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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bryan Cave Leighton Paisner LLP v. Job

Case No. D2020-0592

1. The Parties

The Complainant is Bryan Cave Leighton Paisner LLP, United States of America, internally represented.

The Respondent is Job, United Arab Emirates.

2. The Domain Name and Registrar

The disputed domain name <bclp-law.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 March 9, 2020. On March 10, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 11, 2020, 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 March 16, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 5, 2020. The Center received the Respondent’s communications by email on March 16, 2020. On April 6, 2020, the Center informed the Parties that it would proceed with panel appointment.

The Center appointed Fabrizio Bedarida as the sole panelist in this matter on April 27, 2020. 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 in this administrative proceeding is Bryan Cave Leighton Paisner LLP (hereinafter “BCLP” or the “Complainant”), a law firm and limited liability partnership.

Bryan Cave LLP and Berwin Leighton Paisner LLP merged to create BCLP, effective April 3, 2018. Following this merger in April 2018, the BCLP name and mark were adopted.

The Complainant has proven to have rights in the BCLP and BCLP LAW trademarks, which enjoy protection through several registrations.

The Complainant has rights in inter alia the following trademarks:

United Kingdom Trademark BCLP LAW No. UK00003263855 registered on January 26, 2018;

United Kingdom Trademark BCLP No. UK00003263851 registered on January 26, 2018;

International Trademark BCLP (stylized) No. 1416299 registered on March 28, 2018;

International Trademark BCLP No. 1424544 registered on March 1, 2018.

Furthermore, the Complainant is the holder of the domain name <bclplaw.com> under which the official website of the Complainant is accessible.

The disputed domain name was registered on February 7, 2020 and currently does not resolve to an active website.

5. Parties’ Contentions

A. Complainant

The Complainant claims that:

(a) The disputed domain name wholly incorporates and is confusingly similar to the Complainant’s trademarks and is nearly identical to the Complainant’s primary domain name <bclplaw.com>;

(b) the Respondent lacks any rights or legitimate rights in the disputed domain name; and

(c) the Respondent registered and is using the disputed domain name in bad faith, including by impersonating at least one of the Complainant’s partners.

B. Respondent

In two very short and identical emails to the Center, the Respondent claimed to be an “agency who register Domain for client”, and to “know nothing about whatsoever” [sic], suggesting that the Center contact the user of the disputed domain name, providing an email address for this purpose.

6. Discussion and Findings

6.1 Respondent’s Identity

The Panel notes that paragraph 1 of the Rules defines Respondent as “the holder of a domain-name registration against which a complaint is initiated”.

According to the Registrar, the registrant of the disputed domain name is Job. However, Job, in its short communications claimed to be solely an agency who registered the disputed domain name for a client (the “Beneficial Holder”). Job did not reveal the name of this client, but suggested the Center contact the disputed domain name user, providing an email address for this purpose.

As notified to the Parties (copying the Beneficial Holder) by the Center on March 19, 2020, determination of the identity of the Respondent is at the Panel’s discretion.

The issue as to who should be named as the Respondent in cases involving a beneficial holder or identity questions in the context of the agent/beneficial holder relationship has been discussed by previous panels (see, for example, Skoda Auto a.s. v. GlobeHosting, Inc.; Bogdan Hasnes, Evox Protrade SRL, WIPO Case No. DRO2019-0017; FIL Limited v. Fidelity Capital Trade / Christia Brown, WIPO Case No. D2019-2169; Kpark S.A.S. v. Domain Administrator, Optional, WIPO Case No. D2018-1263; Compagnie Générale des Etablissements Michelin v. WhoisGuard, Inc., WhoisGuard Protected / Shaminda Perera, WIPO Case No. D2019-1834.

The Panel notes that the Beneficial Holder has not sent any communication in this proceeding and it has not come forward to disclose its identity. The Panel notes that the communication received by Job points towards the idea that Job was hired for the development of a website for the Beneficial Holder, but there is no evidence on the existence and nature of such relationship (nor on the applicable terms governing any relationship between Job and the Beneficial Holder). However, here the listed registrant is Job, as confirmed by the Registrar, and the Panel considers appropriate to find that Job is the Respondent. The existence of a beneficial holder should not serve generally to renege on the obligations and responsibilities that a registrant of a domain name has by virtue of its registration. The Panel considers that if the disputed domain name is not being used by the registrant itself, the registrant should adopt such measures that are necessary to tend to ensure the proper and bona fide use of its registered domain name (for example via contractual obligations in a license to use the disputed domain name) and should not turn a blind eye or expect a disclaimer of its responsibility merely because of the use is being carried out by a beneficial holder and not the registrant itself.

