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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Osborne Clarke v. James Adefuye

Case No. D2009-1228

1. The Parties

The Complainant is Osborne Clarke of Bristol, United Kingdom of Great Britain and Northern Ireland.

The Respondent is James Adefuye, Osun Nigeria.

2. The Domain Name and Registrar

The disputed domain name <osborneclarke.org> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 15, 2009. On September 16, 2009, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain name. On September 17, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 23, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was October 13, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent`s default on October 16, 2009.

The Center appointed GГ¶khan GГ¶kçe as the sole panelist in this matter on October 26, 2009. 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, Osborne Clarke, is an established and recognised law firm that advises market leading and high performing organisations on their UK and international legal needs from its City, national and European offices and the Osborne Clarke Alliance.

The Complainant has been listed as a leading law firm in publications such as The Legal 500, Legal Week.

The Complainant owns and uses the trademark OSBORNE CLARKE which was registered in the European Union on September 18, 2008, in the Russian Federation on June 3, 2003, and in the Republic of Estonia on April 14, 2003.

The Complainant is the registered owner of several domain names which incorporate its trademark including:

- <osborneclarke.com> created on March 17, 1998 as evidenced at Annex E

- <osborneclarke.net> created on June 7, 2007 as evidenced at Annex E

- <osborne-clarke.co.uk> created before August 1996 as evidenced at Annex E

- <osborneclarke.co.uk> created on March 17, 1998 as evidenced at Annex E

- <osborneclarke.info> created on July 6, 2007 as evidenced at Annex E

- <osborneclarke.de> created on as evidenced at Annex E

- <osborneclarke.biz> created on July 6, 2007 as evidenced at Annex E

The Respondent registered the disputed domain name <osborneclarke.org> on August 5, 2009.

5. Parties` Contentions

A. Complainant

In accordance with Paragraph 4(b)(i) of the Policy, the Complainant requests that the domain name <osborneclarke.org> be transferred to the Complainant.

The Complainant submits the grounds for these proceedings are listed in Paragraph 4(a) of the Policy.

Identical or Confusingly Similar

The Complainant submits that the disputed domain name is identical or at the very least confusingly similar to the Complainant`s registered trademarks, name and registered domain names, except for the addition of the suffix ".org"

Rights or Legitimate Interests

The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name as its registration post-dates all of the Complainant`s trademark registrations.

The Complainant notes the disputed domain name resolves to a website that contains material that has been copied from the Complainant`s website "www.osbourneclarke.com" as evidenced at Annex F and G. The Complainant contends that the Respondent is not using the website for legitimate purposes or with an intention to provide a bona fide offering of goods and services.

The Complainant states that it has come to its attention that the Respondent is dishonestly circulating an e-mail misleading the public as to his identity, representing himself as Mr. Paul Anning and is using the disputed domain name to assist in this deception. The e-mail is exhibited at Annex H. The Complainant submits that Mr. Paul Anning is partner of the Complainant and exhibits his profile details at Annex I and his witness statement at Annex J. Mr. Anning states that he did not consent or otherwise authorise the Respondent to use his name, the contact details provided in the e-mail are not his contact details and that he became aware of the e-mail when he was alerted to it by a member of the public.

The Complainant did not grant a license or otherwise authorise the Respondent to register the disputed domain name or to use the mark OSBORNE CLARKE.

Registered and Used in Bad Faith

The Complainant submits the Respondent registered and is using the disputed domain name in bad faith. The Complainant notes that the disputed domain name is identical or at least confusingly similar to the Complainant`s trademark and the Respondent owns no trademark or other rights in the OSBORNE CLARKE mark or any similar mark.

The Complainant asserts that save for the generic suffix, the disputed domain name is identical to the Complainant`s trademark, business name and commercial website. The Complainant further contends that the disputed domain name was registered in bad faith as there appears to be no other reason why the Respondent would have registered the disputed domain name.

The Complainant notes that the disputed domain name resolves in a website that contains text copied from the Complainants "www.osborneclarke.com" website. The Complainant avers that the Respondent is using the disputed domain name to mislead recipients of the Respondents e-mail and that the offer contained therein originates from a bona fide law firm by creating a likelihood of confusion that the Complainant is, or is associated with, the Respondent.

The Complainant contends that holding a domain name knowing it reflects someone else`s trademark without good reason is bad faith use. Furthermore, the Respondent must have known of the Complainant`s trademark and website as the e-mail refers to an existing partner at Osborne Clarke, Paul Anning and the disputed domain name resoles in a website containing text copied from the Complainant`s website. The Complainant asserts that the Respondent is using the disputed domain name to deceive members of the public who attracted to the trade name or as a result of receiving the e-mail from the Respondent.

The Complainant submits that by using the domain name, the Respondent has intentionally attempted to attract for commercial gain, Internet users to the Respondent`s website by creating a likelihood of confusion with the Complainant`s trademark and other rights as to the source, sponsorship, affiliation, or endorsement of the Respondent`s website or location or of the service on the Respondent`s website or location.

The Complainant states that it is believed the Respondent is using the e-mail in order to obtain identification documents from the public and that such documents are being used fraudulently.

