Lewis Silkin LLP v. Heinz Siepenkötter / Siepenkötter kg
Case No. D2014-1196
1. The Parties
Complainant is Lewis Silkin LLP of London, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by Louise Sargeant, UK.
Respondent is Heinz Siepenkötter / Siepenkötter kg of Gladbeck, Germany.
The disputed domain name (the “Domain Name”) is registered with united-domains AG (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 9, 2014. On the same day, the Center transmitted a request to the Registrar for registrar verification by email. On July 11, 2014, the Registrar transmitted its verification response to the Center by email, confirming that Respondent was listed as the registrant and providing contact details. On the same day, the Center replied to the email of the Registrar, requesting it to indicate the language of the Registration Agreement.
On July 14, 2014, the Registrar informed the Center that the language of the Registration Agreement for the Domain Name was German. Accordingly, the Center requested Complainant to provide at least one of the following: 1) satisfactory evidence of an agreement between Complainant and Respondent to the effect that the proceedings should be in English; or 2) submit the Complaint translated into German; or 3) submit a request for English to be the language of the administrative proceedings. On the same day, Complainant submitted a request that English be the language of the administrative proceedings. Respondent did not reply to the request and also remained silent with respect to the language of the proceedings.
The Center verified that 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”).
As the Domain Name was set to expire on September 7, 2014, the Center formally requested the Registrar, on July 14, 2014, to confirm the lock status of the Domain Name until the UDRP proceeding was finished and asked whether any action was required by the Parties to keep the Domain Name under Registrar lock. On July 15, 2014, the Registrar informed that the lock shall remain in effect until conclusion of the UDRP proceedings and that no action was required by Complainant.
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint in both English and German, and the proceedings commenced on July 25, 2014. Pursuant to paragraph 5(a) of the Rules, the due date for the Response was August 14, 2014. Respondent failed to submit any response. Accordingly, the Center notified Respondent’s default.
On August 21, 2014, the Center appointed Bernhard F. Meyer as the Sole Panelist in this matter. The Panelist submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7, and finds that it was properly constituted.
The disputed domain name was registered on September 7, 2013.
Pursuant to the Complaint, Complainant is a law firm originating back to 1952. Nowadays, it has acquired a substantial reputation in the UK and internationally.
Pursuant to evidence attached to the Complaint, Complainant is the registered holder of the Community trademark LEWIS SILKIN filed under no. 010516227, registered on June 18, 2012, in classes 35, 41, and 45.
5. Parties’ Contentions
First, Complainant maintains that, to the best of its knowledge, the language of the Registration Agreement is English, a copy of which was provided as Annex B to its Complaint.
Secondly, Complainant claims that, in addition to the registered rights under the Community trademark, LEWIS SILKIN also has extensive worldwide unregistered (common law) rights in the term “Lewis Silkin”, as a result of its goodwill (spanning over 50 years) and its extensive use of such mark. In Complainant’s view, examples of use include Complainant’s registration and continued use of the top-level domain names, such as , registered on March 28, 1997, and various marketing materials.
Complainant alleges that Respondent’s Domain Name comprises the words “Lewis” and “Silkin” with only a hyphen between these words and, therefore, is identical or so similar so as to leave no doubt that it is confusing to the trademark and common law rights in the name “Lewis Silkin”. According to Complainant, there is a risk that Internet users may believe that there is a connection between the Domain Name and the Complainant and Complainant’s services. Besides, Complainant argues that “Lewis Silkin” is neither a common word or dictionary term, nor an ordinary name. Rather it is a unique name identifying the founding partner of the law firm, Mr. Lewis Silkin.
Thirdly, Respondent should be considered to have no rights or legitimate interests with respect to the Domain Name as Respondent is not in any way connected to Complainant and is not known to have any bona fide intention to use the Domain Name. Respondent has no justification for registering a domain name which is identical or similar to Complainant’s company name and which is confusing to the trademark LEWIS SILKIN and common law rights of Complainant.
Fourthly, Complainant contends that the Domain Name was registered and is being used in bad faith. Respondent knew or should have known of Complainant prior to registering the Domain Name, because Complainant’s trademark and common law rights are widely known and were in wide use on the Internet at the time the Domain Name was registered. According to Complainant, a simple search of the name “Lewis Silkin” by the Google search engine would have revealed that the Domain Name was identical or similar to the Complainant’s trademark and common law rights.
Complainant alleges that Respondent registered the Domain Name with the clear intention of attracting Internet users to its website for commercial gain, by creating a likelihood of confusion with Complainant’s trademark, and to misleadingly divert consumers and to tarnish Complainant and its trademark. In particular, Complainant points out that Respondent was abusively sending out emails to Internet users, hiding behind Complainant’s name and address, i.e. from […].email@example.com. These emails claimed that the recipient may be entitled to some sort of inheritance from an allegedly deceased client of the sender. By doing so, Respondent clearly attempted to use the Domain Name in a fraudulent manner.
