WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Berwin Leighton Paisner LLP v. VistaPrint Technologies Limited

Case No. D2015-1826

1. The Parties

The Complainant is Berwin Leighton Paisner LLP of London, United Kingdom of Great Britain and Northern Ireland, self-represented.

The Respondent is VistaPrint Technologies Limited of Hamilton, Bermuda, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <blplaw.org> is registered with Tucows Inc. (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 13, 2015. On October 13, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that 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 the Respondent of the Complaint, and the proceedings commenced on October 19, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 8, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 9, 2015.

The Center appointed Antony Gold as the sole panelist in this matter on November 17, 2015. 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.

The Complainant confirms that no other legal proceedings have been commenced or terminated in connection with the disputed domain name.

The language of the proceedings is English.

4. Factual Background

The Complainant is an international law firm with its headquarters in London, United Kingdom of Great Britain and Northern Ireland. It has offices around the world and provides a range of commercially orientated legal services to its clients globally, which include multinational corporations and governments. Its full legal name is frequently shortened by the Complainant, the press and other third parties to the acronym "BLP".

The Complainant has an extensive international trade mark portfolio. This includes Community Trade Mark registration number 5221965 for BLP, registered on August 28, 2008 and Community Trade Mark registration number 5222741 for BLPLAW, registered on January 11, 2008. The Complainant also owns a United States of America trade mark registration for BLP (number 4,008,051, registered on August 9, 2011) and a further United States of America trade mark registration for BLPLAW (number 4,082,052, registered on August 9, 2011).

The disputed domain name <blplaw.org> was registered on August 3, 2015. The WhoIs details for the disputed domain name indicate that the Respondent is a limited company based in Bermuda.

As at September 23, 2015, the disputed domain name resolved to a website that is largely inactive. It features the name "Vistaprint" and the strapline "Make an impression". After these words is a claim that "Websites are FREE at vistaprint.com/websites". The reference to the vistaprint website address is in the form of a hypertext link which, if clicked on, takes Internet users to an active website operating from "www.vistaprint.com".

5. Parties' Contentions

A. Complainant

(i) The disputed domain name is identical or confusingly similar to the Complainant's Trade Marks

The Complainant outlines its history, its commercial operations around the world and its reputation. It says that it is commonly known by the acronym "BLP" and claims worldwide repute in this trading style.

The Complainant provides details of its registered trade mark rights in BLP and BLPLAW in multiple jurisdictions, examples of which are referred to above. It says that the disputed domain name wholly incorporates the Complainant's BLPLAW trade marks. The Complainant refers to the guidance provided in the WIPO Overview of Panel Decisions on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") which states that the threshold test for confusing similarity is that the relevant trade mark generally needs to be recognizable as such from within the disputed domain name. The Complainant says that there can be no doubt that the disputed domain name wholly incorporates the Complainant's trade marks.

The Complainant contends that the disputed domain name is identical to its BLPLAW trade marks and confusingly similar to its BLP trade marks. It says that, if the generic Top-Level Domain ("gTLD") suffix is ignored, the disputed domain name is identical to that used by the Complainant for its principal website at "www.blplaw.com", which was registered in January 2001. The addition of the ".org" suffix is, the Complainant asserts, insufficient to avoid confusing similarity between the Complainant's trade marks and the disputed domain name.

(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name

The Complainant contends that the Respondent has no rights or legitimate interest in the disputed domain name. The Complainant draws attention to the decision of the panel in Accor v Eren Atesmen, WIPO Case No. D2009-0701, which found that, once a complainant has established a prima facie case that a respondent lacks rights or legitimate interests in a disputed domain name, the burden falls upon the respondent to come forward with appropriate evidence demonstrating its rights or legitimate interests in respect of that domain name.

The Complainant says that it has not authorized, licensed or otherwise given its permission to the Respondent to make use of its trade marks and that there is no reason to believe that the Respondent has ever been known by, or has operated under, either the name "BLP" or "BLPLAW" or has any other rights or legitimate interests in the disputed domain name. In this respect, the Complainant points out that clicking on the link at the website to which the disputed domain name resolves forwards the user to what appears to be the Respondent's actual business, which is known as VistaPrint.

