Pinsent Masons LLP v Name Redacted

WIPO Case No. D2023-1005

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Pinsent Masons LLP v. Name Redacted

Case No. D2023-1005

1. The Parties

The Complainant is Pinsent Masons LLP, United Kingdom (“UK”), internally represented.

The Respondent is Name Redacted.[1]

[1] The Respondent appears to have used the name of a third party when registering the Disputed Domain Name. In light of the potential

2. The Domain Name and Registrar

The disputed domain name <pinsenttmasons.com> (the “Disputed Domain Name”) is registered with Wild

West Domains, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 7, 2023.
On March 7, 2023, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the Disputed Domain Name. On March 8, 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 (Registration Private, Domains by Proxy, LLC) and contact
information in the Complaint. The Center sent an email communication to the Complainant on March 9,
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

March 13, 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”).

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In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the
Complaint, and the proceedings commenced on March 15, 2023. In accordance with the Rules, paragraph
5, the due date for Response was April 4, 2023. The Respondent did not submit any response. Accordingly,

the Center notified the Respondent’s default on April 6, 2023.

The Center appointed Gabriela Kennedy as the sole panelist in this matter on April 25, 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.

4. Factual Background

The Complainant is a multinational law firm specializing in construction, dispute resolution, outsourcing and
technology, corporate finance and intellectual property law. It has 26 offices across the Europe, the Gulf,
Asia Pacific and Africa. The Complainant is a result of a number of mergers. Prior to adopting its current
name “Pinsent Masons”, it has traded in the names of “Pinsent Curtis”, “Pinsent Curtis Biddle”, and

“Pinsents”.

The Complainant holds a number of trademark registrations in Classes 9, 16, 35, 36, 41, and 45 of the Nice
Classification for the word mark PINSENT MASONS around the globe (“the Complainant’s Trademark”).
The relevant trademarks include, inter alia, UK Trademark Registration No. UK00002484418 and
UK00906819197 registered on September 12, 2008 and November 26, 2008 respectively, European Union
Trademark Registration No. 006819197 registered on November 26, 2008, and International Trademark
Registration No. 977347 registered on April 30, 2008.

The Complainant’s Trademark is also fully incorporated in the Complainant’s domain name <pinsentmasons.com> initially registered on June 1, 2004. The Complainant’s domain name resolves to a website where the Complainant uses the Complainant’s Trademark and promotes its legal related goods and services.

The Disputed Domain Name was registered by the Respondent on February 27, 2023. The Disputed Domain Name resolves to a page that could not be reached due to the website’s DNS address not being found. According to the Complainant, the Disputed Domain Name was also used for sending fraudulent emails.

5. Parties’ Contentions

A. Complainant

The Complainant’s primary contentions can be summarized as follows:

(a)	The Disputed Domain Name is identical or confusingly similar to the Complainant’s Trademark. The Disputed Domain Name contains a misspelling of the Complainant’s Trademark yet it still incorporates sufficiently recognizable aspects of the Complainant’s Trademark.
(b)	The Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent has no right to use the Complainant’s Trademark as part of a domain name or otherwise. There is no evidence that the Respondent has operated an active website or is prepared to use the Disputed
Domain Name. The Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name.

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(c) Both the Respondent’s registration of and its use of the Disputed Domain Name establish its bad faith. Given the widespread reputation of the Complainant, the Respondent must have been fully aware of the existence of the Complainant’s rights in the Complainant’s Trademark when the Respondent registered and used the Disputed Domain Name. The Respondent used a privacy shield to mask its identity. Moreover, the Respondent uses an email address linked to the Disputed Domain Name to impersonate a Managing Partner of the Complainant’s organization and demand payment for an allegedly unpaid invoice. It is obvious that the Respondent intended to imply a connection with the Complainant. Therefore, it is clear the Respondent has registered and is using the Disputed Domain Name in bad faith.

B. Respondent

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

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:

(i)        The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(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 by the Respondent in bad faith.

A. Identical or Confusingly Similar

The Complainant is the owner of various trademark registrations for the Complainant’s Trademark, as well as a domain name containing the Complainant’s Trademark, all registered and used in relation with legal services.

The Disputed Domain Name involves a misspelling of the Complainant’s Trademark by adding a “t” between “pinsent” and “masons”. This is an obvious and intentional misspelling, and the Disputed Domain Name still contains a sufficiently recognizable aspect of the Complainant’s Trademark and hence amounts to

typo-squatting. See section 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Furthermore, it is well established that the generic Top-Level Domain (“gTLD”), “.com” in this case, may be disregarded. See section 1.11 of the WIPO Overview 3.0.

