ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Basham, Ringe y Correa, S.C. v. Basham Ringe Correa LLP Case No. D2023-2578 1. The Parties Complainant is Basham, Ringe y Correa, S.C., Mexico, internally represented. Respondent is "Basham Ringe Correa LLP", Mexico. 2. The Domain Name and Registrar The disputed domain name is which is registered with NameSilo, LLC (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 15, 2023. On June 15, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 15, 2023, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the 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 June 21, 2023. In accordance with the Rules, paragraph 5, the due date for Response was July 11, 2023. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on July 12, 2023. The Center appointed Gerardo Saavedra as the sole panelist in this matter on July 26, 2023. This Panel finds that it was properly constituted. This 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. page 2 4. Factual Background Complainant is a Mexican full-service law firm. Complainant has rights over the BASHAM, RINGE Y CORREA mark for which it holds Mexican registration No. 545146, registered on March 26, 1997, in class 42. Complainant also has rights over the BASHAM, RINGE Y CORREA S.C. and design mark for which it holds Mexican registration No. 1063703, registered on September 30, 2008, in class 45. Complainant is the registrant of the domain names , created on October 31, 1995, and , created on May 29, 2009. The disputed domain name was registered on February 7, 2021. At the time the Complaint was filed, the website associated with the disputed domain name showed, among others, "Basham and Ringe Correa LLP", "HOME ABOUT US SUPPORT SERVICES AREAS OF PRACTICE TEAM INDUSTRIES CONTACT", "Welcome to Basham & Ringe Correa LLP: As a company we are at the forefront of Legal Solutions", "The attorneys and staff of Basham & Ringe Correa LLP are dedicated to making the world a better place", "Basham & Ringe Correa LLP provides quality legal services and strategic advice to companies and individuals. Whether you're a big business, a growing company, a local or Non Resident individual, we deliver cost-effective results for today's economy", "LOCATE US", "WRITE US". 5. Parties' Contentions A. Complainant Complainant's assertions may be summarized as follows. Complainant, established in 1912, is one of the leading full-service law firms in Latin America, with more than 110 years of experience assisting clients in doing business in Mexico and abroad. Complainant's clients include prominent international corporations, many of them on the Fortune 500 List, medium-sized companies, financial institutions, and individuals. Complainant is part of global alliances, networks and practice-specific associations. As a result of Complainant's widespread recognition among its peers and clients, Complainant has been awarded and acknowledged in a significant number of international rankings, such as Chambers and Partners, Leaders League, IP STARS and The Legal 500. The disputed domain name is confusingly similar to Complainant's BASHAM, RINGE Y CORREA mark, as it includes three of its four terms, "basham", "ringe", together with "and" (the English translation of Spanish grammatical conjunction "y"). The rearrangement of terms that make up a registered mark to construct a domain name does not prevent a finding of confusing similarity. Respondent has no rights to or legitimate interests in the disputed domain name. The WhoIs report for the disputed domain name shows Respondent's name as the Registrant, with a street address in Mexico City. The website linked to the disputed domain name features a full-service law firm going by the name of "Basham and Ringe Correa LLP", based in Edinburgh, United Kingdom. Said website shares design choices, including color schemes and a top menu, with Complainant's current and previous website designs. The combination of the exact same last names in connection with a full-service law firm, and contact information indicating a location in Mexico City, Mexico, specifically in the general area in which Complainant has been established for years, leads to the conclusion that the registration and use of the disputed domain name is not a result of coincidence or concurrent use. Those are indications that the disputed domain name and the content of the website to which it resolves, including Respondent's name of choice, are the result of Respondent's targeting of Complainant in an attempt to mislead consumers to wrongfully believe that there page 3 is a link between Respondent's website and Complainant. Such conduct can only be presumed to be an attempt to benefit from Complainant's name and reputation, potentially leading to illicit and illegitimate activities and therefore not fitting a bona fide offering of services or a legitimate noncommercial or fair use of the disputed domain name. A series of searches for the terms that make up Respondent's names and Complainant's registered marks in several online trademark databases for several jurisdictions, including the United Kingdom, showed no results connected to Respondent as owner of mark registrations. Respondent has not been commonly known by the disputed domain name. Searches for the term "Basham and Ringe Correa" in several search engines showed results relating to Complainant, except for a risky link where Respondent's website appears since search engines' algorithms mistakenly linked it to Complainant's. The website linked to the disputed domain name was identified by an individual, who appears to be a former FBI agent, as an "email for fake law firm that claims to have inheritance settlements from your unknown relative that recently died", during the former FBI agent's appearance as a guest in radio show Chit Chat Cafe.1 That information, as provided by the former FBI agent, seems to be the result of reports