Complainant informs the Panel that it reported the incident to the Action Fraud Helpline on September 16, 2013 and obtained a crime reference number. Furthermore, Complainant submits evidence that it requested the Domain Name host Internet provider as well as the Registrar, to close down the website to which the Domain Name was pointing and to prevent any further mailings from this account. On September 17, 2013, the Domain Name host Internet provider informed Complainant that the Domain Name was locked and that no further email deliveries from this account were being made. Complainant also notes that, at the time of writing the Complaint, the Domain Name did no longer point to any website.
Lastly, Complainant argues that Respondent’s identity was hidden behind a domain privacy service. Respondent’s identity was only revealed when Complainant’s solicitors wrote to the privacy service, requesting it be suspended on the grounds of a breach of the policy through copyright infringement and potential fraud. Complainant believes that Respondent hid behind the domain privacy service to make it difficult for any trademark owner to identify or contact him and to frustrate a legal or Policy complaint.
As a result, Complainant requests the transfer of the Domain Name to Complainant.
As mentioned above, Respondent was duly notified in accordance with paragraph 2(a) and 4(a) of the Rules, but failed to submit any response in accordance with the requirements under the Policy.
6. Discussion and Findings
Pursuant to paragraph 11(a) of the Rules, the language of the administrative proceeding shall be the one of the Registration Agreement, unless otherwise agreed by the Parties, or otherwise specified in the Registration Agreement, all subject to the authority of the Panel to make a different determination in paying due regard to the circumstances of the administrative proceeding.
Upon request of the Center, Complainant requested that English be the language of the administrative proceedings and referred to the Registrar’s website “www.united-domains.de/download/Registration-Agreement-com-net.pdf” presenting the Registration Agreement in English. Since Respondent did neither reply to Complainant’s request, nor participate in any way in these administrative proceedings and in light of the circumstances of the case, the Panel uses its discretionary power and allows the language of these administrative proceedings to be English.
According to paragraph 4(a) of the Policy, Complainant must prove that all of the three following elements are present:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interest in respect of the disputed domain name; and
(iii) The disputed domain name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainant established that it has been the registered owner of the Community trademark LEWIS SILKIN, filed under no. 010516227, in international classes 35, 41, and 45, since June 18, 2012. The registered trademark was in use and registered prior to the date of registration of the Domain Name on September 7, 2013.
The Domain Name furthermore incorporates the entirety of the words of Complainant’s trademark LEWIS SILKIN with a hyphen between the two words. Many UDRP decisions have found that domain names are confusingly similar to trademarks when the domain name incorporates the trademark in its entirety (see e.g. PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS), WIPO Case No. D2003-0696). The addition of a hyphen between the main elements of a trademark does not prevent a domain name from being considered identical or confusingly similar to that trademark (see Chateaux and Country v SA, Networkcouncil, WIPO Case No. D2011-0325; Rolls-Royce PLC v. Hallofpain, WIPO Case No. D2000-1709). Moreover, the generic top-level domain (“gTLD”) “.com” is negligible and may be disregarded under the test of confusing similarity, it is merely a technicality of the registration.
Thus, the Panel finds that Complainant successfully established the first element of the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
Complainant alleges and established a prima facie case that Respondent lacks any rights or legitimate interest in the Domain Name. It is the consensus view of UDRP panelists that once a complainant establishes a prima facie case, it is respondent’s responsibility to prove otherwise (see e.g. Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415; Inter-Continental Hotels Corporation v. Khaled Ali Soussi, WIPO Case No. D2000-0252).
In this case, Respondent is not participating and, hence, failed to prove any rights or legitimate interests in respect of the Domain Name. Such rights or legitimate interests are also not otherwise evident.
Thus, the Panel concludes that Complainant successfully satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b)(iv) of the Policy provides that the following situation, amongst others, evidence registration and use of a domain name in bad faith:
“By using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or services on Respondent’s website or location.”
The Panel takes account of the following facts alleged by Complainant and undisputed when making its decision in this regard: The trademark LEWIS SILKIN was shown to be widely known and intensely used by Complainant on the Internet for many years. Thus, it is reasonable to assume that Respondent had knowledge of Complainant’s trademark when registering the Domain Name on September 7, 2013. In addition, the content of Respondent’s email correspondence sent from the web account registered under the Domain Name shows that Respondent tried to create the impression in the market that these emails come from Complainant’s reputed law firm. The use of a domain name for the purpose of defrauding Internet users by operating a “phising” website is the clearest evidence of a bad faith registration and use of a domain name. The fact that a website is currently inactive does not contradict such a finding (see The Royal Bank of Scotland Group plc v. Secret Registration Customer ID 232883/Lauren Terrado, WIPO Case No. D2012-2093). In the present case, the email address used in connection with the website spread scam emails, illicitly trying to collect private or financial information from Internet users. The fact that Respondent was concealing its identity behind a domain privacy service, as evidenced by Complainant, is further proof that the registration and use of the Domain Name was not made in good faith (see Advance Magazine Publishers Inc. d/b/a Condé Nast Publications v. MSA, Inc. and Moniker Privacy Services, WIPO Case No. D2007-1743).
Therefore, the requirements of paragraph 4(a)(iii) of the Policy are equally and sufficiently made out and proven by Complainant to the Panel.
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 be transferred to the Complainant.
Bernhard F. Meyer
Date: August 26, 2014