Taylor Wessing Limited Liability Partnership v Name Redacted
WIPO Case No. D2022-4727
•30-01-2023
ARBITRATION
AND
| MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
Taylor Wessing Limited Liability Partnership v. Name Redacted
Case No. D2022-4727
1. The Parties
The Complainant is Taylor Wessing Limited Liability Partnership, United Kingdom, 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 <taylorwwessing.com> is registered with Google LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 9,
2022. On December 9, 2022, the Center transmitted by email to the Registrar a request for registrar
verification in connection with the disputed domain name. On December 10, 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 (Privacy Inc. Customer 7151571251) and contact
information in the Complaint. The Center sent an email communication to the Complainant on December 13,
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
December 14, 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”).
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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 December 16, 2022. In accordance with the Rules, paragraph 5, the due date for Response was January 5, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 10, 2023.
The Center appointed Cherise Valles as the sole panelist in this matter on January 16, 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 major international law firm, with over 1,100 lawyers in 17 locations.
The Complainant owns over 15 trademark registrations containing the name TAYLOR WESSING (“trademark”). These include Untied States of America trademark registration number 2941089 for the word mark TAYLOR WESSING, covering pamphlets in the field of business management, publication of books, and legal services in classes 16, 41 and 42 (among other goods and services), registered on April 19, 2005; and European Union registration number 002727519 for the word mark TAYLOR WESSING, covering business management, taxation services, and legal services in classes 9, 16, 35, 36, 38, 41 and 42 (among other goods and services), registered on March 31, 2004 (Annex 7 to the Complaint).
The disputed domain name was registered by the Respondent on November 21, 2022.
At the time of filing of the Complaint, the disputed domain name resolvedto an inactive website (Annex 8 to the Complaint). The disputed domain name remains inactive at the time of the decision.
5. Parties’ Contentions
A. Complainant
The Complainant asserts that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisfied. In particular, the Complainant asserts that:
The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
| - | The disputed domain name is confusingly similar to the Complainant’s registered TAYLOR WESSING trademark, in the light of the fact that it wholly incorporates the Complainant’s mark. |
The Respondent lacks rights or legitimate interests in the disputed domain name.
| - | The Complainant states that the Respondent should be considered as having no rights or legitimate interests in the disputed domain name. The Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name that included its trademarks. |
The Complainant asserts that the disputed domain name was registered and is being used in bad faith.
- The mere fact of registration of a domain name that is confusingly similar or identical to a famous
trademark by an entity that has no relationship to that mark is itself evidence of bad faith registration
and use. The Complainant also alleges that that the Respondent used the disputed domain name on at
least one occasion in an unlawful, fraudulent email scam.
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The Complainant requests the Panel to issue a decision finding that the disputed domain name be transferred to the Complainant, in accordance with paragraph 4(i) of the Policy.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In terms of paragraph 4(a) of the Policy, for a Complaint to succeed, the Complainant must prove each of the following elements:
(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 Respondent has failed to file a Response in this proceeding. The Panel may draw appropriate inferences from the available evidence submitted by the Complainant.
A. Identical or Confusingly Similar
To prove this element, the Complainant must have relevant rights in a trademark and the disputed domain name must be identical or confusingly similar to such trademark.
The Complainant submits that the disputed domain name is confusingly similar to the trademark in which it has rights. The disputed domain name incorporates the TAYLOR WESSING trademark in its entirety, with the additional letter “w” inserted after “taylor”. Given the Complainant’s trademark registrations as detailed above, the Panel finds that the Complainant has established its trademark rights in TAYLOR WESSING for the purposes of paragraph 4(a)(i) of the Policy.
As noted above, the disputed domain name incorporates the said trademark in its entirety with the addition of the letter “w”. As stated in section 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “[a] domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element”. Thus, the addition of the letter “w” in the disputed domain name does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s TAYLOR WESSING trademark.
It is standard practice when comparing a disputed domain name to a complainant’s trademark not to take the Top-Level Domain (“TLD”) into account. See section 1.11.1 of the WIPO Overview 3.0, which states that the “applicable [TLD] in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration
requirement and as such is disregarded under the first element of the confusing similarity test”. In the
present case, the TLD “.com,” is disregarded under the first element of the confusing similarity test.
In the light of the foregoing, the Panel finds that the disputed domain name is confusingly similar to the
Complainant’s registered trademark and that the Complainant has met its burden with respect to paragraph
4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a non-exhaustive set of circumstances, any of which, if found by the
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Panel to be proved based on its evaluation of all evidence presented, shall demonstrate a respondent’s rights or legitimate interests to a domain name for the purposes of paragraph 4(a)(ii) of the Policy, namely:
“[a]ny 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 non-commercial 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 Respondent did not submit a Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, whether on the basis of the non-exhaustive examples set out in paragraph 4(c) of the Policy or on any other basis, and the Panel draws inferences from this failure, where appropriate, in accordance with paragraph 14(b) of the Rules.
It is recognised in cases under the Policy that it is sufficient for a complainant to make a prima facie case under the second element of the Policy, not rebutted by the respondent, that the respondent has no rights or legitimate interests in the domain name concerned (See, for example, Paris Saint-Germain Football v. Daniel Macias Barajas, International Camps Network, WIPO Case No. D2021-0019; Spinrite Inc. v. WhoisGuard, Inc. / Gabriella Garlo, WIPO Case No. D2021-0012, and the discussion in section 2.1 of the WIPO Overview 3.0). If a respondent fails to rebut such a prima facie case by demonstrating rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy, or on any other basis, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Complainant asserts that the Respondent is unable to invoke any of the circumstances set out in paragraph 4(c) of the Policy in order to demonstrate rights or legitimate interests in the disputed domain name. In particular, it argues that the Respondent cannot assert that, prior to any notice of this dispute, it was using, or had made demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services in accordance with paragraph 4(c)(i) of the Policy. None of these allegations were rebutted by the Respondent.