of affected Internet users who have been victimized by Respondent, demonstrating the potential illegitimate and illegal use that Respondent could do to any Internet user or even Complainant's clients. The use of a domain name for illegal activities (e.g., impersonation/passing off, or other types of frauds and scams) can never confer rights or legitimate interests on a respondent. Complainant enjoys recognition among clients and peers beyond Mexico, including at the United Kingdom. Complainant has owned registered rights over the BASHAM, RINGE Y CORREA mark well before Respondent's registration of the disputed domain name, with an online presence that dates back to at least 1996. A trademark check of the records of any trademark office would have made Complainant's mark registrations known to Respondent. Given Respondent's affirmative obligation to ascertain that its registration of the disputed domain name was not trademark-abusive, Respondent knew or should have known of the existence of Complainant and thus registered the disputed domain name in bad faith. A mere query for the terms comprised in the disputed domain name in the most popular online search engines could have shed light on the existence of registered rights, as well as on Complainant's existence as a full-service law firm. Generally respondents who fail to search mark registrations in available online databases are responsible for any resulting abusive registrations under the concept of willful blindness. In the website linked to the disputed domain name Respondent claims to be a full-service law firm based in Edinburgh, United Kingdom. Still, as per the WhoIs report, when registering the disputed domain name Respondent provided an address in Mexico City, which is a mockery and allusion to Complainant's address in Mexico City since both contain similar elements and location. Respondent's name and Mexican address, together with the design of the website linked to the disputed domain name, show that the disputed domain name was registered in full awareness of Complainant, rendering null any argument of ignorance or coincidence. It is too much of a coincidence that Respondent chose to register the disputed domain name combining two of the last names that make up Complainant's name and marks, and that Respondent is named almost exactly the same as Complainant. Respondent knew of Complainant's business and wanted to exploit the name to its advantage. Respondent targeted Complainant to support a scam, or at the very least, to present itself as a reputable law firm to mislead Internet users to its website. The composition of the disputed domain name is more likely than not the result of such an attempt to misappropriate Complainant's name and reputation. 1 Complainant provided a screenshot of "https://www.artistfirst.com/ChitChat2015.htm" on the presentation of such appearance on April 14, 2022. This Panel corroborated Complainant's allegation by visiting said website, and further noticed that the audio of such appearance is available therein. See section 4.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"). page 4 A search for the exact terms that make up Respondent's name, as well as the disputed domain name and the email address provided on its website, showed results that include at least three websites that seemingly attempt to cheat Internet users. Although no evidence of Respondent's scam is readily available to Complainant, the unlikely coincidences, and the identification as a scam by a former FBI agent, point towards illegal conduct being carried out through the website to which the disputed domain name resolves. The evidence seems to indicate that this case fits a sophisticated fraudulent scam whereby victims are contacted by email by fraudsters, who typically identify themselves as lawyers or representatives of law firms and claim to be handling confidential or time-sensitive matters. Victims might be pressured by the fraudster to act quickly or secretly in handling transfers of funds. On the basis of the evidence, the only reasonable conclusion that can be drawn is that Respondent, knowing of the name, fame and reputation of Complainant, has deliberately chosen to appropriate Complainant's name and reputation for the purpose of a fraudulent scam. Respondent has registered and used the disputed domain name with the intention of attracting, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website. Complainant requests that the disputed domain name be transferred to Complainant. B. Respondent Respondent did not reply to Complainant's contentions. 6. Discussion and Findings Paragraph 15(a) of the Rules instructs the Panel to "decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable". The lack of response from Respondent does not automatically result in a favorable decision for Complainant (see Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465, and section 4.3 of the WIPO Overview 3.0). The burden for Complainant, under paragraph 4(a) of the Policy, is to show: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) that 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. A. Identical or Confusingly Similar It is undisputed that Complainant has rights over the BASHAM, RINGE Y CORREA and the BASHAM, RINGE Y CORREA S.C. and design marks. Since the addition of a generic Top-Level Domain (i.e. ".com") in a domain name is technically required, it is well established that such element may be disregarded when assessing whether a domain name is identical or confusingly similar to a mark. Taking into account the aforesaid, the overall impression renders the disputed domain name confusingly similar to Complainant's BASHAM, RINGE Y CORREA mark. The disputed domain name partially reflects said mark, omitting its last word "correa", replacing "y" with its English equivalent "and" and moving it between the two remaining words "basham" and "ringe". In this Panel's view, said