B. Respondent

The Respondent did not reply to the Complainant`s contentions. Pursuant to Paragraph 5(e) of the Rules, if a respondent does not submit a response, in the absence of exceptional circumstances, the panel shall decide the dispute based upon the complaint.

However, failure to respond in a Policy proceeding does not constitute an admission of any pleaded matter. The Panel will proceed to evaluate the Complainant`s evidence and his own examination of the Respondent`s website against the requirements of Paragraph 4(a) of the Policy, Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Policy simply requires the Complainant to demonstrate that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.

The Panel is satisfied that the Complainant is the registered owner of the trademark OSBORNE CLARKE as evidenced in Annex D.

The disputed domain name is <osborneclarke.org>, the addition of a gTLD suffix such as ".org" may be disregarded for the determination of confusing similarity, PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189. The Panel finds that the disputed domain name is virtually the same as the Complainant`s trademark as the disputed domain name wholly incorporates the Complainant`s trademark which is sufficient to establish identity or confusing similarity, Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr. WIPO Case No. D2000-1525.

The Panel recognises the Complainant`s rights and concludes that the disputed domain name in issue is identical or confusingly similar to a trademark in which the Complainant has rights, and therefore, the Complainants have succeeded on this first element under the Policy.

B. Rights or Legitimate Interests

In accordance with Paragraph 4(a)(ii), the Complainant must prove that the Respondent has no rights or legitimate interests in respect of the disputed domain names. Although the Policy states that the Complainant must prove each of the elements in paragraph 4(a), it is often observed that it is difficult for a complainant to prove a negative and it has therefore generally accepted under the Policy that, once a Complainant has presented a prima facie case of a Respondent`s lack of rights or legitimate interests in a domain name, the burden shifts to the Respondent. The Policy at Paragraph 4(c) provides various ways in which a Respondent may demonstrate rights or legitimate interests in the domain name.

The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name and that the Respondent is not using the website for legitimate purposes or with an intention to provide a bona fide offering of goods and services.

The Panel visited the domain name on November 2, 2009 which resolved in page displaying a message "This Account Has Been Suspended". In the absence of any other evidence, the Panel relies on the evidence of screenshots provided by the Complainant at Annex F. The Complainant has also exhibited screenshots of its own official website content at Annex G. The screenshots exhibited by the Complainant evidence that the disputed domain name resolved in a site that has text copied from the Complainant`s official website. The Respondent is using the domain name solely to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with the Complainant`s registered trademark as to the source, sponsorship, affiliation or endorsement of the Respondent`s website.

The Complainant submits that the Respondent has no rights or legitimate interest in the disputed domain name. In light of the e-mail, exhibited at Annex H, in which the Respondent purports to be a current partner of the Complainant, the Respondent is using the disputed domain name to bolster his deception and has misappropriated the reputation and commercial value of the Complainant`s OSBORNE CLARKE trademark. There is nothing in the record to suggest that the Respondent, or any business operated by him, is commonly known by the disputed domain name.

This is sufficient in the Panel`s opinion to constitute a prima facie case, Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415, WIPO Overview of WIPO Panel Views on Selected URDP Questions, paragraph 2.1. In the absence of a response, the Respondent was unable to demonstrate a legitimate interest or right in the disputed domain names and therefore the Panel accepts the Complainants` contentions as true, De Agostini S.p.A v. Marco Cialone, WIPO Case No. DTV2002-0005. The Panel therefore concludes that the Respondent has not satisfied Paragraph 4(c) of the Policy and concludes that the Respondent has no rights or legitimate interests in the disputed domain name.

The requirements of 4 (a)(ii) of the Policy are fulfilled and consequently the Panel finds in favour of the Complainants on the second element.

C. Registered and Used in Bad Faith

According to Paragraph 4(a)(iii) of the Policy, the Complainant must prove is that the disputed domain name has been registered and is being used in bad faith.

The Complainant`s trademark OSBORNE CLARKE was registered long before the Respondent`s registration of the disputed domain name in August 2009.

Considering the Respondent`s use of the disputed domain name the Panel finds that in all likelihood the Respondent was aware of the Complainant`s trademark and commercial reputation, before registering the disputed domain name. The Panel finds that at the time of registration, the Respondent must have been aware that any legitimate commercial use of the domain name would result in a violation of the Complainant`s trademark rights, suggesting that there was never an intention of good faith use, Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

There is no reply from the Respondent, while this is not conclusive of bad faith it is a consideration to be taken into account to support the Complainant`s contentions of bad faith. There is no suggestion that the Respondent had any intention of legitimate use, that he enjoys a connection to the domain names or that there is conceivable good faith use for the disputed domain name.

After examining all circumstances surrounding the registration and use of the domain name, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith. Accordingly the Panel finds in favour of the Complainant on the third element of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <osborneclarke.org> be transferred to the Complainant.


GГ¶khan GГ¶kçe
Sole Panelist

Dated: November 9, 2009

 

Источник информации: https://internet-law.ru/intlaw/udrp/2009/d2009-1228.html

 

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