners.com” from April 2001. From June 2002 and June 2013, the main website was “www.brabnerschaffestreet.com” but throughout that period the domain name
The disputed domain name was registered on February 13, 2021 and used to resolve to a website identical to Complainant’s website. The Complainant had also provided evidence that the disputed domain name was used in connection with phishing messages in which the Respondent was impersonating the Complainant.
5. Parties’ Contentions A. ComplainantThe Complainant asserts its rights in the BRABNERS trademark. The Complainant contends that the disputed domain name is confusing similar to its BRABNERS trademark. It states that the Brabners portion is identical to its BRABNERS Mark and that the additional word “law” in the disputed domain name is merely descriptive of the Complainant’s legal services. Further, the disputed domain name is claimed to be similar to the Complainant’s domain names
The Complainant also contends that the Respondent had no rights or legitimate interests in the disputed domain name. In this respect, the Complainant states that the Respondent is not known by the “infringing domain name” and does not offer any genuine goods or services; further, that the current operation from the disputed domain name is an unlawful phishing scam. Further, the Respondent has copied the whole of the Complainant’s genuine website (almost in its entirety) and published this on the website at the disputed domain name. Only the contact details and email addresses have been changed by the Respondent - in order to redirect users to it rather than to the Complainant.
The Complainant states that the Respondent’s website (and its correspondence using the disputed domain name) shows that it is intentionally using the disputed domain name and other features associated with the Complainant as a phishing scam and to trade on the Complainant’s fame and reputation. It says that such use is not bona fide use and does not create a legitimate interest.
Finally, the Complainant contends that the disputed domain name was registered and has been used in bad faith. The Complainant says that the disputed domain name has been used to create email addresses for correspondence in the name of one of the partners without his knowledge or authority. The Complainant says that this is part of an attempted spoofing and phishing scam. The Complainant provides evidence for an assertion that there is a pattern of activity. It points to a previous phishing scam where the same telephone number provided for the respondent and a closely similar address in Humboldt, Tennessee, United States of America, (being one street number different) was used by the registrant. The Complainant says that there have been three previous adverse decisions by WIPO panels against a registrant called Marilyn Street using an almost identical address, whereby the street number is only changed by one number.
The Complainant asserts that the registration and use of the disputed domain name was for the purpose of a phishing scam and therefore with full knowledge of the Complainant’s rights in its BRABNERS mark. It is claimed that this purpose was to disrupt a competitor business; that this will lead to traffic being diverted away from the Complainant’s website for commercial gain. The Complainant relies on WIPO case law phishing scams or evidence of registration use of a disputed domain name in bad faith.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsPursuant 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 trademark 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 SimilarThe Complainant has provided evidence of its registration of its BRABNERS trademark in the UK for services in classes 35, 36, and 45 and in particular legal services. It has also provided evidence of extensive of use of its BRABNERS mark in the UK and internationally as well as is its registration in active use of a range of disputed domain names including incorporating BRABNERS.
It is the Panel’s view that the Complainant has clearly and sufficiently demonstrated its rights in the BRABNERS trademark. The Panel is satisfied that the Complainant is well known by its BRABNERS trademark as a provider of legal services.
The Panel accepts that the disputed domain name is confusingly similar to the Complainant’s BRABNERS trademark.
As noted in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8, “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless or otherwise) does not prevent a finding of confusing similarity under the first element”. It is the Panel’s view that the addition of the term “law” to the BRABNERS Mark does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s BRABNERS Mark, which remains clearly recognizable in the disputed domain name.
The Panel finds that the disputed domain name is therefore clearly confusingly similar to the Complainant’s BRABNERS Mark and finds in favor of the Complainant.
B. Rights or Legitimate InterestsPursuant 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 trademark or service mark rights; or
(iii) That the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark 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 rights or legitimate interests on the part of the Respondent in the BRABNERS Mark pursuant to paragraph 4(c) of the Policy. The Complainant has (prior) rights in the BRABNERS Mark which well precede the Respondent’s registration of the disputed domain name.
The Panel is satisfied that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. The fact that the Respondent has copied and pasted virtually the whole of the Complainant’s website to the website located at the disputed domain name and has used the cloned website for phishing activities clearly confirms that the Respondent has no rights or legitimate interests in the disputed domain name.
Section 2.13.1 of the WIPO Overview 3.0 states that the use of a domain name for illegal activity (including phishing) can never confirm rights or legitimate interests on a respondent.
The Respondent has failed to show that it has acquired any rights or respect to the disputed domain name or that the disputed domain 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 that paragraph 4(a)(ii) of the Policy is satisfied in favor of the Complainant.
C. Registered and Used in Bad FaithThe Panel is also 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 BRABNERS Mark is well known for legal services. The Panel is also satisfied that the Respondent was and is aware of the Complainant and its BRABNERS mark at the time of registration. This is evidenced by the fact that the disputed domain name reproduces the BRABNERS Mark entirely and adds to it the non-distinctive and descriptive word “law” being descriptive of the activities for which the Complainant is well known under its trademark. Further, the Respondent has reproduced virtually the whole of the Complainant’s website at the website located at the disputed domain name, thus showing its knowledge of the Complainant and its trademark.
(ii) Paragraph 2 of the UDRP puts a burden on registrants where it states “by applying to a register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and bond 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 the most cursory trademark or other online search for any online search of existing domain names prior to the Respondent registering the disputed domain name would have instantly revealed the Complainant and its BRABNERS Mark. See in this regard section 3.2.3 of the WIPO Overview 3.0. The Respondent’s use of the BRABNERS Mark in a fraudulent phishing exercise to impersonate a partner of the Complainant again supports a finding that the Respondent knew of the Complainant, the Complainant’s BRABNERS Mark, and the Complainant’s services as at the date of registration of the disputed domain name.
(iii) The circumstance of the case and in particular the adoption of the Complainant’s BRABNERS Mark in a fraudulent phishing scam, indicates to the Panel that the Respondent registered the disputed domain name to create a likelihood of confusion with the Complainant’s BRABNERS Mark 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:
(i) As already noted, the Complainant has provided evidence (Annex 2 of the Complaint) of correspondence from the Respondent using the disputed domain name as part of an impersonation of a partner of the Complainant. Annex 2 shows evidence of phishing correspondence designed to have recipients deal with the Respondent. The correspondence relates to a so-called unclaimed permanent life insurance policy. Correspondence seeks the recipient’s consent to partner with the named individual partner of the Complainant so as to benefit as the beneficiary of a claim on the insurance policy. The Panel accepts that the email address was created without the knowledge or authorization of the partner concerned or the Complainant. 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 constitutes bad faith.
(ii) 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 within 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. DecisionFor the foregoing reasons, in accordance with paragraph 4(a)(i) – (iii) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name
Andrew Brown Q.C.
Sole Panelist
Date: January 26, 2022