ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Pinsent Masons LLP v. Pinsents Masons Case No. DCO2025-0043 1. The Parties The Complainant is Pinsent Masons LLP, United Kingdom, internally represented. The Respondent is Pinsents Masons, United States of America (“United States”). 2. The Domain Name and Registrar The disputed domain name
is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 25, 2025. On April 25, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 (Privacy service provided by Withheld for Privacy ehf) and contact information in the Complaint. The Center sent an email communication to the Complainant on May 5, 2025, 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 May 16, 2025. 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 May 19, 2025. In accordance with the Rules, paragraph 5, the due date for Response was June 8, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 12, 2025.
page 2 The Center appointed Zeynep Yasaman as the sole panelist in this matter on June 30, 2025. 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 with 26 offices across the United Kingdom, Europe, the Middle East, Asia Pacific and Africa. The Complainant was established as a result of a series of mergers. In 1995, Pinsent & Co., a Birmingham-based law firm, merged with Simpson Curtis, a Leeds-based law firm, and commenced operations under the name “Pinsent Curtis”. In 2001, Pinsent Curtis merged with Biddle & Co., adopting the name “Pinsent Curtis Biddle”. In 2002, the Birmingham office of Garrets was incorporated into the firm. The firm was subsequently rebranded as “Pinsents” in 2003. In December 2004, Pinsents merged with the law firm Masons, thereafter operating under the name “Pinsent Masons”. On May 1, 2012, Pinsent Masons further expanded through its merger with McGrigors LLP. The Complainant is the owner of numerous registered trademarks PINSENT MASONS in various jurisdictions. Some of the Complainant’s trademark registrations include: - United States trademark PINSENT MASONS No. 3781267, registered on April 27, 2010, in classes 9, 16, 35, 36, 41, and 45. - United Kingdom trademark PINSENT MASONS No. UK00002484418, registered on September 12, 2008, in classes 9, 16, 35, 36, 41, and 45. - United Kingdom trademark PINSENT MASONS No. UK00906819197, registered on November 26, 2008, in classes 9, 16, 35, 36, 41, and 45. - European Union trademark PINSENT MASONS No. 006819197, registered on November 26, 2008, in classes 9, 16, 35, 36, 41, and 45. - Australian trademark PINSENT MASONS No. 1267386, registered on April 30, 2008, in classes 9, 16, 35, 36, 41 and 45. The Complainant operates primarily under the domain name , which was registered on June 1, 2004. The disputed domain name was registered on October 18, 2024 and does not resolve to an active website, but instead leads to an error page. 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 fact that the Respondent has moved letters in the disputed domain name in an attempt to distinguish it from the Complainant makes no difference to the overall impression of the dominant words “pinsent masons” in the disputed domain name and is a prime example of typosquatting. According to the Complainant, a misspelling in this way signals an intention on the part of the Respondent to confuse users seeking or expecting the Complainant. The Complainant argues that the fact that the Respondent registered the disputed domain name using the country code top-level domain (ccTLD) suffix “.co” causes further confusion, given that the Complainant’s
page 3 core market is offering legal-related services to a wide range of users located in various countries throughout the world. The Complainant adds that given the international presence and associated reputation of the name Pinsent Masons, no trader would choose the disputed domain name unless with the intention to create a false impression of association with the Complainant, to attract business from the Complainant or misleadingly to divert the public from the Complainant to the Respondent. Furthermore, the Complainant argues that the Respondent registered the disputed domain name knowing that it is likely to attract interest from Internet users who are searching for the Complainant. According to the Complainant, it is clear that the Respondent is not making legitimate non-commercial fair use of the disputed domain name, and it is not possible for the Respondent to have acquired any legitimate right to use the disputed domain name since its registration. Regarding the bad faith, the Complainant asserts that given the widespread use and reputation of the PINSENT MASONS trademarks, the Respondent must have been aware of that in registering the disputed domain name. The Complainant contends that the Respondent has not made any demonstrable preparations to make any use of the disputed domain name and that the Respondent has opted to conceal its identity through a privacy protection service. According to the Complainant, it is implausible to suggest that the Respondent could ever have a legitimate basis to hold or use the disputed domain name. The Complainant considers that the Respondent’s motives for registration of the disputed domain name are illegitimate. The Complainant is concerned that the disputed domain name could have been registered in bad faith for illegitimate purposes to sell the disputed domain name, to use the disputed domain name for the purpose of generating