Having regard to all of the above, the Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name.

(iii) The disputed domain name was registered and is being used in bad faith

The Complainant points out that, before the date of registration of the disputed domain name, it had been using its website at "www.blplaw.com" for some 14 years and that the registration of its Community Trade Marks for BLP and BLPLAW pre-dates the registration of the disputed domain name by approximately 7 years. It says that it is inconceivable that the Respondent did not know of the Complainant's longstanding reputation in its BLP and BLPLAW trade marks as at the date of registration and asserts that use to which the Respondent has put the disputed domain name provides clear evidence the Respondent registered it in bad faith.

The Complainant contends that the website to which the disputed domain name resolves simply features a logo and the name of the Respondent coupled with a link which redirects Internet users to what appears to be the Respondent's actual website. Accordingly, the Complainant says that the Respondent is using the disputed domain name to attempt to attract Internet users to its own website for commercial gain. The Complainant says that previous decisions under the Policy have established that using a domain name identical to a well-known or famous trade mark to intentionally divert Internet users from a complainant's true website demonstrates bad faith use under the Policy.

The use of a holding page at the website to which the disputed domain names resolves, the Complainant says, leads to the conclusion that the Respondent is holding the disputed domain name with the intention of making use of it in the future in a way that will take unfair advantage of the Complainant's rights and that this has also been found by previous UDRP decisions to be sufficient to warrant a finding of bad faith.

The Complainant further submits that it is established case law that incorporating a well-known trade mark wholesale into a domain name by a registrant, in the absence of any plausible reason to do so is accepted as an indication of bad faith. It refers to the decision of the panel in Intel Corporation v The Pentium Group, WIPO Case No. D2009-0273 which found that the inclusion of a well-known trade mark into a domain name by a registrant having no credible explanation for doing so may be, in and of itself, an indication of bad faith.

As further evidence of bad faith, the Complainant also refers to an email sent in August 2015 from an email address […]@blplaw.org claiming incorrectly that the Complainant's Managing Partner would soon be instructing the Complainant's Senior Management Accountant to process a wire transfer. The Complainant says that this indicates that the disputed domain name is being used for fraudulent activity. It asserts that previous UDRP decisions have found the use of a disputed domain name for fraudulent activity to be evidence of bad faith. The Complainant points to the decision of Haas Food Equipment GmbH v Usman ABD, Usmandel, WIPO Case No. D2015-0285, which stated that evidence of a disputed domain name being used to commit fraud against a complainant established that a domain name had been registered and used in bad faith.

Lastly the Complainant points to a pattern of conduct by the Respondent in registering domain names incorporating well-known trade marks and provides details of 13 decisions of UDRP panels between 2009 and 2015 which have found against the Respondent and ordered either the cancellation of the domain name in issue or its transfer to the complainant. The Complainant asserts that this repeated course of action by the Respondent demonstrates and reinforces grounds for a finding that it registered the disputed domain name in bad faith.

B. Respondent

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

6. Discussion and Findings

Paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, these Rules, the panel shall draw such inferences therefrom as it considers appropriate.

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order to succeed in its Complaint:

(i) that the disputed domain name is identical or confusingly similar to a trade 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 in bad faith.

A. Identical or Confusingly Similar

The Complainant's full legal name differs from its commonly adopted trading style. However, it is clear from the evidence submitted that the term "BLP" is frequently used by third parties and the Complainant itself to denote the Complainant and that "BLP" is distinctive of the Complainant in the field of legal services. Moreover, the Complainant has demonstrated that it is the owner of a number of trade marks for BLP and BLPLAW. These are sufficient to establish the Complainant's rights in both trade marks.

