Pinsent Masons Llp v James Woods

WIPO Case No. D2023-2196

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Pinsent Masons LLP v. James Woods

Case No. D2023-2196

1. The Parties

Complainant is Pinsent Masons LLP, United Kingdom (“UK”), self-represented.

Respondent is James Woods, United States of America (“United States”).

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 19, 2023. On May 19, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 19, 2023, 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 Complainant on May 24, 2023, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on May 25, 2023.

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 Respondent of the Complaint,
and the proceedings commenced on May 31, 2023. In accordance with the Rules, paragraph 5, the due
date for Response was June 20, 2023. Respondent did not submit any response. Accordingly, the Center

notified Respondent’s default on June 21, 2023.

The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on June 28, 2023. 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.

page 2

4. Factual Background

Complainant, Pinsent Masons LLP, is a full-service international law firm engaged in the provision of legal services based in the UK.

Complainant operates a primary website using the domain name <pinsentmasons.com> in which promotes and offers its goods and services.

Complainant owns a wide portfolio of trademark registrations in the UK and other jurisdictions containing the name Pinsent Masons. Some examples of Complainant’s trademark registrations can be found below:

International

Registration No.	Trademark	Jurisdictions	Classes	Registration Date
United
UK00002377047	09, 16, 35, 36, 41, 42	April 15, 2005
Kingdom

PINSENT International

977347 09, 16, 35, 36, 41, 45 April 30, 2008

MASONS	Trademark
PINSENT	United

UK00002484418 09, 16, 35, 36, 41, 45 September 12, 2008

MASONS Kingdom

The disputed domain name was registered on May 4, 2023, and was used to send fraudulent emails.

5. Parties’ Contentions

A. Complainant

Complainant pleads that the disputed domain name is confusingly similar to the registered trademark PINSENT MASONS, since it fully incorporates Complainant’s trademark PINSENT MASONS with the omission of one letter “s” and addition of the term “llp”.

Complainant affirms that the disputed domain name uses the trademark PINSENT MASONS in its entirety with the omission of one letter “s” and addition of the term “llp” - which would not avoid a confusingly similarity between the disputed domain name and Complainant’s trademark. The generic Top-Level Domain (“gTLD”) “.com” does not affect the similarity between the disputed domain name and Complainant’s trademark.

Therefore, according to Complainant, the disputed domain name is confusingly similar with Complainant’s
trademark PINSENT MASONS, fulfilling paragraph 4(a)(i) of the Policy, and paragraphs 3(b)(viii) and
3(b)(ix)(1) of the Rules.

In addition, Complainant states that Respondent would not have any rights or legitimate interests in respect of the disputed domain name, nor is Respondent commonly known by the disputed domain name. Further, Respondent has not been authorized, or licensed to use Complainant’s trademark PINSENT MASONS as a domain name nor is Respondent associated with Complainant.

Complainant observes that Respondent does not make a legitimate noncommercial or fair use of the disputed domain name, as it is not used to promote a bona fide offering of goods or services, nor to support a legitimate noncommercial or fair use.

This way, Complainant states that no legitimate use of the disputed domain name could be reasonably

page 3

claimed by Respondent, thus paragraph 4(a)(ii) of the Policy and paragraph 3(b)(ix)(2) of the Rules have
been fulfilled.

Finally, Complainant states that Respondent (i) was aware of the trademark PINSENT MASONS at the time of registration; (ii) has fraudulently used the disputed domain name for phishing emails.

Thus, according to Complainant, the requirements for the identification of a bad faith registration and use of the disputed domain name have been fulfilled, pursuant to paragraph 4(b)(iv) of the Policy.

Accordingly, Complainant requests transfer of the disputed domain name to Complainant.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

To succeed in a UDRP complaint, Complainant must demonstrate that all the elements listed in paragraph
4(a) of the Policy have been satisfied, as following:

(i)        the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii)       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.

The burden of proving these elements is upon Complainant.

Respondent had 20 days to submit a response in accordance with paragraph 5(a) of the Rules and failed to do so. Paragraph 5(f) of the Rules establishes that if a respondent does not respond to the complaint, in the absence of exceptional circumstances, the panel’s decision shall be based upon the complaint.

