WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Rechtsanwälte Lampmann, Haberkamm & Rosenbaum Partnerschaft v. Privacy Department, IceNetworks Ltd. / Domain Admin, Whois Privacy Corp.
Case No. D2021-1083
1. The Parties
The Complainant is Rechtsanwälte Lampmann, Haberkamm & Rosenbaum Partnerschaft, Germany, represented internally.
The Respondent is Privacy Department, IceNetworks Ltd., Iceland, / Domain Admin, Whois Privacy Corp., Bahamas.
2. The Domain Name and Registrar
The disputed domain name <lhr-law.org> is registered with Internet Domain Service BS Corp (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 9, 2021. On April 9, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 12, 2021, 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 12, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Respondent sent emails to the Center on April 12 and 13, 2021. The Complainant filed an amendment to the Complaint on April 15, 2021.
The Center verified that the Complaint, together with the amendment to 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 April 15, 2021. The Respondent sent an email to the Center on April 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 5, 2021. The Response was filed with the Center on May 5, 2021.
The Complainant made a supplemental filing on May 6, 2021. The Respondent made supplemental filings on May 6 and 11, 2020.
The Center appointed Adam Taylor as the sole panelist in this matter on May 19, 2021. 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 is a German law firm with a website at “www.lhr-law.de”.
The Complainant owns German trade mark no. 302014046310 for LHR, filed on April 10, 2014, registered on October 16, 2014, in classes 41 and 45.
By way of background, the Respondent1 registered <lhr-law.info> on July 5, 2019, and used it for a website which included critical comments about the Complainant.
On October 29, 2020, the Complainant sent a request to the Respondent seeking voluntary transfer of <lhr-law.info> to the Complainant. The Respondent’s lawyer responded the same day, stating that the domain name <lhr-law.info> was for sale for EUR 20,000. The Respondent followed up with an email of November 11, 2020, reiterating the offer and stating that the Respondent was about to sell the domain name to a Russian investor.
On November 17, 2020, the Complainant filed a UDRP case against the Respondent in relation to <lhr-law.info>.
The Respondent registered the disputed domain name on November 27, 2020.
On December 14, 2020, a UDRP panel found that <lhr-law.info> had been registered and used in bad faith for the purpose of intended sale to the Complainant and ordered transfer to the Complainant. See Rechtsanwälte Lampmann, Haberkamm & Rosenbaum Partnerschaft v. Dieter Spreidler, ETS, WIPO Case No. D2020-3053 (“Case 1”).
5. Parties’ Contentions
A. Complainant
The following is a summary of the Complainant’s contentions.
The disputed domain name is identical or at least confusingly similar to a trade mark in which the Complainant has rights. The disputed domain name incorporates the LHR trade mark in its entirety. The addition of the descriptive term “law”, which actually denotes the Complainant’s core business, does not dispel the confusing similarity arising from the incorporation of the Complainant’s LHR trade mark into the disputed domain name.
The Respondent has no rights or legitimate interests in respect of the disputed domain name.
There is no evidence of the Respondent’s use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. Nor has the Respondent been commonly known by the disputed domain name. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trade mark.
The disputed domain name was registered and is being used in bad faith.
The Respondent’s registration of the disputed domain name is part of a concerted attack on the Complainant, designed to extort money from, and/or to blackmail, the Complainant.
The Respondent has threatened to transfer domain names containing the Complainant’s trade mark to third parties.
The Respondent has spread untrue allegations about the Complainant by regularly posting false negative reviews about the Complainant on third party websites.
The Respondent has misused the Complainant’s copyrighted material.
The Respondent has carried out denial-of-service attacks against the Complainant’s website.
The Complainant has filed separate civil and criminal proceedings in Germany against the Respondent.
B. Respondent
The following is a summary of the Respondent’s contentions.
The Respondent is a Russian company that hosts thousands of domain names for its customers all over the world. The Respondent defends its customers’ domain names and websites against hacking and other attacks. It has never received any complaints regarding those other domain names.
