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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pinsent Masons LLP v. WhoisGuard Protected, WhoisGuard, Inc. / ceo man

Case No. D2019-0928

1. The Parties

The Complainant is Pinsent Masons LLP, United Kingdom, represented by Pinsent Masons LLP, United Kingdom.

The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / ceo man, United States of America.

2. The Domain Name and Registrar

The disputed domain name <pinsenmtasons.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 24, 2019. On April 24, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 24, 2019, 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 April 29, 2019 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 May 1, 2019. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed a second amended Complaint on May 2, 2019.

The Center verified that the Complaint together with the amended Complaint and the second 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 May 3, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 23, 2019. On May 10 and 24, 2019, informal email communications from a third party alleging that it received a hard copy of the Complaint, but that it is not the registrant of the disputed domain name were received by the Center. No further Response was submitted. Accordingly, the Center notified the Parties that it would proceed to panel appointment on June 4, 2019.

The Center appointed Alistair Payne as the sole panelist in this matter on June 12, 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 based in the United Kingdom is a large international law firm and amongst the top 20 law firms in that jurisdiction. Since December 2004 it has traded primarily under the name Pinsent Masons and owns numerous trade mark registrations worldwide for the PINSENT MASONS word mark including, in particular, United Kingdom trade mark registration UK00002327301, filed on March 22, 2003 and United States trade mark registration 977347 registered on April 30, 2008. It also owns the domain name <pinsentmasons.com> and operates its main website from that domain name.

The Respondent, based in the United States, registered the disputed domain name on March 25, 2019. At the date of this Complaint, the disputed domain name resolved to a blank page.

5. Parties’ Contentions

A. Complainant

The Complainant submits that it owns registered trade mark rights in the PINSENT MASONS word mark as set out above. It says that the Respondent has moved letters in the disputed domain name in an attempt to distinguish the disputed domain name from the Complainant. In particular, the Respondent has swapped the letter “M” and the letter “T” in PINSENT MASONS for it to read “pinsenmtasons”. Such a substitution makes no difference to the overall impression of the dominant words PINSENT MASONS in the disputed domain name and is a prime example of classic typosquatting. The Complainant submits that it is accepted that a domain name which consists of a common, obvious, or international misspelling of a trade mark will be found to be confusingly similar to the relevant mark for purposes of the first limb of the Policy due to the fact that the domain name contains sufficiently recognisable aspects of the relevant mark. Further, says the Complainant, a misspelling in this way signals an intention on the part of the Respondent to confuse users who are seeking out the Complainant (Fuji Photo Film U.S.A., Inc. v. LaPorte Holdings, WIPO Case No. D2004-0971; Humana Inc. v. Cayman Trademark Trust, WIPO Case No. D2006-0073; Edmunds.com, Inc. v. Digi Real Estate Foundation, WIPO Case No. D2006-1043).

The Complainant asserts that as a consequence of use and advertising that it has built up a very substantial goodwill and gained a valuable reputation in the PINSENT MASONS mark which is distinctive of it and of the range of services that it provides. It submits that the Respondent registered the disputed domain name knowing that it is likely to attract interest from Internet users who are searching for the Complainant. It says that the disputed domain name resolves to a blank page and it is clear that the Respondent is not making a legitimate non-commercial fair use of the disputed domain name. It also says that it is not possible for the Respondent to have acquired any legitimate right to use the disputed domain name since its registration.

The Complainant submits that in view of the widespread use and reputation of the PINSENT MASONS trade mark, the Respondent must have been aware that in registering the disputed domain name it was misappropriating the valuable intellectual property of the Complainant. It says that the Respondent’s motivation for registering the disputed domain name may have been for illegitimate purposes such as to sell the disputed domain name, to use the disputed domain name for the purpose of generating click through revenue, or to redirect Internet traffic to an alternative website. It also says that none of these uses would constitute fair use and as such the Respondent has not generated any legitimate interest in the disputed domain name. The Complainant further notes that the Respondent’s registration of the disputed domain name has also prevented the Complainant from registering a domain name that corresponds to its PINSENT MASONS trade mark.

