Pinsent Masons LLP v mark demad
WIPO Case No. D2023-1642
•14-06-2023
ARBITRATION
AND
| MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
Pinsent Masons LLP v. mark demad
Case No. D2023-1642
1. The Parties
The Complainant is Pinsent Masons LLP, United Kingdom, represented by Pinsent Masons LLP, United
Kingdom.
The Respondent is mark demad, United States of America.
2. The Domain Name and Registrar
The disputed domain name <pinsentrmasons.com> is registered with Hostinger, UAB (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 14, 2023.
On April 14, 2023, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On April 18, 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 (Domain Admin, Privacy Protect LLC (PrivacyProtect.org)) and
contact information in the Complaint. The Center sent an email communication to the Complainant on April
18, 2023, 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
April 21, 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 the Respondent of the Complaint, and the proceedings commenced on April 28, 2023. In accordance with the Rules, paragraph 5, the due date for Response was May 18, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 23, 2023.
The Center appointed Benoit Van Asbroeck as the sole panelist in this matter on May 31, 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.
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4. Factual Background
The Complainant is a full-service international law firm and owner of, inter alia, the following trademarks:
| - | International Trademark No. 2484418 for PINSENT MASONS, registered on April 30, 2008, in International Classes 9, 16, 35, 36, 41, and 45; |
| - | European Union Trademark No. 006819197 for PINSENT MASONS, registered on November 26, 2008, in International Classes 9, 16, 35, 36, 41, and 45; |
| - | United Kingdom Trademark No. UK00906819197 for PINSENT MASONS, registered on November 26, 2008, in International Classes 9, 16, 35, 36, 41, and 45. |
The Complainant also owns, inter alia, the domain name <pinsentmasons.com>, which resolves to its official website “ where it promotes and offers its services.
The disputed domain name was registered on January 11, 2023, well after the Complainant secured rights to
the abovementioned trademarks. The disputed domain name does not currently resolve to an active
website.
5. Parties’ Contentions
A. Complainant
The Complainant asserts that each of the three elements specified in paragraph 4(a) of the Policy are present. The three elements being: (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.
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights.
The Complainant contends that the disputed domain name is identical or confusingly similar to its
trademarks since it incorporates the PINSENT MASONS mark in its entirety. Furthermore, the Complainant
asserts that a domain name which consists of a common, obvious, or intentional misspelling of a trademark
is considered by UDRP panels to be confusingly similar to the relevant mark for purposes of the first
element. Moreover, a misspelling in this way signals an intention on the part of the Respondent to confuse
users seeking or expecting the Complainant. Finally, the fact that the Respondent registered the name using
the generic Top-Level Domain (“gTLD”) suffix “.com” causes further confusion given that the Complainant's
core market is offering legal related services to a wide range of users located in various countries throughout
the world.
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant claims that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant confirms that the Respondent is in no way associated with the Complainant and has not been authorized to use the Complainant’s trademarks. Furthermore, the Complainant contends that there is no evidence of the Respondent’s use of 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 Complainant points out that the Respondent is not using the disputed domain name or making demonstrable preparations to use it.
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(iii) The disputed domain name has been registered and is being used in bad faith.
The Complainant contends that the disputed domain name has been registered and is being used in bad faith. The Complainant claims that the Respondent had or should have had knowledge of the Complainant’s trademarks and business at the time when it registered the disputed domain name. Furthermore, the Complaint asserts that the passive holding of the disputed domain name amounts to bad faith use since it is difficult to imagine any plausible future active use of the disputed domain name by the Respondent that would be legitimate. Finally, the Respondent claims that the Respondent’s concealment of its identity is a further indicator of bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Panel finds that it has jurisdiction to hear this dispute as the Policy has been incorporated by reference into the registration agreement between the Registrar and the Respondent.
The Panel notes that while the Respondent has been duly notified, it did not reply to the Complainant’s contentions within the time period established by the Rules. Pursuant to paragraph 14 of the Rules the Panel shall nonetheless proceed to a decision on the Complainant’s Complaint and it may draw such
inferences from the Respondent’s failure to respond as it considers appropriate.
Paragraph 4(a) of the Policy requires that in order for its Complaint to succeed, the Complainant must prove that the following three elements are present:
(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.
The above three elements will each be discussed in further detail below.
A. Identical or Confusingly Similar
The Complainant is required to establish: (1) that it owns rights in a trademark or service mark, and, if so, (2) that the disputed domain name is identical or confusingly similar to its trademarks.
Firstly, the Panel finds that the Complainant has clearly evidenced that it owns registered trademark rights to PINSENT MASONS. The Panel is satisfied with the evidence provided in support of the existence of trademarks for PINSENT MASONS. It should be noted that paragraph 4(a)(i) of the Policy does not set minimum requirements as to the jurisdictions of the trademarks a complainant relies on, nor as to the number, nature or scope of protection of such trademarks.
Secondly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademarks. The Panel agrees that the disputed domain name is virtually identical to the Complainant’s abovementioned registered trademarks since the only difference is the addition of the letter
“r”. The PINSENT MASONS mark is therefore clearly recognizable in a side-by-side comparison with the
disputed domain name and the Panel agrees with the Complainant that this is a clear case of “typosquatting”
since the disputed domain name is a slight misspelling of the Complainant’s registered trademark (see
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section 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO
Overview 3.0”)).
