Singh & Singh Law Firm LLP and MKS IP Assets Private Limited v; Muhammad Irfan

WIPO Case No. D2023-2495

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Singh & Singh Law Firm LLP and MKS IP Assets Private Limited v.
Muhammad Irfan

Case No. D2023-2495

1. The Parties

Complainants are Singh & Singh Law Firm LLP, India, and MKS IP Assets Private Limited, India, represented by Singh and Singh Law Firm LLP, India.

Respondent is Muhammad Irfan, Saudi Arabia.

2. The Domain Name and Registrar

The disputed domain name <singhandsingh.org> (the “Domain Name”) is registered with GoDaddy.com,

LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 8, 2023. On June 8, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 9, 2023, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the 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 Complainants on June 12, 2023, providing the registrant and contact information disclosed by the Registrar, and inviting Complainants to submit an amendment to the Complaint. Complainants filed an amendment to the Complaint on June 14, 2023.

The Center verified that the Complaint together with the amendment to the 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 June 19, 2023. In accordance with the Rules, paragraph 5(a), the due date for Response was July 9, 2023. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 10, 2023.

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The Center appointed Marina Perraki, Pravin Anand, and Luca Barbero as panelists in this matter on 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

First Complainant, Singh & Singh Law Firm LLP, is a registered LLP and a law firm, having its principal office in New Delhi, India. First Complainant is an established and internationally renowned law firm providing services in different areas of law for more than two decades under the mark SINGH & SINGH. Per Complaint, the mark SINGH & SINGH has been in continuous and uninterrupted use since 1997. The website of First Complainant operates at “

Second Complainant owns trademark registrations for SINGH & SINGH, including the Indian trademark
registration no 1408313, SINGH & SINGH Advocates (figurative), filed on December 22, 2005 and registered
for services in international class 42; and the Indian trademark registration no 1860364, SINGH & SINGH
(figurative), filed on September 9, 2009 and registered for services in international class 42. First

Complainant is a permissive user of these trademarks.

Complainants also own the domain name registration <singhandsingh.com>, registered on March 24, 2000.

The Domain Name was registered on April 7, 2022, by Respondent and was used to create an email address and send fraudulent emails with legal notices impersonating First Complainant. Furthermore, the Domain Name was used to create a website which at the time of filing of the Complaint redirected to the website of First Complainant. Currently the Domain Name leads to an inactive website.

In particular, as Complainants demonstrated, fraudulent emails were sent by Respondent, impersonating users. In these emails, Respondent impersonating First Complainant, was putting the recipients on notice for alleged copyright infringement and was using the registered trademarks of Complainants in the footers of the emails as well as Complainants’ SINGH & SINGH registered logo. The email signatures contained the actual phone numbers of First Complainant’s Delhi Office and a website address under the Domain Name, which redirected to First Complainant’s website. They were signed by a person appearing as “Anita Singh, Advocate High Court of Mumbai”. In the email signature, the law firm name “Singh and Singh Malhotra and Hedge” as well as an address in Mumbai appeared. Per Complaint, in the year 2017, Complainants had entered into an agreement with “Malhotra and Hegde” to use the mark “Singh & Singh” for an office at Mumbai. The name of the law firm was “Singh & Singh Malhotra & Hedge”. The association of Complainants with Malhotra and Hegde ended in March 2022, namely shortly before the registration of the Domain Name, and this law firm is now dissolved.

5. Parties’ Contentions

A. Complainants

Complainants assert that they have established all three elements required under paragraph 4(a) of the

Policy for a transfer of the Domain Name.

B. Respondent

Respondent did not reply to the Complainants’ contentions.

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6. Discussion and Findings

Paragraph 4(a) of the Policy lists three elements, which Complainant must satisfy with respect to the Domain
Name:

(i)        the 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 Domain Name; and

(iii)      the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Domain Name consists of the SINGH & SINGH trademark almost in its entirety (the ampersand, which is a shorthand symbol for “and”, having been replaced with the word “and”).

The Top-Level Domain (“gTLD”) “.org” is disregarded, as TLDs typically do not form part of the comparison
on the grounds that they are required for technical reasons only (Rexel Developpements SAS v. Zhan

Yequn, WIPO Case No. D2017-0275).