Finally, the Complainant says that the Respondent will never be capable of using the disputed domain name for a legitimate purpose as the notoriety of the PINSENT MASONS mark and name is such that members of the public will always assume that there is an association between the Respondent and the Complainant, and/or between the Respondent and that mark.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has demonstrated that it owns registered trade mark rights in its PINSENT MASONS name and mark.

In registering the disputed domain name the Respondent has swapped the letter “M” and the letter “T” in PINSENT MASONS for it to read “pinsenmtasons”. The Panel finds that the PINSENT MASONS mark is very distinctive and that this substitution of letters does not distinguish the disputed domain name from the Complainant’s mark. This is a classic example of typosquatting and panels have found that the obvious misspelling of a distinctive mark in a domain name in this way renders it confusingly similar to the Complainant’s mark (Fuji Photo Film U.S.A., Inc. v. LaPorte Holdings, WIPO Case No. D2004-0971). As a result the Panel finds that the disputed domain name is confusingly similar to the Complainant’s PINSENT MASONS mark and the Complaint succeeds under the first element of the Policy.

B. Rights or Legitimate Interests

The Complainant has submitted that it owns rights in the PINSENT MASONS mark as set out above and that considering the goodwill that now attaches to the mark, which it notes has not in any way been assigned to the Respondent, the Complainant submits that the Respondent could not have registered the disputed domain name for a bona fide purpose. Rather, the Complainant surmises that the Respondent registered it with an intention to create a false impression in order to attract Internet users who are searching for the Complainant. The Complainant has submitted that the Respondent is not making a legitimate non-commercial fair use of the disputed domain name and that upon review on April 1, 2019 and April 11, 2019 the disputed domain name resolved to a blank page.

While the Respondent did not respond to the Complaint, when the Complaint was sent to the email address given by the Respondent as a contact address for the disputed domain name, the Center received a response email. In this email the sender confirmed that it did not register the disputed domain name, is not the owner of the disputed domain name and has no interest in it. The sender noted that a third party must have registered the disputed domain name using the sender’s corporate address.

The Panel finds that the Respondent has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. In view of the fact that the Respondent has failed to rebut the case made by the Complainant and also considering the Panel’s finding under Part A above in relation to typosquatting, the apparent registration of the disputed domain name using false contact address information and for the reasons set out under Part C below, the Panel finds that the Respondent’s conduct is not bona fide and that the Complaint succeeds under this element of the Policy.

C. Registered and Used in Bad Faith

The disputed domain name was registered on March 25, 2019, many years after the Complainant began trading under the PINSENT MASONS name and mark and long after its registration as a trade mark either in the United Kingdom or in the United States. Considering the high level of distinctiveness of the Complainant’s mark, the reputation that it has developed since its first use in 2004 and that the disputed domain name appears to be an example of typosquatting of the PINSENT MASONS mark, it is apparent that the Respondent registered the disputed domain name with knowledge of the Complainant’s mark.

The Complainant notes that prior to filing the Complaint the disputed domain name resolved to a blank page. This amounts to a passive holding of the disputed domain name by the Respondent. Factors that have been considered relevant in applying the passive holding doctrine are noted at section 3.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition and include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details and (iv) the implausibility of any good faith use to which the domain name may be put.

In view of the very significant degree of international repute attaching to the PINSENT MASONS mark, the failure of the Respondent to submit a response or to provide evidence of contemplated good faith use, the Respondent’s use of a privacy service (Whois Guard) to hide its identity, the recent registration of the disputed domain name and the fact that the disputed domain name is in effect the Complainant’s mark with displaced letters in a case of typosquatting as discussed under Part A above, the Panel considers that the Respondent’s registration and passive holding of the disputed domain name was in bad faith. Accordingly, the Complaint also succeeds under this element 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 <pinsenmtasons.com> be transferred to the Complainant.

Alistair Payne
Sole Panelist
Date: June 18, 2019

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