Linklaters LLP v Host Master, 1337 Services LLC

WIPO Case No. D2022-2976

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Linklaters LLP v. Host Master, 1337 Services LLC

Case No. D2022-2976

1. The Parties

The Complainant is Linklaters LLP, United Kingdom, represented by CSC Digital Brand Services Group AB,

Sweden.

The Respondent is Host Master, 1337 Services LLC, Saint Kitts and Nevis.

2. The Domain Name and Registrar

The disputed domain name <linklaterslaw.com> is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 10, 2022.

On August 12, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 12, 2022, 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on August 18, 2022 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 29, 2022.

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 paragraph 5, the due date for Response was September 21, 2022. The Respondent did not submit any

response. Accordingly, the Center notified the Respondent’s default on September 23, 2022.

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The Center appointed Mario Soerensen Garcia as the sole panelist in this matter on October 10, 2022.
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 Linklaters LLP, a global law firm with headquarters in the United Kingdom, which,

together with its affiliates, provides legal services under the name “Linklaters”. The Complainant has 5.340

employees with 31 offices in 21 countries and is one of the top five United Kingdom law firms in 2020.

The Complainant, via its wholly owned subsidiary Linklaters Business Services, owns several registrations around the world for LINKLATERS, including the following:

-United States Trademark registration No. 2633820, registered on October 15, 2002;
-European Union Trade mark registration No. 001209477, registered on February 1, 2001;

-United Kingdom Trade mark registration No. UK00001274996, registered on May 19, 1989.

The Complainant is the owner of the domain name <linklaters.com> since September 23, 1996.

The disputed domain name was created on February 14, 2022 and currently resolves to a blank page.

5. Parties’ Contentions

A. Complainant

The Complainant states that the disputed domain name incorporates its trademark adding the dictionary

term “law”, thereby making it confusingly similar to the Complainant’s trademark. In addition, the

Complainant explains that the fact that such term is closely linked and associated with the Complainant’s

mark only serves to underscore and increase the confusing similarity.

According to the Complainant, prior to the Complainant’s partners requesting a takedown of the disputed domain name’s website, the Respondent was using the disputed domain name to direct Internet users to a website that offered legal services while attempting to capitalize on the Complainant’s reputation.

The Complainant says that the Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services, it is not commonly known by the disputed domain name, it has not acquired any trademark rights related to the disputed domain name and is taking advantage of the confusing

similarity between the disputed domain name and the Complainant’s trademark.

According to the Complainant, the registration of a domain name that incorporates the Complainant’s trademark in its entirety adding the term “law”, which describes the Complainant’s business, has

demonstrated a knowledge and familiarity with the Complainant’s brand and business, consequently

resulting in bad faith, with the Respondent then attempting to profit from such confusion by offering legal

services.

Finally, the Complainant requests the transfer of the disputed domain name.

B. Respondent

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

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6. Discussion and Findings

As per paragraph 4(a) of the Policy, the Complainant must prove 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 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

The evidence presented in the Complaint demonstrates that the Complainant is the owner of trademark
registrations for LINKLATERS in different jurisdictions as well as the domain name <linklaters.com>.

All these registrations predate the registration date of the disputed domain name.

The disputed domain name is confusingly similar to the Complainant’s trademark LINKLATERS. Indeed, the

addition of the term “law” in the disputed domain name does not prevent a finding of confusing similarity with
the Complainant’s trademark.

It is the general view among UDRP panels that the addition of merely dictionary, descriptive, or geographical words to a trademark in a domain name does not prevent a finding of confusing similarity under the first element of the UDRP (for example, Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd, WIPO Case No. D2001-0110).

Also, as numerous prior UDRP panels have recognized, the incorporation of a trademark in its entirety or a dominant feature of a trademark is sufficient to establish that a domain name is identical or confusingly

similar to the complainant’s mark. See section 1.7 of the WIPO Overview of WIPO Panel Views on Selected

UDRP Questions, Third Edition (“WIPO Overview 3.0”).

The Panel finds that paragraph 4(a)(i) of the Policy has been proved by the Complainant, i.e., the disputed

domain name is confusingly similar to the Complainant’s trademarks.

B. Rights or Legitimate Interests

The Respondent has not submitted a response to the Complaint.

There is no evidence that the Respondent has any authorization to use the Complainant’s trademark or to

register a domain name containing the trademark LINKLATERS.

There is no evidence that the Respondent is commonly known by the disputed domain name.

There is also no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name or that before any notice of the dispute the Respondent has made use of, or demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.

The Panel finds that the use of the disputed domain name, which incorporates the Complainant’s trademark,

does not correspond to a bona fide use of the disputed domain name under the Policy.

Furthermore, in view of the nature of the disputed domain name (the Complainant’s trademark and the term

“law”, it carries a risk of implied affiliation. See section 2.5.1 of the WIPO Overview 3.0.

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For the above reasons, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been satisfied, i.e., the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The trademark LINKLATERS is registered by the Complainant in different jurisdictions and has been used for years. Also, the Complainant registered the domain name <linklaters.com>, which resolves to its official website.

The Complainant’s LINKLATERS mark is recognized in its area and one of the ways the Complainant

advertises its services is certainly through its website, which therefore plays an important role for the

Complainant’s activities. It is apparent to the Panel that the Respondent knew about the Complainant’s

services and its trademark rights at the time of the registration of the disputed domain name, due to the

Respondent’s decision to include the term “law” (which is descriptive of the Complainant’s services) to the

Complainant’s trademark.

The disputed domain name that reproduces the mark LINKLATERS adding the term “law” is undoubtedly suggestive of the Respondent’s bad faith. It does not seem to make any sense for the Respondent to

register the disputed domain name, except to mislead potential clients of the Complainant.

Therefore, this Panel finds that the Respondent has intentionally attempted to cause confusion with the

Complainant’s trademark by misleading Internet users to believe that the disputed domain name belongs to

or is associated with the Complainant.

This Panel finds that the Respondent’s attempt of taking unfair advantage of the trademark LINKLATERS. In

the circumstances, passive holding of the disputed domain name is further evidence of the Respondent’s

bad faith.

Moreover, the Respondent has chosen not to respond to the Complainant’s allegations. In these

circumstances, and as found in the panel’s decision in The Argento Wine Company Limited v. Argento

Beijing Trading Company, WIPO Case No. D2009-0610, “the failure of the Respondent to respond to the
Complaint further supports an inference of bad faith”.

For the above reasons, the Panel finds that the condition of paragraph 4(a)(iii) of the Policy has been satisfied, i.e., the disputed domain name was registered and is being 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 <linklaterslaw.com> be transferred to the Complainant.

/Mario Soerensen Garcia/

Mario Soerensen Garcia

Sole Panelist
Date: October 20, 2022