On the evidence before the Panel, it appears that there has never been any relationship between the Complainant and the Respondent. The Respondent does not seem to be licensed, or otherwise authorized, be it directly or indirectly, to register or use the Complainant’s TAYLOR WESSING trademark in any manner, including in, or as part of, the disputed domain name. There is no evidence of the Respondent’s use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. There is no evidence that the Respondent has been commonly known by the disputed domain name, and there is no evidence that the Respondent is, or could be, making any legitimate noncommercial or fair use of the disputed domain name, especially since the disputed domain name is not actively used by the Respondent, and has been used for sending fraudulent emails as discussed further below.
In light of the foregoing, the Panel finds that the Complainant has established an unrebutted prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and concludes that paragraph 4(a)(ii) of the Policy is satisfied.
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C. Registered and Used in Bad Faith
For this element, the Complainant is required to prove that the disputed domain name was registered and is
being used in bad faith. The term “bad faith” is “broadly understood to occur where a respondent takes
unfair advantage of, or otherwise abuses, a complainant’s mark”. See section 3.1 of the WIPO Overview
3.0. Paragraph 4(b) of the Policy sets out four non-exhaustive examples of circumstances which, if found by
the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith, namely:
(i) circumstances indicating that the respondent registered or 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 the documented out-of-pocket costs directly related to the domain name; or
(ii) the 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
Previous UDRP panels have found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. See section 3.1.4 of the WIPO Overview 3.0.
1) Registration in bad faith
Given the well-known nature of the Complainant’s TAYLOR WESSING trademark, it is implausible that the name.
Bad faith can be found where a respondent “knew or should have known” of a complainant’s trademark
rights but nevertheless registered a particular domain name in which it has no rights or legitimate interests
(See Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320; The
Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113).
As noted by the Complainant, it has been ranked consistently for years in various legal ratings guides, including Chambers Global, Legal 500 UK and Legal 500 Deutschland.
The composition of the disputed domain name is virtually identical to the Complainant’s well-known trademark. The fact that the disputed domain name incorporates the Complainant’s trademark TAYLOR WESSING with the additional letter “w” inserted after “taylor” indicates that the Respondent registered the disputed domain name in order to be able to make fraudulent approaches to innocent third parties, as discussed below. Prior UDRP panels have held that bad faith can be found where a domain name is so obviously connected with a well-known trademark that its very use by someone with no connection to the trademarks suggests opportunistic bad faith (See LEGO Juris A/S v. store24hour, WIPO Case No. D2013-0091). Given the strong reputation and distinctiveness of the Complainant’s trademark, registration in bad faith can be inferred.
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As noted above, the Complainant’s trademark rights predate the registration date of the disputed domain name (Annex 7 to the Complaint). Knowledge of a corresponding trademark at the time of the registration of the domain name suggests bad faith (See Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270).
2) Use in bad faith
According to the evidence provided by the Complainant, the Respondent had used the disputed domain name to make fraudulent approaches to at least one innocent third party in an attempt to generate revenues.
The Complainant states that on December 7, 2022, a company received a fraudulent email from a person, using the email address […]@taylorwwessing.com, and purporting to be a “Debt Collection Litigation Counsel”. It alleges that the Respondent claimed to represent the Complainant in relation to an unpaid invoice. The Complainant claims that the Respondent used the email address […]@taylorwwessing.com to masquerade a person, who is an actual partner in the Private Client group for the Complainant in the United Kingdom. Thus, according to the Complainant, the disputed domain name was registered or acquired primarily for the purpose of using it to target third parties by way of “serious, unlawful and fraudulent email scams to elicit the third party into transferring funds”.
The disputed domain name currently resolves to an inactive page. The Complainant contends that the
Respondent has not demonstrated any activity in respect of the disputed domain name, and it is not possible
to conceive of any plausible actual or contemplated active use of the disputed domain name by the
Respondent that would not be illegitimate under the Policy. Prior UDRP panels have held that the
incorporation of a famous mark in a domain name, coupled with an inactive website, may be evidence of bad
faith registration and use under the doctrine of passive holding (see Telstra Corporation Limited v. Nuclear
Marshmallows, WIPO Case No. D2000-0003; CBS Broadcasting, Inc. v. Dennis Toeppen, WIPO Case No.
D2000-0400).
The Respondent has not participated in the administrative proceeding and has not answered the Complainant’s contentions. The fact that the Respondent has decided not to provide any legitimate explanation or to assert any alleged good faith motivation in respect of the registration and use of the disputed domain name in the face of the Complainant’s contentions can be regarded as an indicator of bad faith. See WIPO Overview 3.0, section 3.3.
Accordingly, the Panel concludes that the Complainant has satisfied its burden of showing bad faith registration and use of the disputed domain name under paragraph 4(a)(iii) of the Policy.
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 <taylorwwessing.com> be transferred to the Complainant.
/Cherise Valles/
Cherise Valles
Sole Panelist
Date: January 30, 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
Annex 1 to this decision shall not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v.
FAST‑12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788.
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