As previous UDRP panels have found, the gTLD suffix in a disputed domain name may be disregarded for the purpose of comparing similarity or identicality. On this basis, the disputed domain name is identical to the Complainant's trade mark for BLPLAW. The disputed domain name is also confusingly similar to the Complainant's BLP trade mark; the addition of "law" to "blp" is likely to accentuate the perceived connection with the Complainant, as a law firm, rather than to reduce it.

The Panel accordingly finds that that the disputed domain name is both identical to a trade mark in which the Complainant has rights and confusingly similar to a separate trade mark in which the Complainant also has rights.

B. Rights or Legitimate Interests

The only use by the Respondent of the term "blplaw" appears to be in the disputed domain name itself. There is no suggestion or evidence that the Respondent uses the term as a trading style or is commonly known by the name "blplaw" or that it has any registered or unregistered trade mark rights in either "blp" or "blplaw". The terms "blplaw" and "blp" have no apparent or obvious connection with the Respondent or the Respondent's website at "www.vistaprint.com". The use of the disputed domain name by the Respondent to redirect Internet users to its own VistaPrint website to promote its own commercial goods and services, does not amount to a legitimate interest in the disputed domain name.

Paragraph 4 (c) of the Policy sets out a number of circumstances that, if made out, may demonstrate a legitimate interest on the part of a respondent in a disputed domain name. There is no evidence before the Panel to suggest that any of these grounds might be made out by the Respondent. Moreover, the Complainant has made out a prima facie case that the Respondent has no legitimate interest in the disputed domain name. Accordingly the burden of production shifts to the Respondent to establish that it has rights or legitimate interests. The Respondent has not made any attempt to justify its registration by serving a Response to the Complaint and, as a consequence, there is no evidence before the Panel which might support its position.

The Panel therefore finds that the Respondent does not have rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

As the panel held in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, whether a domain name has been registered and used in bad faith depends on the factual background to each case and, in appropriate circumstances, even a passive holding of a domain name can amount to bad faith registration and use. The disputed domain name was registered approximately 14 years after the Complainant registered the domain name <blplaw.com> and approximately 7 years after it registered its Community Trade Marks for BLP and BLPLAW. Whilst the "law" component of the disputed domain name is generic in character, "blp" is distinctive and the likelihood of the Respondent having randomly registered the disputed domain name without any awareness of the Complainant and its activities is remote. The Panel finds that, as at the date of registration of the disputed domain name, the Respondent was aware of the Complainant and its business and, having regard to the use to which the Respondent put the disputed domain name, following registration, it was registered in bad faith.

Paragraph 4(b)(iv) of the Policy provides, in summary that registration and use of a domain name by a respondent for the purposes of attempting to attract, for commercial gain, Internet users to its website 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 its website amounts to bad faith registration and use. The Respondent has not put the disputed domain name to any bona fide use, but has merely used it to point to a substantially inactive website which redirects those users which click on the sole functioning link on that website to the Respondent's own website. This will generate at least some increased traffic to the Respondent's own website from Internet users who are, in fact, seeking the Complainant. It seems unlikely that much traffic will be diverted by this means but the available evidence suggests that the disputed domain name is being used by the Respondent for these purposes and it is reasonable to assume that it will have at least partial success in securing its objectives. The Respondent's activity therefore falls within the example of bad faith registration and use set out at paragraph 4(b)(iv) of the Policy.

Moreover, having regard to the 13 previous decisions under the Policy in which the Respondent has been a respondent, all of which have found against it, the Respondent's conduct falls within the scope of paragraph 4(b)(ii) of the Policy in that it has registered the disputed domain name in order to prevent the Complainant, as owner of its BLP and BLPLAW trade marks, from registering those marks in a corresponding domain name and, as evidenced by the 13 previous decisions against the Respondent, it has engaged in a pattern of such conduct.

The Panel accordingly finds that the disputed domain name was registered and is being used in bad faith.

Having made this finding on the grounds set out above, it is not necessary to consider the Complainant's additional submissions on bad faith registration and use.

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 <blplaw.org> be transferred to the Complainant.

Antony Gold
Sole Panelist
Date: December 1, 2015