As regards trade mark rights, the Complainant does not own an international trade mark for LHR, only a German trade mark which does not apply in Russia. The acronym LHR is not like IBM, which is known worldwide.
Furthermore, only half of the disputed domain name relates to the Complainant’s weak German trade mark. The other half consists of the common word “law”.
The Respondent has rights or legitimate interests in respect of the disputed domain name.
The Respondent operates a legitimate business model whereby it hosts thousands of domain names which are used for websites in multiple languages worldwide. For security reasons, the Respondent does not even know who its customers are. A different company deals directly with the customers and provides the content management systems.
The Respondent could still block a domain name if there was a reasonable complaint, but the Respondent was not in a position to investigate this case as the Complainant did not contact the Respondent to complain about the possible wrongdoing by one of the Respondent’s customers. Furthermore, the Respondent cannot judge if a domain name managed through the other company infringes someone’s trade mark somewhere in the world.
The Respondent has no connection with either <lhr.info> or <lhr.de>, or with Mr Spreidler (the respondent in Case 1).
As a lawyer, the Complainant must be aware that it needs to prove its assertions, but it has not done so. For example, there is no evidence of defamation.
The disputed domain name was not registered or used in bad faith.
The Complainant already owns <lhr-law.de>, so it has nothing to complain about. If the Complainant wanted to own all generic Top-Level Domain names comprising “lhr” or “lhr-law”, then it should have registered them in good time. The Complainant should know this as it has already encountered a problem with <lhr-law.info>. If another customer asked the Respondent to register one of the many hundreds of domain names including the term “lhr”, then the Respondent would do so.
The Respondent can see that the disputed domain name is being used for a website in German. The Respondent is not in a position to check the content and is not required to do so. The Respondent’s domain name hosting is not connected with alleged negative reviews or denial-of-service attacks on a different domain name, i.e., not the disputed domain name.
The Complainant provides various documents but nothing relating specifically to the disputed domain name. If there is a real legal reason to block the disputed domain name, the Respondent would have done so but the Respondent has never heard of the Complainant before now and has only been provided with a letter relating to <lhr-law.info>, which is a different domain name.
Still, it is part of the Respondent’s business to defend its customers’ domain names.
There is no proof that anyone is deliberately creating anonymity.
The Respondent has already asked Mr Spreidler if he knows about the Complainant. Mr Spreidler says that the Complainant is telling lies, that the Complainant was refused a preliminary injunction against him in two courts because of lack of evidence, that all of the Complainant’s allegations against him are untrue and that he intends to file a criminal complaint against the Complainant.
It is a serious matter for a law firm to fail to provide evidence supporting its claims.
C. Complainant’s supplemental filing
The email username of the anonymous person who emailed the Response to the Center is the same email username that appeared in emails dated December 28, 2020, and February 11, 2021, threatening the Complainant with denial-of-service attacks, hacking and bad reviews in connection with the offer to sell <lhr-law.info> to the Complainant for EUR 20,000.
D. Respondent’s supplemental filings
The price of EUR 20,000 for <lhr-law.info> was offered by a lawyer, not by the person who filed the Response, and in any case that price was not related to the disputed domain name.
The Complainant is making false statements.
There is no proof that the Respondent is responsible for denial-of-service attacks.
The Complainant is threatening customers who give them true negative reviews.
The person who uses the email username is a business partner of the Respondent who speaks good English and who the Respondent therefore asked to help with its Response.
The German court case filed by the Complainant against Mr Spreidler has been totally and finally refused, which shows that all of the Complainant’s claims were untrue and there is no real proof. Mr Spreidler, who will be a very honest witness, will sue them for this.
6. Discussion and Findings
Under the Policy, the Complainant is required to prove on the balance of probabilities that:
- the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights;
- the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- the disputed domain name has been registered and is being used in bad faith.
