WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Morgan, Lewis & Bockius LLP v. Name Redacted

Case No. D2018-1014

1. The Parties

The Complainant is Morgan, Lewis & Bockius LLP of Philadelphia, Pennsylvania, United States of America (“United States”), represented by CSC Digital Brand Services AB, Sweden.

The Respondent is Name Redacted.¹

2. The Domain Names and Registrar

The disputed domain names <moganlewisescrow.com> and <morganlewisescrow.com> are registered with Ascio Technologies Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 8, 2018. On May 8, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 17, 2018, 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 May 18, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 7, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 8, 2018.

The Center appointed Knud Wallberg as the sole panelist in this matter on June 12, 2018. 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 was founded in 1873 and is a global law firm offering a wide range of legal services to all major industries. The Complainant employs more than 2200 employees and has offices in a number of jurisdictions including in the United Kingdom of Great Britain and North Ireland (“United Kingdom”).

The Complainant is the owner of the trademark MORGAN LEWIS, which is registered for legal services on a global basis, including in the United Kingdom under registration number UK00002254892 registered on May 18, 2001.

Further, the Complainant has a strong Internet presence through its primary website “www.morganlewis.com”.

There is no information available about the Respondent except for the information provided for and the allegations made in the Complaint.

The disputed domain name <moganlewisescrow.com> was registered on March 13, 2018 and the disputed domain name <morganlewisescrow.com> was registered on March 14, 2018. The disputed domain name <morganlewisescrow.com> was previously used to redirect to the Complainants official website but now resolves to a blank webpage. The disputed domain name <moganlewisescrow.com> resolves to a blank webpage.

5. Parties’ Contentions

A. Complainant

The disputed domain name <morganlewisescrow.com> is confusingly similar to the Complainant’s trademark MORGAN LEWIS, since it contains the trademark in its entirety with the addition of the generic term “escrow”. Also, the disputed domain name <moganlewisescrow.com> is confusingly similar to the Complainants trademark, since it contains a misspelling of the trademark with the addition of the generic term “escrow”.

The Complainant submits that the Respondent lacks rights and any legitimate interests in the disputed domain names. The Complainant has not licensed or otherwise permitted the Respondent to register domain names that incorporate the Complainant’s trademark. The Complainant further submits that the Respondent is not legitimately known by the name Morgan Lewis. Further, the Respondent is not making noncommercial or fair use of the disputed domain names. The disputed domain name <morganlewisescrow.com> was previously used to redirect to the Complainant’s official website just as the domain name has been used to send emails from. The disputed domain name <moganlewisescrow.com> resolves to a blank webpage and the Respondent has thus not made any attempt to make legitimate use of this domain name.

Finally, the Complainant submits that the Respondent has both registered and used the disputed domain names in bad faith. Both domain names contain the Complainant’s trademark and the Respondent has used the exact address and/or phone numbers of the Complainant’s office in the United Kingdom as WhoIs information. This demonstrates that the Respondent had knowledge of the Complainant when registering the disputed domain names. The disputed domain name <morganlewisescrow.com> was previously used to redirect to the Complainant’s official website just as the domain name has been used to send emails from, which is clearly use in bad faith. The disputed domain name <moganlewisescrow.com> resolves to a blank webpage but it has been recognized under the UDRP that passive use of a domain name may be a factor in finding bad faith use.

B. Respondent

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

6. Discussion and Findings

According to paragraph 15(a) of the Rules the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

Paragraph 4(a) of the Policy directs that a complainant must prove each of the following:

(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights;

(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) that the domain name has been registered and is being used in bad faith.

Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.

A. Identical or Confusingly Similar

The Panel finds that the disputed domain name <morganlewisescrow.com> is confusingly similar to the Complainant’s registered trademark MORGAN LEWIS since it incorporates the mark in full with the addition of the generic term “escrow”. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) and the UDRP decisions that are cited therein.

The Panel also finds that the disputed domain name <moganlewisescrow.com> is confusingly similar to the Complainant’s registered trademark MORGAN LEWIS since it incorporates the mark with the omission of an “r” and with the addition of the generic term “escrow”.

The generic Top-Level Domain (“gTLD”) “.com” does not dispel a finding of confusing similarity and may be disregarded under the first element confusing similarity test, see section 1.11 of the WIPO Overview 3.0.

The Panel finds that the conditions of paragraph 4(a)(i) of the Policy are therefore fulfilled in relation to the disputed domain names.

B. Rights or Legitimate Interests

It is clear from the facts of the case that the Complainant has not licensed or otherwise permitted the Respondent to use its trademark in the disputed domain names.

Given the circumstances of this case, and the way that the Respondent has been using the disputed domain names, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed domain name, just as the Respondent has not produced, and there is no other immediate evidence present of the types of circumstances set out in paragraph 4(c) of the Policy that might give rise to rights or legitimate interests in the disputed domain names on the part of the Respondent in these proceedings.

Consequently, the Panel finds that the conditions in paragraph 4(a)(ii) of the Policy are also fulfilled.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires the Complainant to prove both registration and use of the disputed domain name in bad faith. Paragraph 4(b) of the Policy provides examples of circumstances which shall be evidence of registration and use in bad faith:

(i) circumstances indicating that the respondent has registered or has 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 respondent’s 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 the respondent’s website or location.

Accordingly, for the Complainant to succeed, the Panel must be satisfied that the disputed domain names have been registered and are being used in bad faith.

Given the circumstances of the case and in particular the evidence on record of the long-term use of the Complainant’s trademark MORGAN LEWIS within legal services, the lack of any explanation from the Respondent as to why it registered the disputed domain names, and the way that the disputed domain name <morganlewisescrow.com> has been used clearly indicates that the Respondent was aware of the Complainant and the Complainant’s marks when the Respondent registered the disputed domain names.

The Panel therefore finds that the disputed domain names were registered in bad faith.

The Respondent has used the disputed domain name <morganlewisescrow.com> actively, partly to redirect to the Complainant’s official website, partly as email address in potential commercial transactions with a third party. The Respondent has thus intentionally attempted to use the disputed domain names for commercial gain by creating a likelihood of confusion with the Complainant and the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its activities. See section 3.1.4 of the WIPO Overview 3.0.

The Respondent has not used the disputed domain name <moganlewisescrow.com> actively. However, as it is stated in section 3.3 of the WIPO Overview 3.0: “From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or ‘coming soon’ page) would not prevent a finding of bad faith under the doctrine of passive holding.” In this case where the Respondent has used false and misleading contact details when registering the disputed domain names, where the Respondent has not filed a response and where the Panel finds that it is implausible that any good faith use can be made of the domain names, the totality of circumstances leads the Panel to conclude that the domain names have been used in bad faith.

Based on the above findings, and considering all the facts and evidence, the Panel therefore finds that the requirements of paragraph 4(a)(iii) and 4(b) of the Policy are fulfilled for both the disputed domain names in this case.

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 names <moganlewisescrow.com> and <morganlewisescrow.com> be transferred to the Complainant.

Knud Wallberg
Sole Panelist
Date: July 3, 2018

¹ The Respondent appears to have used the name and contact details of a third party when registering the disputed domain names. In light of the potential 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 Registrars regarding transfer of the disputed domain names, which includes the name of the Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrars 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.