While in certain circumstances, especially when (i) the identity of the beneficial holder is disclosed, (ii) the beneficial holder submits arguments explaining its position, or (iii) the relationship between the registrant of the domain name and the beneficial holder is clear, panels would normally consider any submission by the beneficial holder (and, obviously, the submissions by the registrant) in reaching their decisions (including for the purposes of the determination of the respondent’s identity), the Panel finds that none of the circumstances in this proceeding allows the Panel to consider that the Beneficial Holder should be treated as a further Respondent.

Besides, in its communications the Respondent suggested contacting the “user” of the disputed domain name, and not the owner. Moreover, the Respondent did not reveal the identity of this alleged user.

As a consequence, in this instance the Panel has decided to consider that Job is the sole Respondent.

6.2 Substantive Issues

In order for the Complainant to obtain a transfer of the disputed domain name, paragraphs 4(a)(i) – (iii) of the Policy require that the Complainant must demonstrate to the Panel that:

(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 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 has established rights in the BCLP and BCLP LAW trademarks.

The disputed domain name consists of the BCLP LAW trademark with the sole addition of a “-” and of the generic Top-Level Domain (“gTLD") “.com”. This Panel agrees with the Complainant’s assertion that these additions in the disputed domain name are irrelevant in assessing the confusing similarity between the Complainant’s trademarks and the disputed domain name. In addition, the disputed domain name also consist of the BCLP trademark in its entirety.

Therefore, the Panel finds the disputed domain name to be confusingly similar to the BCLP and BCLP LAW trademarks in which the Complainant has rights.

Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

This Panel finds that the Complainant has made a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent does not appear to be commonly known by the name “bclp” and/or “bcpl law” or by any similar name. The Respondent has no connection to or affiliation with the Complainant, and the Complainant has not licensed or otherwise authorized the Respondent to use or register any domain name incorporating the Complainant’s trademarks. The Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name, nor any use in connection with a bona fide offering of goods or services. The Respondent has used the disputed domain name to send emails to third parties purporting to be from an attorney of the Complainant. The Respondent has not come forward with any explanation that demonstrates any rights or legitimate interests in the disputed domain name. The Respondent has not formally replied to the Complainant’s contentions, claiming any rights or legitimate interests in the disputed domain name. On the contrary, in its extremely short emails the Respondent affirmed that it had registered the disputed domain name for a client, and it knows nothing more.

The Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel, on the basis of the evidence presented, accepts and agrees with the Complainant’s contentions that the disputed domain name was registered and has been used in bad faith.

The Complainant has documented that the Respondent has purposely used the disputed domain name to attempt to defraud others by impersonating an attorney at BCLP and fraudulently communicating via email regarding personal investments. The Respondent misrepresented to others that it was an attorney at BCLP, by emailing third parties from a manufactured email account “[name.surname]@bclp-law.com”, which is almost identical to a legitimate personalized email account (i.e., [attorney name.surname]@bclplaw.com”) for a partner at the Complainant’s law firm.

These emails are, in the Panel’s view, sufficient to show that the Respondent knew of the Complainant and its trademarks and intentionally intended to create an association with the Complainant and its business at the time of registration of the disputed domain name.

The Panel finds that the Respondent’s use of the disputed domain name constitutes a disruption of the Complainant’s business and qualifies as bad faith registration and use under the Policy. The fact that the disputed domain name does not currently resolve to an active website does not preclude a finding of bad faith.

Accordingly, the Panel finds, on the basis of the evidence presented, that the Respondent registered and is using the disputed domain name in bad faith. Therefore, the Complainant has satisfied 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 <bclp-law.com> be transferred to the Complainant.

Fabrizio Bedarida
Sole Panelist
Date: May 6, 2020

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