A. Identity of the Respondent
The Panel notes that the underlying owner of the disputed domain name has not been clearly identified. Instead, there is a “Russian doll” scenario whereby the registrant “disclosed” by the Registrar following the filing of the Complaint turned out to be yet another privacy service. Section 4.4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), notes that such “multi-layered obfuscation” may support an inference of bad faith, e.g., as an attempt to shield illegitimate conduct from a UDRP proceeding. See further in section 6F below.
Furthermore, the Response purports to have been written by a Russian company that allegedly provides a hosting service for the disputed domain name, but whose name and contact details have not been provided. The Response is drafted from the point of view of a third-party service provider claiming to have little knowledge of the activities of the ultimate owner of the disputed domain name, but it also purports to relay Mr Spreidler’s views concerning some of the allegations raised by the Complainant.
The Panel also notes that the email address used to transmit the Response to the Center contains the same email username as an email address used to send threatening emails to the Complainant in connection with Case 1.
The Panel has the impression that the Response was in fact written by the ultimate owner of the disputed domain name. In any case, the Panel proposes to treat the acts and omissions of the unidentified ultimate owner of the disputed domain name as those of “the Respondent” and references in this decision to “the Respondent” should be read accordingly.
B. Informal Response
The Response is in the form of an email to the Center, which does not comply with the formal requirements set out in paragraph 5 of the Rules. For example, there is no statement of truth. The Panel has nonetheless decided to admit the Response in accordance with its powers under paragraph 10(d) of the Rules but to bear in mind the Response’s non-compliance with the Rules, including in particular the absence of a statement of truth, when weighing up the Respondent’s assertions in this case.
C. Supplemental Filings
Both parties have made unsolicited supplemental filings.
Section 4.6 of WIPO Overview 3.0 states that UDRP panels have repeatedly affirmed that the party submitting an unsolicited supplemental filing should clearly show its relevance to the case and why it was unable to provide the information contained therein in its complaint or response, e.g., owing to some “exceptional” circumstance.
In this case, the Panel has decided to admit the Complainant’s supplemental filing because it concerns a matter which came to the Complainant’s attention after it filed its Complaint, namely the fact that the username of the email address used to file the Response was the same one used in a number of threatening emails relating to Case 1.
The Panel has also admitted the two subsequent supplemental filings by the Respondent. The first responds to the Complainant’s filing. The second relates to apparent recent developments in a German court case between the parties.
D. Identical or Confusingly Similar
The Complainant has established rights in the mark LHR by virtue of its German registered trade mark for this term.
The Respondent objects that the Complainant does not own an international trade mark or one that has effect in Russia where the alleged Russian hosting company that claims to have prepared the Response is allegedly located, or one that is famous worldwide, like “IBM”.
However, section 1.1.2 WIPO Overview 3.0 explains that, given the global nature of the Internet and the domain name system, the jurisdiction where the complainant’s trade mark is valid is not considered relevant to panel assessment under this first element.
Section 1.2.1 of WIPO Overview 3.0 adds that, where a complainant holds a nationally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trade mark rights for purposes of standing to file a UDRP case.
In other words, while the location or fame of a complainant’s trade mark may in certain circumstances be relevant under the second and/or third elements of the Policy, it is not a consideration under the first element.
The Respondent also objects that “only half” of the disputed domain name relates to what it describes as the Complainant’s “weak” German trade mark and that the other half consists of the common word “law”.
Whatever the strength of the Complainant’s mark, section 1.7 of WIPO Overview 3.0 makes clear that the first element functions primarily as a standing requirement and that the test for confusing similarity simply involves a reasoned but relatively straightforward comparison between the complainant’s trade mark and the disputed domain name.
Section 1.8 of WIPO Overview 3.0 points out that, where the relevant trade mark is recognisable within the disputed domain name, the addition of other terms, whether descriptive or otherwise, would not prevent a finding of confusing similarity under the first element.
Here, the Complainant’s trade mark LHR is readily recognisable within the disputed domain name and, accordingly, the addition of the descriptive term “law” is insufficient to avert a finding of confusing similarity.