The Panel finds that the Domain Name is essentially identical with the SINGH & SINGH trademark of

Complainants.

Complainants have established Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the
Domain Name, among other circumstances, by showing any of the following elements:

(i)        before any notice to Respondent of the dispute, Respondent’s 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)       Respondent (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)      Respondent is 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.

The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name.

Respondent has not submitted any response and has not claimed any such rights or legitimate interests with respect to the Domain Name. As per Complainants, Respondent was not authorized to register the Domain Name.

Respondent has not demonstrated any preparations to use, or has not used the Domain Name or a trademark corresponding to the Domain Name in connection with a bona fide offering of goods or services.

On the contrary, as Complainants demonstrated, Respondent used the Domain Name for the purpose of initiating a fraudulent scheme, namely to send deceptive emails with purported legal notices to third parties impersonating First Complainant for the only purpose of a scam. The use of the Domain Name for an illegal activity such as constructing an email composition containing the Domain Name for deceiving purposes

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L’Oréal vCimpress Schweiz GmbH

cannot confer rights or legitimate interests on Respondent (. , WIPO Case was contained in the fraudulent emails, which redirected to First Complainant’s official website.

The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Name.

Complainants have established Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in “bad faith”:

(i)        circumstances indicating that respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the domain name; or

(ii)       that respondent has 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 respondent has engaged in a pattern of such conduct; or

(iii)      that respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv)      that by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website or other online location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of respondent’s website or location or of a product or service on respondent’s website or location.

The Panel concludes that Respondent has registered and used the Domain Name in bad faith.

Because Complainants’ mark enjoys reputation in its sector and had been used and registered by
Complainants more than twenty years before the Domain Name registration, noting also the use made of the
Domain Name, it is clear that Respondent had Complainants’ mark in mind when registering the Domain
Name. As Complainants demonstrated, Respondent used the Domain Name to create an email address
and send fraudulent emails to third parties impersonating First Complainant (Arla Foods Amba v. Michael
Guthrie, M. Guthrie Building Solutions, WIPO Case No. D2016-2213).

Furthermore, the Domain Name incorporates essentially in whole Complainants’ SINGH & SINGH mark and is identical to Complainants domain name <singhandsingh.com>, except for the TLD. This further indicates that Respondent knew of Complainants and chose the Domain Name with knowledge of Complainants.

As regards bad faith use, Complainants demonstrated that the Domain Name was used to create an email address and send deceptive emails with legal notices to third parties, impersonating First Complainant. Use of a domain name for purposes other than to host a website may constitute bad faith. Such purposes include sending deceptive emails, phishing or identity theft (Arla Foods Amba v. Michael Guthrie, M. Guthrie Building Solutions, supra; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 3.4).

Furthermore, per Complainants, the Domain Name redirected to the website of First Complainant. registered the Domain Name to attract, for commercial gain, Internet users to its website by creating a

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likelihood of confusion with Complainants’ mark (Marie Claire Album v. Whoisguard Protected, Whoisguard,

Inc. / Dexter Ouwehand, DO, WIPO Case No. D2017-1367; WIPO Overview 3.0, section 3.1.4).

Last, the Panel considers also the apparent concealment of the Domain Name holder’s identity through use
of a privacy shield at the time of filing the Complaint, to be further indicative of bad faith (BHP Billiton

Innovation Pty Ltd v. Domains By Proxy LLC / Douglass Johnson, WIPO Case No. D2016-0364).

The Domain Name currently leads to an inactive website. The non-use of a domain name does not prevent
a finding of bad faith (See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No.

D2000-0003; WIPO Overview 3.0, section 3.3).

Under these circumstances and on this record, the Panel finds that Respondent registered and used the

Domain Name in bad faith.

Complainants have established Policy, paragraph 4(a)(iii).

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 Domain Name <singhandsingh.org> be transferred to Complainants.

/Marina Perraki/ Marina Perraki Presiding Panelist

/Pravin Anand/ Pravin Anand Panelist

/Luca Barbero/
Luca Barbero
Panelist
Date: August 11, 2023