click-through revenue, or to use the disputed domain name in order to redirect Internet traffic to an alternative website or to facilitate the creation of email addresses which could be used for illegitimate or fraudulent purposes. Furthermore, the Complainant adds that the Respondent’s registration of the disputed domain name has also prevented the Complainant from registering a domain name that corresponds to the Complainant‘s trademarks and that the disputed domain name is so obviously intended to imply a connection with the Complainant that its very use by the Respondent constitutes opportunistic bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar Paragraph 4(a)(i) of the Policy requires the complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. Where the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.2.1. In the present case, the Panel notes that the Complainant owns several registered PINSENT MASONS trademarks. Accordingly, the Complainant has established rights in a trademark or service mark for the purposes of the Policy. 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 3.0, section 1.7. A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element. This stems from the fact that the domain name contains sufficiently recognizable aspects of the relevant mark.
page 4 WIPO Overview 3.0, section 1.9. Similarly, the applicable TLD in a domain name (e.g., “.com”, “.co”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. WIPO Overview 3.0, section 1.11.1. In the present case, the Panel finds the mark is recognizable within the disputed domain name. In the disputed domain name, the letter “s” from the second word of the Complainant’s mark, MASONS, has been misplaced and added to the end of the first word, resulting in “Pinsents Mason”. Accordingly, the Panel concludes that the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. 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. These are as follows: (i) before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or (iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. 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 Panel notes that the disputed domain name is not being used in connection with a bona fide offering of goods or services. Moreover, although the Respondent’s identity revealed by the Registrar is (first name and last name:) Pinsents Masons, (organization name:) Pinsents Mason, there is no evidence suggesting that the Respondent could be commonly known by the disputed domain name within the meaning of the Policy. Furthermore, the Complainant has clearly established that the Respondent is neither affiliated with the Complainant nor authorized or licensed to use the PINSENT MASONS trademark or register the disputed domain name. The Panel notes that the composition of the disputed domain name itself carries a risk of implied affiliation, given that it is confusingly similar to the Complainant’s trademark. Such a composition cannot constitute fair use as it suggests sponsorship or endorsement by the trademark owner. WIPO Overview 3.0, section 2.5.1.
page 5 The Panel finds the second element of the Policy has been established. 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: (i) circumstances indicating that Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the domain name; or (ii) that the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or (iii) that the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) that by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of respondent’s website or location or of a product or service on respondent’s website or location. Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1. In the present case, the Panel notes that the Complainant and its trademark PINSENT MASONS is a reputable law firm recognized both in the United Kingdom and internationally. Considering the high level of distinctiveness and the reputation of the Complainant’s mark, and that the disputed domain name appears to be an example of misspelling of the PINSENT MASONS mark, the Panel considers that the Respondent registered the disputed domain name with knowledge of the Complainant’s mark. Furthermore, although the disputed domain name does not resolve to an active website, UDRP panels have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. Factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put. WIPO Overview 3.0, section 3.3. In the present case, considering the reputation of the Complainant’s trademark, the composition of the disputed domain name, the Respondent’s failure to submit a response, and the use of contact details that impersonate the Complainant, the Panel considers that the passive holding of the disputed domain name does not preclude a finding of bad faith under the Policy. Considering all the cumulative circumstances of this case, the Panel finds it highly probable that the disputed domain name was registered with the specific intent to exploit the reputation and goodwill of the PINSENT MASONS mark. The registration appears designed to mislead Internet users into believing there is an association between the disputed domain name and the Complainant, which amounts to bad faith. The Panel finds that the Complainant has established the third element of the Policy.
page 6 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. /Zeynep Yasaman/ Zeynep Yasaman Sole Panelist Date: July 6, 2025
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