CMS Cameron Mckenna Nabarro Olswang LLP v mostafa shade

WIPO Case No. D2024-5004

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

CMS Cameron Mckenna Nabarro Olswang LLP v. mostafa shade

Case No. D2024-5004

1. The Parties

The Complainant is CMS Cameron Mckenna Nabarro Olswang LLP, United Kingdom (“UK”), self- represented.

The Respondent is mostafa shade, Romania.

2. The Domain Name and Registrar

The disputed domain name <lawnowlimited.com> is registered with FastDomain, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 4, 2024. On December 4, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 4, 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 (Perfect Privacy, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on December 5, 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 December 6, 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 December 12, 2024. In accordance with the Rules, paragraph 5, the due date for Response was January 1, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 2, 2025.

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The Center appointed Reyes Campello Estebaranz as the sole panelist in this matter on January 16, 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 a UK limited liability partnership formed by three law firm members, and it is part of a global network, the CMS Group established in July 1999, which operates in over 40 jurisdictions worldwide. The Complainant and its group provide a wide range of legal services, associated legal information, and training services, including an e-learning and legal news subscription offering called “law-now”, which is or has been accessible online over various platforms and websites.[1] The Complainant’s LAW-NOW subscription information services has obtained various awards and recognitions since its launch in 1996, there are currently 47,000 registered user accounts and 21,000 active email subscribers to this service, and its e-learning service has obtained, since its launch in July 2010, a turnover over GBP 2.5 million.

[1]Per the Complaint, these platforms include “ “

In connection to its e-learning services, the Complainant owns a UK company, Law Now Limited incorporated in July 1986 (Reg. No. 02034827), with registered office in London. The Complainant further owns various trademark registrations for the brand LAW-NOW, including:

- European Union Trade Mark Reg. No. 3650298, LAW-NOW, word, registered on July 7, 2005, in

Class 42;
- European Union Trade Mark Reg. No. 12048948, LAW-NOW, word, registered on February 26, 2014, in Classes 9, 16, 35, 36, 38, 41, and 45;

-	UK Trademark Reg. No. UK00903650298, LAW-NOW, word, registered on July 7, 2005, in Class 42;
and

- UK Trademark Reg. No. UK00912048948, LAW-NOW, word, registered on February 26, 2014, in Classes 9, 16, 35, 36, 38, 41, and 45;

(collectively hereinafter referred as the “LAW-NOW mark”).

The Complainant further owns various domain names corresponding to its brands, including
<cms-lawnow.com> (registered on May 17, 2013), which resolves to its corporate website, and
<law-now.com> (registered on April 22, 1999), which redirects to the first.

The disputed domain name was registered on February 22, 2024, and it is currently apparently inactive resolving to an Internet browser error message that indicates, “This site can’t be reached”. According to the evidence provided by the Complainant, the disputed domain name previously resolved to an active website, in English language, that prominently displayed the company name “LAW NOW LIMITED” at its heading and purportedly offered legal services from the Complainant and its company Law Now Limited with same contact details as this company registered office in London.

On September 20, 2024, the Complainant received a communication from a third party indicating he had received a phone call from a person pretending he was working with the Law Now Limited company. This person indicated he was able to recover some money invested in fraud forex companies and requested a prepaid sum (USD 600) for opening the file and court fees, in order to be able to get a potential refund of USD 49,000; this person in the phone further shared with the third party the website “

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On September 27, 2024, the Complainant contacted the Registrar requesting the deactivation of the website at the disputed domain name and the cancellation of its registration. The Registrar refused to comply with this request.

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 the disputed domain name incorporates the LAW-NOW mark and it is confusingly similar to this trademark, in which the Complainant has built up a very sizeable reputation over a number of years. The additional term “limited” enhances the confusion with this trademark and the Complainant’s company Law Now Limited.

The Complainant further contends the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not affiliated with nor authorized by the Complainant, it is not commonly known by the disputed domain name, and it has not used the disputed domain name in connection to a bona fide offering of goods or services. The disputed domain name was used to host a website that appeared as authorized or affiliated to the Complainant or its company to free ride on its reputation and to create email addresses to be used for illegitimate or fraudulent purposes.

The Complainant finally contends the disputed domain name was registered and has been used in bad faith. Given the reputation of the Complainant and its LAW-NOW mark in the legal sector, it is inconceivable the Respondent was not aware of them when it registered the disputed domain name. It is clear from the use of the disputed domain name that its composition was calculated to create a false affiliation to the Complainant’s company and its business. The current passive holding of the disputed domain name does not preclude a finding of bad faith and disrupts the Complainant’s business. The disputed domain name is likely been used or is contributing to phishing and fraudulent activities; at least one person has been contacted by the Respondent fraudulently impersonating the Complainant’s company Law Now Limited to request a sum of money.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Complainant has made the relevant assertions as required by the Policy and the dispute is properly within the scope of the Policy. The Panel has authority to decide the dispute examining the three elements in paragraph 4(a) of the Policy, taking into consideration all of the relevant evidence, annexed materials and allegations, and performing some limited independent research under the general powers of the Panel articulated, inter alia, in paragraph 10 of the Rules.

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.

