Slaughter and May v marcus bamberg
Claim Number: FA1406001566555
Complainant is Slaughter and May (“Complainant”), represented by David Ives, United Kingdom. Respondent is marcus bamberg (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <slaughterandmay-uk.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 25, 2014; the National Arbitration Forum received payment on June 26, 2014.
On June 25, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <slaughterandmay-uk.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 26, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 16, 2014 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@slaughterandmay-uk.com. Also on June 26, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 22, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Respondent’s <slaughterandmay-uk.com> domain name is confusingly similar to Complainant’s SLAUGHTER AND MAY mark.
2. Respondent does not have any rights or legitimate interests in the <slaughterandmay-uk.com> domain name.
3. Respondent registered and uses the <slaughterandmay-uk.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant holds a trademark registration for its SLAUGHTER AND MAY mark in the United Kingdom Intellectual Property Office (“UKIPO”) (Reg. No. 136447, issued December 14, 1990), used in connection with providing legal services.
Respondent is using the <slaughterandmay-uk.com> domain name to conduct a phishing scheme.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The Panel finds that Complainant’s registration of its SLAUGHTER AND MAY mark with the UKIPO to be sufficient evidence of Complainant’s Policy ¶ 4(a)(i) rights. See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding that a complainant had registered its mark with national trademark authorities, the panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”)
Respondent’s <slaughterandmay-uk.com> domain name is confusingly similar to Complainant’s SLAUGHTER AND MAY mark because it merely adds the descriptive country indicator “uk,” along with a hyphen and the gTLD “.com.” These changes do not distinguish the domain name from Complainant’s mark. See Alticor Inc v. Cao Mai, FA1521565 (Nat. Arb. Forum Nov. 5, 2013) (stating that, “the domain name buy-artistry.com is unquestionably confusingly similar to [c]omplainant’s famous ARTISTRY mark” as a result of the domain name differing from the complainant’s mark by no more than the generic term “buy” and a hyphen); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Thus, the Panel finds that the <slaughterandmay-uk.com> domain name is confusingly similar to Complainant’s mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant states that Respondent has no connection to Complainant. The WHOIS information lists “marcus bamberg” as the registrant of the disputed domain name. Thus, the Panel finds that Respondent is not commonly known by the disputed domain name. See LawyerLocate.ca Inc v. J Kirby Inwood / CanLaw, FA 1496334 (Nat. Arb. Forum June 20, 2013), where the panel did not find for the respondent under Policy ¶ 4(c)(ii) when no evidence in the record tied the respondent’s name with the domain name.
Complainant alleges that Respondent is using the <slaughterandmay-uk.com> domain name to conduct an email phishing scheme to redirect third-party payments meant for Complainant. The Panel notes that the disputed domain name is used in an email with “Slaughter and May” letterhead to solicit payment to a bank account “more suited to your needs.” The Panel finds that this use of the disputed domain name is fraudulent and is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). See Caterpillar Inc. v. Iroiran Co., FA 1059302 (Nat. Arb. Forum Sept. 14, 2007) (“Respondent is using the <caterpillar-business.com> domain name to operate a website that fraudulently holds itself out as Complainant . . . Respondent further seeks to gain access to Internet users’ E-Gold account information, presumably for nefarious purposes.”)
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Respondent is using the disputed domain name to phish for payments by posing as Complainant, clearly in bad faith. See Juno Online Servs., Inc. v. Iza, FA 245960 (Nat. Arb. Forum May 3, 2004) (finding bad faith registration and use pursuant to Policy ¶ 4(c)(iii) where a domain name “is confusingly similar to Complainant’s mark, redirects Internet users to a website that imitates Complainant’s billing website, and is used to fraudulently acquire personal information from Complainant’s clients”). The Panel finds that Respondent’s use of the <slaughterandmay-uk.com> domain name is fraudulent and constitutes bad faith under Policy ¶ 4(c)(iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(c)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <slaughterandmay-uk.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: July 29, 2014
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