Bryan Cave Leighton Paisner LLP v Mark Davis

WIPO Case No. DCO2025-0021

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Bryan Cave Leighton Paisner LLP v. Mark Davis

Case No. DCO2025-0021

1. The Parties

The Complainant is Bryan Cave Leighton Paisner LLP, United States of America (“United States”), self- represented.

The Respondent is Mark Davis, United States.

2. The Domain Name and Registrar

The disputed domain name <bclplaw.co> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 28,
2025. On March 4, 2025, the Center transmitted by email to the Registrar a request for registrar verification
in connection with the disputed domain name. On March 4, 2025, 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 (“Redacted for Privacy, Privacy service provided by Withheld for
Privacy ehf”) and contact information in the Complaint. The Center sent an email communication to the
Complainant on March 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 March 10, 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 March 14, 2025. In accordance with the Rules, paragraph
5, the due date for Response was April 3, 2025. The Respondent did not submit any response. Accordingly,
the Center notified the Respondent’s default on April 4, 2025.

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The Center appointed Angela Fox as the sole panelist in this matter on April 14, 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, Bryan Cave Leighton Paisner LLP, is an international law firm with more than 1,200 lawyers across 30 offices around the world, including in North America, Europe, the Middle East, and Asia. It is comprised of two firms which merged in 2018, namely Bryan Cave LLP in the United States, whose predecessor in interest was founded in 1873, and Berwin Leighton Paisner in the United Kingdom, whose predecessor in interest was founded in 1932. The Complainant’s name arises from the merger of these two entities and since 2018 has traded under its new name and its initials, “BCLP”, in offering its legal services in the United States, United Kingdom and around the world.

The Complainant owns numerous trademark registrations for BCLP, including the following, details of which were annexed to the Complaint:

- United States Registration No. 5921654 for BCLP, registered on November 26, 2019 in Classes 35,

41, 42, and 45;

- United Kingdom Registration No. 3263855 for BLCP LAW, registered on January 26, 2018 in Classes 9, 16, 35, 36, 38, 41, 42, and 45;

- United Kingdom Registration No. 3263851 for BLCP, registered on January 26, 2018 in Classes 9, 16, 35, 36, 38, 41, 42, and 45; and

- International Registration No. 1424544 for BLCP, registered on March 1, 2018 in Classes 9, 16, 35, 36, 38, 41, 42 and 45.

The Complainant also maintains its primary website at the domain name <bclplaw.com>, and its professionals and employees use email addresses based on this address.

The disputed domain name <bclplaw.co> was registered on January 12, 2025, and as of the filing of the been updated and is now inactive.
Complaint in this proceeding, resolved to a parked webpage advertising weblinks for “Best Personal Injury

The Complainant annexed to the Complaint a copy of an email sent from an address linked to the disputed domain name to a client of the Complainant, attempting to redirect a large payment between a third party and a client of the Complainant to the Respondent’s personal accounts. The email misrepresented the sender as being an attorney at the Complainant’s firm, with the email format “[name]@bclplaw.co”; the actual attorney’s email address was “[name]@bclplaw.com”, which differed from the original only by one letter in the email suffixes “.co” and “.com”. The sender also included an imposter email address for another “BCLP” partner using the same email format and again differing from the correct address only by the last letter, likely to further enhance the credibility of the email.

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.

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Notably, the Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s registered trademarks BCLP and BCLP LAW. It wholly incorporates both of these marks, and adds only the country-code Top-Level Domain (“ccTLD”) “.co”, which is a standard registration requirement and may therefore be disregarded.

The Complainant further submits that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not associated with the Complainant in any way and has never sought nor received authorization or a license to use the Complainant’s trademarks. There is no evidence that the

Respondent has ever been commonly by reference to the disputed domain name, nor that it has ever sought or procured any registrations for any tradenames, corporations, or trademarks for “BCLP” or “BCLP law.” The Respondent’s use of the disputed domain name for a link farm hosting pay-per-click (“PPC”) links to third
party websites offering legal services in competition to those of the Complainant misleadingly capitalises on
the reputation and goodwill of the Complainant’s marks to attract Internet users to its site and does not

therefore give rise to a legitimate right or interest in the disputed domain name.

Finally, the Complainant submits that the disputed domain name was registered and has been used in bad
faith, citing the evidence of use of the disputed domain name to create emails impersonating the

Complainant in an attempt to deceive and defraud others.

B. Respondent

The Respondent did not reply to the Complainant’s contentions and is in default. No exceptional circumstances explaining the default have been put forward. Therefore, in accordance with paragraphs 14 (a) and (b) of the Rules, the Panel will decide on the Complaint and shall draw such inferences as it considers appropriate from the Respondent’s default.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the panel finds that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the
complainant has rights;
(ii) the respondent has no rights or legitimate interests in the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.

All three elements must be present before a complainant can succeed in an administrative proceeding under the Policy.

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.

In this case, the Complainant has shown rights in respect of the trademarks BCLP and BCLP LAW for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1.

The entirety of the Complainant’s marks is reproduced within the disputed domain name. Accordingly, the disputed domain name is identical 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.

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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. As noted at section 2.9, WIPO Overview 3.0, “panels have found that the use of a domain name to host a parked page

comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on
the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users.” The PPC use
that the Respondent has been making of the disputed domain name falls within this category, as it is using
the Complainant’s trademarks to attract Internet users and then lead them to websites offering legal services
that compete with those of the Complainant. The Respondent is thereby capitalizing on the reputation and
goodwill of the Complainant’s BCLP and BCLP LAW trademarks in order to lead consumers to other service
providers. Consequently, the Respondent’s use is not capable of giving rise to a right or legitimate interest in
the disputed domain name.

Notably, moreover, the Complainant has provided evidence that the disputed domain name has been used in connection with the sending of at least one fraudulent email impersonating the Complainant and seeking to divert a settlement payment from one of the Complainant’s clients to a bank account controlled by the Respondent. WIPO Overview 3.0, section 2.13.1 states, “Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent”.

The Respondent has not attempted to rebut the Complainant’s assertions and evidence.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

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.

Under paragraph 4(b)(iv) of the Policy, such circumstances include that by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.

In the present case, the Panel notes that the Respondent has used the disputed domain name in connection with a PPC website hosting links to third-party websites offering legal services which are in competition with the Complainant’s services. There is no doubt that such use creates a likelihood of confusion with the

Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website.

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The Panel finds that the disputed domain name was registered and has been used in bad faith under 4(b)(iv) of the Policy.

Moreover, the Complainant has shown evidence that the disputed domain name has been used in website may constitute bad faith. Such purposes include sending email, phishing, identity theft, or malware distribution.”

connection with the sending of at least one email fraudulently impersonating the Complainant and seeking to
deceive a client of the Complainant into diverting a settlement payment into an account controlled by the
Respondent. WIPO Overview 3.0, section 3.1.4, states that “the use of a domain name for per se illegitimate
activity such as the sale of counterfeit goods or phishing can never confer rights or legitimate interests on a
respondent” and that “such behavior is manifestly considered evidence of bad faith.” In addition,

The Panel finds that the Complainant has established the third element of the Policy, and that the disputed domain name was registered and has been used in bad faith.

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 <bclplaw.co> be transferred to the Complainant.

/Angela Fox/ Angela Fox Sole Panelist Date: May 8, 2025