For the above reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trade mark.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
E. Rights or Legitimate Interests
As explained in section 2.1 of WIPO Overview 3.0 , the consensus view is that, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If not, the complainant is deemed to have satisfied the second element.
Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.
Paragraph 4(c) of the Policy gives examples of circumstances which, if proved, suffice to demonstrate that a respondent possesses rights or legitimate interests.
As to paragraph 4(c)(iii) of the Policy, instead of putting forward evidence of use of the disputed domain name for a bona fide criticism site, the Response simply takes the position that “we see a website in [G]erman but [w]ithout any complain[t] it is impossible to know, if this is a legal website or not, we cannot judge it”.
The Response is therefore approaching the issue of use of the disputed domain name from the standpoint of an alleged service provider with limited knowledge regarding the website at the disputed domain name. As explained in section 6E above, the Panel suspects that the Response was in fact written by the ultimate owner of the disputed domain name. However, if the Response was indeed drafted by a Russian hosting company on behalf of the ultimate owner of the disputed domain name, it was the responsibility of whoever prepared the Response to deal with the allegations from the perspective of the ultimate owner. In the absence of any convincing explanation otherwise, the ultimate owner must be taken to understand, and be familiar with, the content of that owner’s own website, which presumably that person created. It does not assist the ultimate owner if the agent acting for the owner claims not to understand the content of the site or asserts that it is not in a position to address the issue because it never received a complaint in its capacity as host. It is the ultimate owner’s knowledge and actions that are likely to be relevant here, not those of the agent. If the ultimate owner chooses to authorise an agent to file a Response that disclaims any awareness or understanding of the site at the disputed domain name, that is tantamount to the ultimate owner either failing or refusing to explain its position.
The Response observes that the Complainant has failed to provide evidence of the content of the allegedly defamatory website at the disputed domain name. This is a reasonable point and the failure of the Complainant to supply a screenshot of the content of the website at the disputed domain name to which it objects, along with a translation into English, the language of the proceeding, is a surprising omission.
However, section 4.8 of WIPO Overview 3.0 notes that UDRP panels may undertake limited factual research into matters of public record if they consider such information useful in assessing the merits of the case and reaching a decision. This includes visiting the website linked to the disputed domain name, which the Panel has indeed reviewed and which does in fact appear to contain content critical of the Complainant, describing it at one point as “a trickster”.
In any event, the complainant has made out a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name in accordance with the second element of the Policy and, as explained above, the burden of production has therefore shifted to the Respondent to come forward with relevant evidence, which it has failed to do.
That said, such an argument, i.e., whereby the Respondent (including the ultimate owner) might have claimed that the website at the disputed domain name is an actual, legitimate, criticism site, would probably not have succeeded.
UDRP jurisprudence recognises that the use of a domain name for fair use such as noncommercial free speech would in principle support a respondent’s claim to a legitimate interest under the Policy. See section 2.6 of WIPO Overview 3.0 . However, as explained in section 2.6.1 of WIPO Overview 3.0 , the criticism must be genuine. For the reasons given in section 6F below, it seems likely that any criticism on the website at the disputed domain name did not reflect genuine client experiences but, rather, was part of a scheme to extract money from the Complainant.
Furthermore, even if a website is considered to be a genuine criticism site, as explained in section 2.6.2 of WIPO Overview 3.0, panels find that a general right to legitimate criticism does not necessarily extend to registering or using a domain name identical to a trade mark (i.e., <trademark.tld>) as this creates an impermissible risk of user confusion through impersonation.
In this case, the Panel considers that the disputed domain name is virtually identical to the Complainant’s trade mark because it merely adds the word “law”, which describes the Complainant’s area of activity. Also, the disputed domain name mirrors the name that the Complainant uses for its own website: “www.lhr-law.de”. Accordingly, in the Panel’s view, the disputed domain name constitutes a misrepresentation to users that any associated website is likely to be connected with the Complainant. There is nothing in the disputed domain name to indicate that it is a site that contains content critical of the Complainant. While Internet users arriving at the Respondent’s website will at some point realise that it is not officially associated with the Complainant, they have nonetheless been attracted to the site on a false premise; given the composition of the disputed domain name, Internet users would have associated the disputed domain name with the Complainant, and reasonably expected to find the Complainant’s site but, instead of the Complainant’s site, they are confronted with an unexpected criticism site – and the damage is done.