Consequently, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s

Trademark, and accordingly, paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

The Panel accepts that the Complainant has not authorized the Respondent to use the Complainant’s Trademark. There is no relationship between the Complainant and the Respondent which would otherwise entitle the Respondent to use the Complainant’s Trademark. Accordingly, the Panel is of the view that a prima facie case has been established by the Complainant and it is for the Respondent to show rights or legitimate interests in the Disputed Domain Name.

Once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent in a disputed domain name, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the disputed domain name. Where the respondent fails to do so, a

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complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See section 2.1 of the WIPO
Overview 3.0.

The Respondent did not submit any Response. The fact that the Respondent did not submit any Response does not automatically result in a decision in favor of the Complainant. However, the Respondent’s failure to file a Response may result in the Panel drawing appropriate inferences from such default. The Panel may also accept all reasonable and supported allegations and inferences flowing from the Complainant as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437; and Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403).

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the
Disputed Domain Name by demonstrating any of the following:

(i)        Before any notice to her of the dispute, the Respondent’s 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; or

(ii)       The Respondent has been commonly known by the Disputed Domain Name, even if the Respondent has acquired no trademark or service mark rights; or

(iii)      The Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Panel agrees with the Complainant that there is no evidence to show that the Respondent has trademark rights corresponding to the Disputed Domain Name, or that the Respondent has become known by the Disputed Domain Name.

There is no evidence to suggest that the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name, is in connection with a bona fide offering of goods or services. The Disputed Domain Name resolves to an inactive website and was used to send fraudulent emails. Accordingly, the Panel agrees with the Complainant that the Respondent’s use of the Disputed Domain Name cannot constitute a bona fide offering of goods or services, or be regarded as legitimate noncommercial or fair use. The Panel also notes the nature of the Disputed Domain Name, which consists of an almost imperceptible misspelling of the Complainant’s Trademark, signals the Respondent’s intention to confuse users who are searching for the Complainant.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain

Name and the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

UDRP panels have consistently found that the mere registration of a domain name that is confusingly similar to a widely-known trademark by an unaffiliated entity can already by itself create a presumption of bad faith. See section 3.1.4 of the WIPO Overview 3.0.

After reviewing the supporting evidence submitted by the Complainant, the Panel agrees with the Complainant that the Complainant’s Trademark appears to be well known. A quick Internet search conducted by the Panel shows that the top search results returned for the keyword “Pinsent Masons” are the Complainant’s website and third-party websites providing information about the Complainant and/or its business. Therefore, the Panel agrees that the Respondent must have been aware of the Complainant and its rights in the Complainant’s Trademark when registering and using the Disputed Domain Name.

The Panel also agrees with the Complainant that the following factors support a finding that the Disputed
Domain Name was registered and has been used by the Respondent in bad faith:

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(i)        The Respondent has intentionally attempted to create a likelihood of confusion with the Complainant’s Trademark by misspelling it. The Respondent also used the Disputed Domain Name to send fraudulent emails demanding payments to third parties. The messages indicated the sender as a Managing Partner in the Complainant’s organization; and

(ii)       The Respondent registered the Disputed Domain Name using a privacy shield to conceal its identity (see Primonial v. Domain Administrator, PrivacyGuardian.org / Parla Turkmenoglu, WIPO Case No. D2019-0193).

(iii)      The Respondent failed to respond to the Complainant’s contentions and has provided no evidence of any actual or contemplated good faith use of the Disputed Domain Name. This further supports a finding of bad faith registration and use of the Disputed Domain Name.

In the circumstances, the Panel finds that the Respondent registered and has been using the Disputed

Domain Name in bad faith, and paragraph 4(a)(iii) of the Policy has been 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 <pinsenttmasons.com> be transferred to the Complainant.

/Gabriela Kennedy/
Gabriela Kennedy
Sole Panelist
Date: May 11, 2023

identity theft, the Panel has redacted the Respondent’s name from this decision. However, the Panel has attached as Annex 1 to this
decision an instruction to the Registrar regarding transfer of the Disputed Domain Name, which includes the name of the Respondent.
The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated that
Annex 1 to this decision shall not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v.
FAST12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788.