ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Bryan Cave Leighton Paisner LLP v. sharma hornessd Case No. D2024-3449 1. The Parties The Complainant is Bryan Cave Leighton Paisner LLP, United States of America (“United States”), represented internally. The Respondent is sharma hornessd, United States. 2. The Domain Name and Registrar The disputed domain name is registered with Hostinger Operations, UAB (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 22, 2024. On August 23, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 26, 2024, 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 (Domain Admin) and contact information in the Complaint. The Center sent an email communication to the Complainant on August 26, 2024, 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 August 30, 2024. 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 September 2, 2024. In accordance with the Rules, paragraph 5, the due date for Response was September 22, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 23, 2024. The Center appointed Ik-Hyun Seo as the sole panelist in this matter on September 30, 2024. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration
page 2 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, formed in 2018 through a merger between the St. Louis-based law firm Bryan Cave and the London-based law firm Berwin Leighton Paisner. The Complainant has approx. 1,200 lawyers in 31 offices around the world. Since the merger, the Complainant has used the BCLP, BCLP LAW, and BRYAN CAVE LEIGHTON PASINER BCLP trademarks in connection with legal and related services and owns a number of trademark registrations for the marks in various jurisdictions. To name a few, with respect to trademark BLCP LAW, the Complainant owns United Kingdom Trademark Registration Number UK00003263855, registered on January 26, 2018. With respect to trademark BCLP, the Complainant owns United States Trademark Registration Number 5921654, registered on November 26, 2019; and International Trademark Registration Number 1416299, registered on March 28, 2018. The Respondent appears to be an individual with an address in the United States. The disputed domain name was registered on July 26, 2024, and does not resolve to a page with any content. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. Notably, the Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademarks since the disputed domain name is identical to the Complainant’s BCLP LAW trademark except for the insertion of the letter “s” between “BCLP” and “LAW”. The Complainant also contends that this is a form of typosquatting as the letter “s” is inserted into the middle of the domain name string and the extra letter is therefore camouflaged by the surrounding letters. The Complainant also contends that the Respondent has no rights or legitimate interests in the disputed domain name and confirms that it has not authorized or licensed rights to the Respondent in any respect. The Complainant contends that the Respondent generated email addresses from the disputed domain name corresponding to and identical to the email addresses of actual employees of the Complainant, except with the additional letter “s” ([…]@bclpslaw.com) and used them to send emails in the name of a partner at the Complainant law firm to a third party with whom the partner was actually negotiating a settlement agreement, requesting redirection of payments to the Respondent’s own bank account. The emails had on carbon copy a fake email address impersonating an actual legal assistant at the Complainant law firm to add an air of legitimacy. The Complainant contends that such use was intended to mislead and defraud and is not legitimate use. Finally, the Complainant contends that the disputed domain name was registered and used in bad faith. The Complainant contends that the Respondent used the disputed domain name to impersonate a partner at the Complainant law firm in an attempt to commit fraud, and that such use is a clear example of bad faith. The Complainant also contends that the disputed domain name represents typosquatting, which is evidence of bad faith registration and use, that the registration of the disputed domain name by someone with no connection to the Complainant suggests opportunistic bad faith to create an impression of association with the Complainant, and that lack of content at the disputed domain name does not negate a finding of bad faith.
page 3 B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Finding A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The Panel finds the mark is recognizable within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Although the addition of other terms - here, the letter “s” - may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. The Respondent sent emails to a third party posing as an employee of the Complainant and requested redirection of payments in an apparent attempt to carry out a fraudulent scheme. Panels have held that the use of a domain name for illegal activity - here, claimed phishing and impersonation/passing off - can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1. The Panel finds the second element of the Policy has been established.
page 4 C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. In the present case, there is evidence of the Respondent’s use of the disputed domain name to send fraudulent emails impersonating a partner from the Complainant law firm to a third party in what appears to be a scheme to defraud the third party and/or the Complainant financially. Based on such use, it is clear that the Respondent targeted the Complainant in registering the disputed domain name, and in cleverly adding just one letter to the Complainant’s mark to make the disputed domain name appear as confusingly similar to the Complainant’s mark as possible. Panels have held that the use of a domain name for illegal activity - here, claimed phishing and impersonation/passing off - constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy. The Panel finds that the Complainant has established the third element 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. /Ik-Hyun Seo/ Ik-Hyun Seo Sole Panelist Date: October 14, 2024
Full & Egal Universal Law Academy