For the above reasons, the Panel thinks it unlikely that, even if it had addressed the issue, the Respondent would have succeeded in demonstrating that the website at the disputed domain name was a legitimate criticism site for the purposes of the Policy.
Accordingly, the Panel finds that paragraph 4(c)(iii) of the Policy does not apply in this case and there is no evidence that paragraphs 4(c)(i) or (ii) of the Policy apply either.
The Panel therefore concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.
F. Registered and Used in Bad Faith
As mentioned above, the Response puts forward a defence from the standpoint of the alleged Russian hosting company that allegedly prepared the Response, rather than that of the ultimate owner of the disputed domain name. Accordingly, the Response raises many issues that are irrelevant to the case, such as: the business model of the alleged Russian company; its relationship with its customers; the legitimacy of its customers generally registering domain names that include the term “lhr”; its alleged inability to investigate the case or block the disputed domain name due to the lack of any complaint to the company or because it allegedly does not understand the website; its alleged lack of awareness of the Complainant; its alleged lack of connection to matters of which the Complainant complains such as Case 1 or the denial-of-service attacks or fake negative reviews; and its alleged lack of any connection with the respondent in Case 1, Mr Spreidler, notwithstanding that the company has allegedly communicated with, and given the impression that it is acting for, Mr Spreidler.
The Response fails to address the crucial issue in the case, namely the reason why the ultimate owner registered the disputed domain name. The Panel thinks it reasonable to infer from this omission that the disputed domain name was not registered for a legitimate purpose.
Insofar as the Response seeks to distinguish between the disputed domain name and <lhr-law.info>, the subject of Case 1, the Panel does not find this plausible for the following reasons:
First, the disputed domain name was registered only ten days after the Complainant had filed Case 1.
Second, the disputed domain name is substantially the same as <lhr-law.info>, the only difference being the Top-Level Domain (“TLD”) suffix.
Third, both domain names have been used for websites criticizing the Complainant.
Fourth, the Response was filed from an email address with a username that matched the email username used on emails threatening the Complainant with denial-of-service attacks, hacking and bad reviews in connection with the offer to sell <lhr-law.info> to the Complainant for EUR 20,000. The Panel is not convinced by the Respondent’s explanation that the owner of this username is a business partner of the Russian company who was helping with the Response because he speaks good English, as the Respondent claims. Even in the unlikely event that the claim is true, it still indicates that there is a connection between the disputed domain name and the unlawful conduct reflected in those previous emails.
Accordingly, the Panel considers that the evidence before it indicates that the disputed domain name was registered and used in bad faith as part of a continuing campaign to extract money from the Complainant in connection with the registration of domain names reflecting the Complainant’s mark.
The Panel’s conclusion is reinforced by the lack of any explanation from the Respondent for registration of the disputed domain name and by the use of multi-layered obfuscation to conceal the identity of the ultimate owner of the disputed domain name (see section 6A above).
The Panel would add that both parties have referred to a German court proceeding between the parties. However, neither party has provided any documentation evidencing the findings or outcome of the case, let alone any explanation as to why such matters are relevant to the Panel’s determination. The Panel has therefore disregarded this case.
For the above reasons, the Panel finds that the Complainant has established the third element of paragraph 4(a) 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 <lhr-law.org> be transferred to the Complainant.
Adam Taylor
Sole Panelist
Date: June 2, 2021
1 As explained in section 6A below, the Panel treats the actions and omissions of the unidentified ultimate owner of the disputed domain name as those of the Respondent. See also section 6F where the Panel explains why it considers that the same person registered both <lhr-law.info> and the disputed domain name.