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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Lewis Silkin LLP v. Jason Sanjoto

Case No. D2018-2860

1. The Parties

The Complainant is Lewis Silkin LLP of London, United Kingdom, internally represented.

The Respondent is Jason Sanjoto of Hamburg, Germany.

2. The Domain Name and Registrar

The disputed domain name <lewissllkin.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 14, 2018. On December 17, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 19, 2018, 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on December 19, 2018, 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 21, 2018.

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”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 27, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 16, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 17, 2019.

The Center appointed Marilena Comanescu as the sole panelist in this matter on January 31, 2019. 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, Lewis Silkin LLP, founded in 1952, is a commercial law firm offering services within the United Kingdom and internationally, currently having 56 partners, more than 90 lawyers and a total of 340 members of staff and, according to its claims, it had a turnover of over GBP 53 million in 2018.

The Complainant’s name derives from its founder, Lewis Silkin.

The Complainant holds trademarks for this name such as the word European Union trademark registration No. 10516227 for LEWIS SILKIN filed on December 21, 2011 and registered on June 18, 2012 for services in International Classes 35, 41 and 45.

The Complainant’s website “www.lewissilkin.com” is registered and used since March 28, 1997.

The disputed domain name <lewissllkin.com> was registered on November 30, 2018 and, according to the Complainant and uncontested by the Respondent, the disputed domain name was used in connection with email communications for phishing and other fraudulent purposes including an attempt to divert funds meant for the Complainant to a third party bank account. According to the Complaint, the Respondent has used the disputed domain name to send malicious and fraudulent electronic mail communications, designed to appear as they were from the Complainant by impersonating individuals from the Complainant’s firm and using content that forms part of intercepted electronic mail correspondence between the Complainant and its clients, such emails being sent to the Complainant’s clients as part of an attempt to divert funds that were due to the Complainant, to a third party bank account.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to its distinctive trademark LEWIS SILKIN with a common, obvious and intentional misspelling where a letter “l” is replaced by the letter “L”, the Respondent has no rights or legitimate interests in the disputed domain name, and the Respondent 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

In view of the Respondent’s default, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to the Respondent. Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are met:

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

The Panel will further analyze the potential concurrence of the above circumstances.

A. Identical or Confusingly Similar

The Complainant holds rights in the LEWIS SILKIN trademark.

The disputed domain name <lewissllkin.com> incorporates the Complainant’s trademark LEWIS SILKIN in its entirety without space between the two words, and with the replacement of one of the letters “I” with an “L”. However, such misspelling does not prevent a finding of confusing similarity as the Complainant’s trademark is clearly recognizable within the disputed domain name.

Numerous UDRP panels have considered that a domain name which consists of a common, obvious or intentional misspelling of a trademark shall be considered as being confusingly similar to the relevant mark for the purpose of the first element. See section 1.9 of theWIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Further, it is well established in decisions under the UDRP that the generic Top-Level Domain (“gTLD”) (e.g., “.net”, “.info”, “.com”, “.org”) may typically be disregarded for the purposes of consideration of confusing similarity between a trademark and a domain name.

Given the above, the Panel finds that the disputed domain name <lewissllkin.com> is confusingly similar to the Complainant’s trademark LEWIS SILKIN, pursuant to the Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Complainant asserts that the Respondent does not hold any trademark rights, license or authorization whatsoever to use the mark LEWIS SILKIN, that the Respondent is not commonly known by the disputed domain name, and that the Respondent has not used the disputed domain name in connection with a legitimate noncommercial or fair use, or a bona fide offering of goods and services.

Under the Policy, “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”. See section 2.1 of theWIPO Overview 3.0.

The Respondent has not replied to the Complainant’s contentions and has not come forward with relevant evidence to rebut the Complainant’s prima facie case.

There is nothing in the record suggesting that the Respondent has ever been commonly known by the disputed domain name.

The Respondent has used the disputed domain name in connection with email communications for fraudulent purposes including an attempt to divert funds meant for the Complainant to a third party bank account. This is definitely not an activity falling under the circumstances listed by paragraph 4(c) of the UDRP as demonstrating the Respondent’s rights or legitimate interests in the disputed domain name.

Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name <lewissllkin.com>, pursuant to the Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

The Complainant holds registered trademark rights since 1994 and it has gained substantial goodwill in its field of activity.
The disputed domain name was created in 2018 and incorporates the Complainant’s distinctive mark with an obvious misspelling.

For the above, the Panel finds that the disputed domain name was registered in bad faith, knowing the Complainant and targeting its trademark.

At the time of filing the Complaint the disputed domain name did not resolve to an active website. However, according to the Complaint and unrefuted by the Respondent, prior to the present proceeding, the Respondent was using the disputed domain name in connection with email communications for phishing and other fraudulent purposes including an attempt to divert funds meant for the Complainant to a third party bank account. According to the evidence provided in the Complaint, the Respondent has used the disputed domain name to send fraudulent electronic mail communications, designed to appear as they were from the Complainant by impersonating individuals from the Complainant’s firm and using content that forms part of intercepted electronic mail correspondence between the Complainant and its clients.

UDRP panels have consistently held that the use of a domain name other than to host a website may constitute bad faith. Such purposes include sending email, phishing, or identity theft. Many of such cases, as well as the present case, involve the respondent’s use of the disputed domain name to send deceptive emails to solicit payment of fraudulent invoices by the complainant’s actual or prospective clients. See section 3.4 of the WIPO Overview 3.0.

The refuse to participate in this proceeding and the inaccurate contact information provided in the WhoIs (demonstrated by the impossibility of the courier company to deliver the Complaint to the Respondent) further confirm the Respondent’s bad faith behavior in the present case.

For all the above reasons, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith, pursuant to the 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 disputed domain name <lewissllkin.com> be transferred to the Complainant.

Marilena Comanescu
Sole Panelist
Date: February 13, 2019

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