Finally, as for the applicable gTLD, i.e., the suffix “.com”, the Panel holds that this can be disregarded under
the first element confusing similarity test (section 1.11 of the WIPO Overview 3.0; CANAL + FRANCE v.
Franck Letourneau, WIPO Case No. DTV2010-0012; Bentley Motors Limited v. Domain Admin / Kyle
Rocheleau, Privacy Hero Inc., WIPO Case No. D2014-1919; and SAP SE v. Mohammed Aziz Sheikh,
Sapteq Global Consulting Services, WIPO Case No. D2015-0565).
On the basis of the foregoing findings, and according to paragraph 4(a)(i) of the Policy, this Panel finds and concludes that the disputed domain name is confusingly similar to the Complainant’s trademarks.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy non-exhaustively lists three circumstances that shall demonstrate rights or legitimate interests:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved
based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the
domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name,
even if you have acquired no trademark or service mark rights; or
(iii) you are 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.”
It is a well-established view of UDRP panels, with which the Panel agrees, that a prima facie case advanced by a complainant is generally sufficient to satisfy the requirements under paragraph 4(a)(ii) of the Policy, and the burden of production shifts to the respondent to provide relevant evidence demonstrating rights or
legitimate interests in the disputed domain name (section 2.1 of the WIPO Overview 3.0; AGUAS DE
CABREIROA, S.A.U. v. Hello Domain, WIPO Case No. D2014-2087; Spigen Korea Co., Ltd., Spigen Inc. v.
Domain Admin, Whois Privacy Corp., WIPO Case No. D2016-0145; and HubSpot, Inc. v. WhoisGuard
Protected, WhoisGuard, Inc. / Steve Johnson, WIPO Case No. D2016-1338).
The Panel notes that the Respondent has not responded to any of the Complainant’s contentions, let alone submitted evidence to the contrary, and that, pursuant to paragraph 14 of the Rules, the Panel may draw such inferences from the Respondent’s failure to respond as it considers appropriate. In the present case, taking into consideration the Respondent’s default, this Panel finds that the Complainant has made out an unrebutted prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, in view of the circumstances of this case, including the following factors.
The Panel agrees with the Complainant that there is no evidence that the Respondent is using the disputed domain name could reasonably be claimed (see, e.g., Sportswear Company S.PA. v. Tang Hong, WIPO
domain name in connection with a bona fide offering of goods or services. The fact that the disputed domain
name does not currently resolve to an active website indeed supports this. In addition, the Complainant
confirmed that the Respondent is not affiliated with the Complainant in any way nor has the Complainant
licensed, authorized, or permitted the Respondent to register domain names incorporating the Complainant’s
trademarks. The Panel has taken note of the Complainant’s confirmation in this regard and has not seen
any evidence that would suggest the contrary. In the absence of any license or permission from the
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Case No. D2014-1875; and LEGO Juris A/S v. DomainPark Ltd, David Smith, Above.com Domain Privacy,
Transure Enterprise Ltd, Host master, WIPO Case No. D2010-0138).
For all the foregoing reasons, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy non-exhaustively lists four circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of the domain name in bad faith:
“(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such
conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a
competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet
users to your web site 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 your web site or location or of a product or
service on your web site or location.”
The Panel finds that the circumstances and evidence presented by the Complainant offer sufficient proof that both the Respondent’s registration and current use of the disputed domain name are in bad faith.
The Panel believes that the Respondent knew or, at least, should have known at the time of registration that the disputed domain name included the Complainant’s abovementioned trademarks. Prior panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. WIPO Overview 3.0, section 3.1.4.
The Panel finds that bad faith registration and use is further demonstrated by the fact that the disputed domain name is a clear example of “typosquatting”. As mentioned under the first element, the disputed domain name only differs one letter from the Complainant’s PINSENT MASONS trademarks: the letter “r”
has been added, meaning registration of the disputed domain name has clearly been done to attract Internet users by creating a likelihood of confusion with the Complainant’s trademarks. This, in combination with the Respondent’s clear absence of rights or legitimate interests in the disputed domain name, is another
indicator of bad faith (see Id.; e.g. Estée Lauder Inc. v. estelauder.com, estelauder.net and Jeff Hanna, WIPO Case No. D2000-0869; Go Daddy Software, Inc. v. Daniel Hadani, WIPO Case No. D2002-0568; Sanofi-aventis v. Elizabeth Riegel and Andrew Riegel, WIPO Case No. D2005-1045; and Randstad Holding
nv v. Pinaki Kar, WIPO Case No. D2013-1796).
In addition, the Panel finds that the doctrine of passive holding applies here. It is a well-established view of UDRP panels, including in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, and Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574, that the non-use of a domain name does not prevent a finding of bad faith. The Panel agrees with this view and finds that the fact that the disputed domain name is a clear example of “typosquatting” makes it implausible that the disputed domain name will be put to any good faith use in the future. The Panel agrees with the Complainant that there is also no evidence of any actual or intended use of the disputed domain name in good faith. Finally, the fact
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that, as shown by the Complainant, the Respondent has concealed its identity only further supports a finding
of bad faith use.
In light of the above, the Panel finds that the disputed domain name was registered and is being used by the
Respondent 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, <pinsentrmasons.com>, be transferred to the Complainant.
/Benoit Van Asbroeck/
Benoit Van Asbroeck
Sole Panelist
Date: June 14, 2023
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