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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Law Society v. S.H. INC

Case No. D2009-1520

1. The Parties

The Complainant is The Law Society of London, United Kingdom of Great Britain and Northern Ireland, represented by Rouse Legal, United Kingdom.

The Respondent is S.H. INC of Belize City, Belize, internally represented.

2. The Domain Name and Registrar

The disputed domain name <lawsociety.com> is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 10, 2009. On November 10, 2009, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On November 11, 2009, eNom 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 November 18, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response December 8, 2009. On December 11, 2009, the Center informed the parties that the email address it used for the purposes of notifying the Respondent the Complaint appears to be different from the email address the concerned registrar confirmed the Respondent used when registering the disputed domain name. In light of the circumstances, the Respondent was requested to indicate to the Center whether it was interested to participate in the proceedings. The Response was filed with the Center on December 11, 2009.

The Center appointed Sir Ian Barker, Warwick Smith and Ross Carson as panelists in this matter on January 12, 2010. The Panel finds that it was properly constituted. Each member of 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 the representative and regulatory body for the solicitors` branch of the legal profession in England and Wales. It was founded in 1825 under the name of "The Law Institution". It currently operates under a Royal Charter first granted in 1831. A supplemental charter in 1903 provided that it was to be called by the name and style of "The Law Society".

The Complainant is the proprietor of a United Kingdom registered trademark THE LAW SOCIETY registered on December 26, 1997 in relation to goods and services in classes 16, 35, 41 and 42. Under the heading "Other Particulars Special Circumstances" on the trademark printout, there is a statement "Proceeding because of distinctiveness acquired through use".

The Complainant has been operating under the name "The Law Society" since 1903 as the regulatory body for solicitors in England and Wales and as a provider of services for its members.

The Complainant has operated a website under the domain name <lawsociety.org.uk> since 1997. It also publishes a weekly journal called "The Law Society Gazette".

The disputed domain name was registered on January 6, 1999.

It appears from the Respondent`s web page that it is a provider of Internet directory services. Some sponsored "click-through" links offer legal services. Included in the sponsored listing on printouts from the Respondent`s websites are links to various kinds of lawyers practicing in the United Kingdom, such as immigration or conveyancing solicitors.

5. Parties` Contentions

A. Complainant

The disputed domain name is confusingly similar to a trademark in which the Complainant has rights. Not only does the Complainant allege that it has a registered trademark, but it also claims a common law mark by virtue of its activities as the regulator of solicitors and a provider of services to its members for more than a century.

The Complainant is always known by the name "The Law Society". Although there are many other law societies throughout the world providing similar services for their members, these will have some national, local, state or provincial identifier. The Complainant is the only law society which does not have such an identifier.

The Respondent has no rights or legitimate interests in respect to the disputed domain name. None of the provisions of paragraph 4(c) apply to the Respondent. It is not known by the name "Law Society".

The Respondent is not making a bona fide offering of goods and services. It is relying on the fact that a substantial proportion of visitors to the Respondent`s website will be doing so in the expectation of arriving at the website of a law society. If they are in the United Kingdom, they would be likely to believe that they are visiting the Complainant`s website. The use of the disputed domain name cannot give rise to any rights or legitimate interests for the purposes of paragraph 4(a)(ii) of the Policy – See Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912.

The disputed domain name was registered and is being used in bad faith. This can be inferred from the use of the disputed domain name which is calculated to deceive Internet users in substantial numbers, particularly those intending to visit the site of a law society. The Respondent is targeting the United Kingdom where the Complainant operates by virtue of the links to United Kingdom lawyers. The Respondent must have known that the disputed domain name represented an association of lawyers.

It is no answer for the Respondent to claim that it does not have any control over the automated links which are the responsibility of the entity hosting the page. If a registrant is seeking to exploit a domain name commercially, it must have knowledge of the use to which it is being put and to have the power to control the use – See the law in Villeroy & Boch AG v. Mario Pingerna, Supra and Grundfos A/S v. Texas International Property Associates, WIPO Case No. D2007-1448.

There is a particular duty on professional and sophisticated domainers such as the Respondent who exploit and trade in domain names for commercial gain to ensure they do not infringe the trademarks of third parties – See Grundfos A/S v. Texas International Property Associates, Supra.

Even if the Respondent were targeting a society of lawyers in general, that is not fatal to the Complainant`s case – See Boy Scouts of America v. Salvador Precklor Arias, WIPO Case No. D2008-1367 where a respondent was held to have had no right to a name which could legitimately have been used by a number of Boy Scout organizations worldwide.

B. Respondent

According to the Respondent, the disputed domain name is a simple generic domain name which it has owned for some time. It does not infringe on anyone`s trademarks. This is an obvious case of reverse hijacking of a generic domain. The Respondent claims it has a spent a considerable amount on this generic domain "never even considering that anyone would try and claim it in a UDRP case".

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(i) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The disputed domain name is confusingly similar to the Complainant`s registered trademark. The addition of the definite article in the trademark is of no consequence.

The disputed domain name is also confusingly similar to the common law mark under which the Complainant has operated since 1903 as the well-known regulator and professional association of the solicitors` branch of the profession in England and Wales.