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The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy, namely the LAW-NOW mark. WIPO Overview 3.0, section 1.2.1 and 1.3.

The trademark is recognizable within the disputed domain name. Accordingly, the Panel finds the mark is recognizable within the disputed domain name, and 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 term “limited”, 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.

Nothing in the record indicates the Respondent may have any rights or legitimate interests in the disputed domain name.

The Panel notes the terms “law now limited” do not share any similarity with the Respondent’s name revealed by the Registrar verification, and these terms exactly coincide with the Complainant’s company name Law Now Limited, registered and incorporated under the UK Law since 1986 (more than 35 years before the registration of the disputed domain name).

The Panel has further corroborated through a search over the Global Brands Database that the Respondent does not own any registered trademark consisting of or including the terms “law now” or “law now limited”.[2]

[2]Noting in particular the general powers of a panel articulated inter alia in paragraphs 10 and 12 of the UDRP Rules, it has been

The Panel further notes the disputed domain name is currently apparently inactive, however, according to the evidence provided by the Complainant, it has been previously used in connection to a website that impersonated the Complainant’s company and generated a false affiliation with the Complainant’s business and its LAW-NOW mark. In this respect, the Panel notes: (i) the Respondent’s website included the

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Complainant’s company name, Law Now Limited, at its heading and within its content; (ii) this website
purportedly offered the same type of services in the legal field, in which the Complainant and its trademark
LAW-NOW are notorious; and (iii) said website did not prominently disclosed its lack of relationship with the
Complainant and its business.

The nominative fair use of a trademark in a domain name by retailers, distributors or services providers is acceptable under certain circumstances outlined in the “Oki Data test” (in reference to Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903). WIPO Overview 3.0, section 2.8. However, the Panel finds

the Respondent clearly fails this test as its website did not accurately and prominently disclose the deliberately generated confusion or affiliation with the Complainant, its company Law Now Limited and its trademark LAW-NOW.

The Panel further finds the use of the disputed domain name indicates an intention to impersonate the Complainant’s company Law Now Limited, which alongside with the remittance of apparently fraudulent communications to the third parties requesting deposits and potentially obtaining their personal sensible information constitutes an illegitimate activity that can never confer rights or legitimate interests on a respondent. Panels have held that the use of a domain name for illegal/illegitimate activity here claimed phishing, impersonation/passing off, or other types of fraud, can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1.

Accordingly, 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.

In the present case, the Panel notes the notoriety, global presence, and reputation of the Complainant and its firm as well as its trademarks. The Panel has corroborated with various searches over the Internet the Complainant and its business, as well as the LAW-NOW mark, are at top positions of these searches over the Internet.

The Panel further finds the evidence in the record sufficient to consider the LAW-NOW mark is notorious within the legal field. Such notoriety of the LAW-NOW mark together with the composition of the disputed domain name that incorporates the Complainant’s company Law Now Limited indicates, in the Panel’s view, the Respondent had in mind this company and the mark at the time of registration of the disputed domain name.

The disputed domain name contains the main elements of the LAW-NOW mark (except the dash separating its terms), and is followed by the term “limited”, which altogether represents the exact company name of the Complainant’s company (Law Now Limited), and, as such, is closely related to the Complainant and its

business. The disputed domain name therefore falsely generates an affiliation with the Complainant and one of its companies. The use of a term that correspond to the Complainant’s business and one of its companies increases the risk of confusion or affiliation by Internet users, and, together with all other circumstances of
this case, leads the Panel to consider the Respondent likely knew of the Complainant and its trademark and
deliberately registered the disputed domain name in bad faith.

The Panel further finds the use of the disputed domain name reveals the intention to generate confusion or affiliation with the Complainant, its company Law Now Limited and its LAW-NOW mark for a commercial gain and/or to impersonate the Complainant’s company in a fraud scam that may potentially involve phishing of personal sensible information and a commercial fraud. The Respondent’s website content as well as the information received from one of the third party complaints lead to this conclusion.

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Therefore, the Panel finds the content of the Respondent’s website and the composition of the disputed domain name reveal an intention on the part of the Respondent of targeting the Complainant and its reputed trademark in an effort to generate confusion or a false affiliation for commercial gain.

Furthermore, panels have held that the use of a domain name for illegitimate activity here, claimed phishing, impersonation/passing off, or other types of fraud, 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.

Regarding the current apparent non-use of the disputed domain name, 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. WIPO Overview 3.0, section 3.3. Having reviewed the available record, the

Panel finds in the circumstances of this case the passive holding of the disputed domain name does not prevent a finding of bad faith under the Policy.

Additionally, under these circumstances, the Panel finds the use of a proxy shield by the Respondent to shield its identity, as well as the failure of the Respondent to respond to the Complaint and to the factual allegations made by the Complainant, may properly be considered relevant as further factors affirming a finding of bad faith.

Accordingly, 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 <lawnowlimited.com> be transferred to the Complainant.

/Reyes Campello Estebaranz/
Reyes Campello Estebaranz
Sole Panelist
Date: January 21, 2025

“ and “

accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to
assessing the case merits and reaching a decision. WIPO Overview 3.0, section 4.8.