Slaughter and May v. A Comer
Claim Number: FA1406001567446
Complainant is Slaughter and May (“Complainant”), represented by David Ives, London, UK. Respondent is A Comer (“Respondent”), Great Britain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <slaughterandmay.pro>, registered with Mesh Digital Limited.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 30, 2014; the National Arbitration Forum received payment on July 11, 2014.
On July 14, 2014, Mesh Digital Limited confirmed by e-mail to the National Arbitration Forum that the <slaughterandmay.pro> domain name is registered with Mesh Digital Limited and that Respondent is the current registrant of the name. Mesh Digital Limited has verified that Respondent is bound by the Mesh Digital Limited 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 July 14, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 4, 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.pro. Also on July 14, 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 August 6, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho Hyun Nahm, Esq. 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
i. Complainant, Slaughter and May, has been using the SLAUGHTER AND MAY mark in commerce for many years in connection with the provision of legal services.
ii. Complainant has a valid registration with the United Kingdom Intellectual Property Office (“UKIPO”) for the SLAUGHTER AND MAY mark (Reg. No. 1,363,447, registered December 14, 1990).
iii. The disputed domain name is confusingly similar to the mark in which Complainant has rights.
i. Respondent is attempting to pass itself off as Complainant through use of the disputed domain name.
i. Respondent is using the disputed domain name for commercial gain through reliance on confusion or mistake by redirecting potential Complainant customers to it’s own website or other online locations.
B. Respondent
a. Respondent has not filed a response to the case
b. Respondent registered the disputed domain name <slaughterandmay.pro> on February 18, 2012.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
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.”).
Complainant asserts that it has been using the SLAUGHTER AND MAY mark in commerce since 1988 in connection with the sale of legal services. Complainant alleges that it has a valid registration with the UKIPO for the SLAUGHTER AND MAY mark (Reg. No. 1,363,447, registered December 14, 1990). See Compl. Attached Ex. 1. The Panel determines that Complainant’s valid registration of the SLAUGHTER AND MAY mark with the UKIPO shows that it has the rights in the mark pursuant to Policy ¶ 4(a)(i). See Royal Bank of Scot. Group plc v. TRB, FA 622345 (Nat. Arb. Forum Feb. 22, 2006) (“The Panel accepts Complainant’s registration of the THE ROYAL BANK OF SCOTLAND mark with the United Kingdom Patent Office as evidence of Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”).
Complainant contends that the disputed domain name is confusingly similar to the mark in which Complainant has rights. The Panel sees that the disputed domain name <slaughterandmay.pro> encompasses the entirety of Complainant’s SLAUGHTER AND MAY mark, with the mere addition of a generic top-level domain (“gTLD”) “.pro” to the mark. The Panel notes that the addition of a gTLD does not adequately distinguish the disputed domain name from the trademark in which Complainant has rights. See Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”). Accordingly, the Panel holds that the disputed domain name <slaughterandmay.pro> is confusingly similar to the SLAUGHTER AND MAY mark in which Complainant has rights pursuant to Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then 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.”).
The Panel agrees that while Complainant has failed to even allege that Respondent is not commonly known by this domain name, there is in fact no evidence to suggest Respondent has been known by this domain name. Therefore, the Panel concludes that Respondent has no rights in this domain name under the parameters of Policy ¶ 4(c)(ii). See LawyerLocate.ca Inc v. J Kirby Inwood / CanLaw, FA 1496334 (Nat. Arb. Forum June 20, 2013) (“Respondent’s name is J Kirby Inwood and his organization’s name is CanLaw. There is no evidence Respondent is known by the Domain Names nor by the names Lawyerlocate or Lawyerlocate.ca.”).
Complainant argues that Respondent is attempting to pass itself off as Complainant through use of the disputed domain name. The Panel notes that “passing off” has been found to not be a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was 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) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website). Accordingly, the Panel agrees that Respondent is using the disputed domain name to pass itself off as Complainant, and thus the Panel finds that Respondent lacks rights and legitimate interests in the SLAUGHTER AND MAY mark.
Complainant urges that Respondent is using the disputed domain name for commercial gain through reliance on confusion or mistake by redirecting potential Complainant customers to its own website or other online locations. The Panel notes that the use of a disputed domain name for commercial gain can lead to an inference of registration and use in bad faith pursuant to Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). The Panel agrees that Respondent is using the disputed domain name for commercial gain through reliance on confusion or mistake, and that Respondent likely profits from the resulting confusion, and thus the Panel determines that Respondent has registered and is using the disputed domain name in bad faith.
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.pro> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: August 19, 2014
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