mark is recognizable in the disputed domain name, the latter reflecting the first two words of such mark, albeit with the conjunctive "and" in between. Those are subtle differences that do not avoid a finding of confusing similarity (see sections 1.7, 1.8, and 1.14 of the WIPO Overview 3.0). Further, such finding of confusing similarity is reinforced by the fact that the website linked to the disputed domain name features a law firm by the names of "Basham and Ringe Correa LLP" or "Basham & Ringe Correa LLP" (see section 1.15 of the WIPO Overview 3.0). page 5 Thus, this Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Complainant has alleged and Respondent has failed to deny that Respondent has no rights or legitimate interests in respect of the disputed domain name. Complainant asserts that Respondent does not hold any mark registrations corresponding to any of the terms used in the disputed domain name or the names in the associated website, that Respondent is not commonly known by the disputed domain name or by Respondent's name variants, and that Respondent is using the disputed domain name to resemble Complainant which does not correspond to a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name. Respondent's name variants (as registrant in the WhoIs report and at the website linked to the disputed domain name) substantially correspond to Complainant's name and marks. Internet searches conducted by Complainant on Respondent were negative generally. In this Panel's view, it is highly unlikely that there is another law firm in the United Kingdom or elsewhere whose name corresponds almost exactly to Complainant's name and marks (not only the three surnames that form such name and marks, but also in the same order, which render Complainant's name and marks sufficiently distinctive), moreover there is no indication in the file that Respondent's name as Registrant (or as shown at such website) corresponds to the real name of Respondent (see SuperMedia LLC v. Superpages Vip, WIPO Case No. D2011-1293). It might be that Respondent might have adopted such name, along with the confusingly similar disputed domain name, as a potential scheme to convey a false impression, as further noted below. Respondent is using the website associated with the disputed domain name to offer legal services, which is the field of Complainant's activities, featuring a law firm named almost the same as Complainant, thus conveying a confusing impression that such a website may be somewhat related to Complainant. Further, there is no indication as to why Respondent's address in the WhoIs report appears in Mexico City, Mexico, while such website shows an address for Respondent in Edinburgh, United Kingdom. This Panel considers that Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name (see section 2.1 of the WIPO Overview 3.0). In the file, there is no evidence of circumstances of the type specified in paragraph 4(c) of the Policy or of any other circumstances giving rise to a possible right to or legitimate interest in the disputed domain name by Respondent. Based on the aforesaid, this Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith Complainant is a very well-known Mexican law firm, featured in several international ranking publications of law firms. Taking into account the aforesaid, and that Complainant's registration and use of the BASHAM, RINGE Y CORREA mark preceded the creation of the disputed domain name, Complainant's Internet presence, and the content of the website linked to the disputed domain name, this Panel is of the view that Respondent should have been aware of the existence of Complainant and its mark at the time it obtained the registration of the disputed domain name, which denotes bad faith. The website linked to the disputed domain name has been used to offer legal services featuring a full-service law firm whose name variants are almost the same as Complainant's. Considering that Complainant is a fullservice law firm, it seems to this Panel that in using the disputed domain name Respondent has sought to resemble Complainant or, at least, to create a likelihood of confusion with Complainant and its mark as to the sponsorship, source, affiliation, or endorsement of said website and services offered therein, when in fact there is no such connection. Such resemblance alone is highly suspicious and, where coupled with the lack of results for Respondent (other than those relating to Complainant) through Internet searches and the clear analogy with Complainant's name on the website linked to the disputed domain name displaying "Basham and Ringe page 6 Correa LLP" and "Basham & Ringe Correa LLP", make this Panel infer that the disputed domain name may well be used for impersonating Complainant or conducting other deceitful activities. The evidence in the file shows that the disputed domain name was flagged for emails from a "fake law firm", which confirms this Panel's inference. In this Panel's view, Respondent's failure to appear in this proceeding may be deemed as a showing that Respondent lacks arguments and evidence to support its holding of the disputed domain name. In the present case, the lack of response is not what this Panel would expect from a true law firm. In sum, the overall evidence in the file shows that Respondent deliberately targeted Complainant and its mark at the time it obtained the disputed domain name with the intention to resemble them and pass off as an established law firm, for purposes of deceiving third parties or potentially disrupting Complainant's business, which denotes bad faith. In light of the above, this Panel finds that Complainant has satisfied 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, this Panel orders that the disputed domain name be transferred to Complainant. /Gerardo Saavedra/ Gerardo Saavedra Sole Panelist Date: August 9, 2023
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