ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Taylor Wessing Limited Liability Partnership v. Name Redacted Case No. D2022-4812 1. The Parties The Complainant is Taylor Wessing Limited Liability Partnership, United Kingdom, internally represented. The Respondent is Name Redacted.1 2. The Domain Name and Registrar The disputed domain name is registered with Google LLC (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 15, 2022. On December 15, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 15, 2022, 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 (Contact Privacy Inc. Customer 7151571251) and contact information in the Complaint. The Center sent an email communication to the Complainant on December 15, 2022 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 December 16, 2022. 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"). 1 The Respondent appears to have used the name of a third party when registering the disputed domain name. In light of the potential identity theft, the Panel has redacted the Respondent's name from this decision. However, the Panel has attached as Annex 1 to this decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name of the Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this decision shall not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v. FAST-12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788. page 2 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 21, 2022. In accordance with the Rules, paragraph 5, the due date for Response was January 10, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 11, 2023. The Center appointed Kaya Köklü as the sole panelist in this matter on January 25, 2023. 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 an international law firm. It operates 17 locations worldwide with a team of around 1,100 lawyers. The Complainant is the proprietor of the TAYLOR WESSING trademark, including the European Union Trade Mark No. 002727519, registered on May 31, 2004, for goods in class 9 and 16, and for services in class 35, 36, 38, 41 and 42, and the United States Registration No. 76474048, registered on April 19, 2005, covering protection for inter alia legal services (Annex 7 to the Complaint). The Complainant also owns and operates its main website at the domain name (Annex 5 to the Complaint). The disputed domain name was registered on December 12, 2022. It does not resolve to an active website. However, the Respondent has configured MX records for the disputed domain name, which enables the Respondent to send and receive emails using the disputed domain name. According to undisputed evidence provided by the Complainant, the disputed domain name has already been used to send out emails to third parties falsely pretending that the sender is a partner of the United Kingdom office of the Complainant (Annex 10 to the Complaint). 5. Parties' Contentions A. Complainant The Complainant requests the transfer of the disputed domain name. The Complainant is of the opinion that the disputed domain name is confusingly similar to its TAYLOR WESSING trademark. It further argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. In addition, the Complainant is convinced that the Respondent has registered and is using the disputed domain name in bad faith. B. Respondent The Respondent did not reply to the Complainant's contentions. page 3 6. Discussion and Findings According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied: (i) the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complainant's contentions. Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228. However, concerning the uncontested information provided by the Complainant, the Panel may, where relevant, accept the provided reasonable factual allegations in the Complaint as true. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"). For the evaluation of this case, the Panel has taken note of the WIPO Overview 3.0 and, where appropriate, will decide consistent with the consensus views stated therein. A. Identical or Confusingly Similar To begin with, the Panel confirms that the Complainant has satisfied the threshold requirement of having relevant trademark rights. As evidenced in the Complaint, the Complainant is the owner of the TAYLOR WESSING trademark, which has been first registered many years ago, including in the United States where the Respondent is reportedly located. The Panel finds that the disputed domain name is confusingly similar to the Complainant's TAYLOR WESSING trademark. The disputed domain name fully comprises the TAYLOR WESSING trademark. As stated at section 1.8 of the WIPO Overview 3.0, where a trademark is recognizable within the disputed domain name, the addition of other terms or letters would generally not prevent a finding of confusing similarity. In the present case, the mere addition of the letter "q", does, in view of the Panel, not serve to avoid a finding of confusing similarity between the disputed domain name and the Complainant's TAYLOR WESSING trademark. In view of the above, the Panel is satisfied that the Complainant has met the requirements under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests While the burden of proof remains with the Complainant, the Panel recognizes that this would often result in the impossible task of proving a negative, in particular as the evidence needed to show the Respondent's rights or legitimate interests is primarily within the knowledge of the Respondent. Therefore, the Panel agrees with prior UDRP panels that the Complainant is required to make out a prima facie case before the burden of production shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name to meet the requirements of paragraph 4(a)(ii) of the Policy. Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. page 4 With its Complaint, the Complainant has provided prima facie evidence that the Respondent has no rights or legitimate interests, particularly no license to use the Complainant's trademark within the disputed domain name. In the absence of a Response, the Respondent has failed to demonstrate any of the nonexclusive circumstances evidencing rights or legitimate interests under the Policy, paragraph 4(c) or provide any other evidence of a right or legitimate interest in the disputed domain name. Rather, the Panel has no doubt that the disputed domain name, which is confusingly similar to the Complainant's TAYLOR WESSING trademark, is clearly intended to, and does, play on the Complainant's trademark. The Panel notes that the disputed domain name incorporates the TAYLOR WESSING trademark in its entirety, only separated by the letter "q". The Panel believes that there is a risk that Internet users may not notice the addition of this letter to the TAYLOR WESSING trademark. Moreover, the Respondent has used the disputed domain name to impersonate the Complainant, which results in an illicit use that can never confer rights or legitimate interests upon the Respondent. WIPO Overview 3.0, section 2.13. Bearing all this in mind, the Panel does not see any basis for assessing a bona fide offering of goods or services by the Respondent. Consequently, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Panel believes that the Respondent deliberately attempted to create a likelihood of confusion among Internet users for illegitimate purposes, particularly for the following reasons. The Panel is convinced that the Respondent must have had the Complainant and its trademark in mind when registering the disputed domain name. It is obvious to the Panel, that the Respondent has deliberately chosen the disputed domain name to target and mislead third parties. Consequently, the Panel is convinced that the Respondent has registered the disputed domain name in bad faith. Furthermore, the disputed domain name has already been used by the Respondent to mislead third parties in a false belief that emails sent from the disputed domain name originate from the Complainant, apparently for fraudulent purposes (Annex 10 to the Complaint). The use of the disputed domain name to send fraudulent emails impersonating an employee of the Complainant is a per se illegitimate activity that can never confer rights or legitimate interests on a respondent, and moreover such behavior is manifestly considered evidence of bad faith. Taking all facts of the case into consideration, the Panel is convinced that this is a typical cybersquatting case, which the UDRP was designed to stop. The Panel therefore concludes that the disputed domain name was registered and is being used in bad faith and that the Complainant consequently has satisfied the third element of the Policy, namely, 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 be transferred to the Complainant. /Kaya Köklü/ Kaya Köklü Sole Panelist Date: February 8, 2023
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