A. Identical or Confusingly Similar

Complainant has duly proven that it owns prior registered rights for PINSENT MASONS, and that the disputed domain name includes the trademark PINSENT MASONS with the omission of one letter “s” and addition of the term “llp”.

The omission of one letter “s” and addition of the term “llp” do not prevent a finding of confusing similarity with Complainant’s trademark PINSENT MASONS - since the trademark PINSENT MASONS is recognizable in the disputed domain name.

The disputed domain name consists also of the gTLD “.com”. The applicable gTLD in a domain name, such as “.com” in this case, is viewed as a standard registration requirement and as such is typically disregarded under the first element confusing similarity test (see section 1.11.1 of the WIPO Overview of WIPO Panel

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

Thus, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark

PINSENT MASONS, and so the requirement of the first element of paragraph 4(a) of the Policy is satisfied.

B. Rights or Legitimate Interests

The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is

page 4

WIPO Overview 3.0

summarized in section 2.1 of the as follows: “[w]hile the overall burden of proof in legitimate interests in a domain name may result in the often impossible 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. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”

In this case, noting the facts and contentions listed above, the Panel finds that Complainant has made out a prima facie case showing that Respondent lacks rights or legitimate interests in the disputed domain name, so the burden of production shifts to Respondent. As Respondent has not replied to Complainant’s

contentions, the Panel has considered Complainant’s unrebutted prima facie case to be sufficient to
demonstrate that Respondent has no rights or legitimate interests in the disputed domain name.

It should be noted that Respondent’s lack of response (in the broader context of the case), according to the above-mentioned guidelines from WIPO Overview 3.0, section 2.1, suggests that Respondent has no rights or legitimate interests in the disputed domain name that it could put forward.

Furthermore, Respondent has not used the disputed domain name in the context of a bona fide offering of goods or services that could demonstrate rights or legitimate interests, since the evidence shows that the disputed domain name was used to send fraudulent emails.

The Panel finds that the use of the disputed domain name for illegal activity (e.g., sending phishing email in this case) can never confer rights or legitimate interests on Respondent.

Therefore, the Panel finds that the requirement of the second element of paragraph 4(a) of the Policy is also satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists a number of circumstances that, without limitation, shall be evidence of registration and use of a domain name in bad faith.

Respondent has registered the disputed domain name that fully incorporates Complainant’s trademark similar to Complainant’s trademark.

The Panel finds that it was duly demonstrated that Respondent was likely aware of Complainant’s rights to PINSENT MASONS at the time of the registration, as Complainant’s trademark is widely known and enjoys an international reputation in the legal sector and Respondent added the term “llp” related to the company

type adopted by Complainant and commonly used by firms providing legal services.

Moreover, the previous use of the disputed domain name to promote phishing scams via email by Respondent (Annex 7 of the Complaint), affirms the likelihood of Respondent’s knowledge of Complainant’s trademark and a clear intent to take a free ride on Complainant’s renown trademark. Accordingly, the Panel finds that Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website.

Moreover, it should be noted that, in the circumstances, Respondent’s lack of response further reinforces that the disputed domain name most likely was registered and is being used in bad faith. In this sense, the panel found in Instagram, LLC v. Registration Private, Domains By Proxy, LLC / Alexis Kane, WIPO Case No. D2021-0912 that:

page 5

“The following factors were also considered by the Panel as indicative of bad faith registration and use of the
disputed domain name: (i) the Respondent’s lack of response to the Complaint. See, Awesome Kids LLC
and/or Awesome Kids L.L.C. v. Selavy Communications, WIPO Case No. D2001-0210; (ii) the Respondent’s
lack of response to the cease and desist letter sent by the Complainant. See, e.g. Intesa Sanpaolo S.p.A. v.
Ekkert Ida, WIPO Case No. D2018-2207; (iii) the Respondent has provided no evidence whatsoever of any
actual or contemplated good faith use by it of the disputed domain name as per paragraph 4(b) of the
Policy.”

In light of the above, the Panel finds that the disputed domain name has been registered and is being used in bad faith. Therefore, the requirement of the third element of paragraph 4(a) of the Policy is satisfied.

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 <pinsentmasonllp.com> be transferred to Complainant.

/Gabriel F. Leonardos/
Gabriel F. Leonardos
Sole Panelist
Date: July 12, 2023