Accordingly, the Complainant has proved the first limb of paragraph 4(a).

B. Rights or Legitimate Interests

The Complainant gave the Respondent no rights in respect of its registered trademark, and the Respondent is clearly not "commonly known by" the domain name (a defense under paragraph 4(c)(ii) of the Policy). The Respondent has not sought to make out any of the other defenses provided at paragraph 4(c) of the Policy.

In those circumstances, the evidentiary onus shifts to the Respondent to show that it has some other right or legitimate interest in the domain name (refer to the Center`s online document "WIPO Overview of WIPO Panel Views on Selected UDRP Questions" (the "Overview`), at paragraph 2.1).

The Respondent has failed to discharge that onus. It is no answer to simply assert, as the Respondent does, that the domain name consists of a generic expression. Even if that were so, the critical question of whether the Respondent registered (and has been using) the domain name in order to profit from the claimed generic value of the expression, or whether its intention was to take advantage of the Complainant`s rights in the expression, would remain (refer to Allocation Network GmbH v Steve Gregory, WIPO Case No. D2000-0016, and the cases mentioned below that case at paragraph 2.2 of the Center`s online "WIPO Panel Views on Selected UDRP Questions" (the "Overview`), " document). In the absence of any other defense raised by the Respondent, and for the reasons which are set out in the next part of this decision, the Panel is satisfied that the Respondent`s intention was indeed to take advantage of the Complainant`s rights in its mark.

The operating of a "click-through" site to obtain revenue is not a bona fide business in those circumstances. The Complainant has made out the second limb of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

The Panel is able easily to infer bad faith registration and use.

The Respondent stated in the Response that the domain name is a simple generic domain name that the Respondent has owned for years. If so, the simple "generic" domain name would presumably relate to a law society or law societies. The Respondent is clearly not a law society.

The Complainant, on the other hand, is the oldest or one of the oldest law societies in the world, having carried on governance of lawyers in the United Kingdom as "The Law Society" since 1903. The Complainant is the owner of a trademark registration for the trademark THE LAW SOCIETY in the United Kingdom which predates the date of registration of the disputed domain name in 1999. Furthermore, as a result of continuous use of the trademark THE LAW SOCIETY by the Complainant for over a hundred years in the United Kingdom, the Complainant had common law rights in the trademark THE LAW SOCIETY before the disputed domain name was registered. And on the evidence, the Complainant appears to be the only law society which is known simply as "The Law Society", without any geographic or other qualifier.

The Respondent did not deny knowledge of the Complainant (or of the Complainant`s United Kingdom trademark registration) prior to the date that the Respondent purchased the disputed domain name from a previous owner, some time after the date of registration of the disputed domain name in 1999. The registration of the disputed domain name (in terms of whether or not it was registered in bad faith) must be considered at the date the Respondent acquired the disputed domain name, and not when it was registered by somebody else in 1999.

The exact date that the Respondent acquired the disputed domain name is within the Respondent`s knowledge and control. Having regard to the summary nature of UDRP proceedings, the precise date that the Respondent acquired the disputed domain name is not available to the Complainant, although the date is certainly subsequent to the date of the original registration of the disputed domain name on January 6, 1999 (the Respondent says that it paid a "considerable amount" for it), and it may have been in the period December 2007 to June 2008 as the Complainant contends. Having regard to the proof provided by the Complainant, and having regard to the summary nature of these proceedings, it was incumbent on the Respondent, if it contended that it had no knowledge of the Complainant`s registered or common law trademark rights at the date it acquired the disputed domain name, to establish the date that it acquired the disputed domain name, and to provide copies of webpages or related evidence supporting its position. The Respondent has not done so.

The Complainant has established that the Respondent is using the disputed domain to provide links to websites advertising the services of various kinds of lawyers practising in the United Kingdom, such as immigration and conveyancing lawyers. The obvious inference is that the Respondent is doing so in order to derive "click-through" income. Indeed, the Respondent`s interest in acquiring the disputed domain name could only have been to derive such income, pending an eventual sale at a profit. (Why else would an entity which is not a law society, and has no apparent connection with any law society, choose the disputed domain name?) In registering and using the disputed domain name for that purpose, the Respondent could not have failed to appreciate that it would attract to its website a significant number of Internet users looking for the Complainant.

As noted above, the Respondent did not deny knowledge of the Complainant, nor responsibility for placing or approving numerous links to lawyers in the United Kingdom on the website. The Respondent has elected not to provide information, which was within its exclusive control, relating to the date and circumstances of its acquisition of the disputed domain name, and the circumstances in which the United Kingdom legal links came to be placed on the Respondent`s website. In those circumstances, the Panel can only sensibly infer that the relevant intention must have been to create confusion with the Complainant`s mark, with a view to commercial gain (in the form of increased "pay- per-click" or other advertising revenue). Therefore, the third limb of paragraph 4(a) has been proved – the Respondent`s conduct falls squarely within the example of bad faith registration and use provided at paragraph 4(b)(iv) of the Policy.

The Respondent`s inferred claim of reverse domain name hijacking must be dismissed as being totally devoid of merit.

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 <lawsociety.com> be transferred to the Complainant.

Dated: January 22, 2010