The Complainant is Pestalozzi Attorneys-at-law Ltd, Switzerland, represented internally.
The Respondent is Name Redacted.
The disputed domain name, <pestalozzilaws.com> (the “Domain Name”), is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 12, 2019. On June 12, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 13, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 13, 2019 providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 17, 2019.
The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 21, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 11, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 12, 2019.
The Center appointed Tony Willoughby as the sole panelist in this matter on July 15, 2019. 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.
The registrant of the Domain Name used a privacy service when registering the Domain Name. The identity of the underlying registrant was disclosed by the Registrar in response to the Center’s registrar verification request. The Center’s invitation to the Complainant to amend the Complaint followed on from that disclosure. The issue relating to the identity of the Respondent and the Panel’s decision to direct that the Respondent’s name be redacted is dealt with in sections 4 and 6A below. Except where the context otherwise requires, all references in this decision to the “Respondent” are to be taken as references to the underlying registrant, whose true identity is unknown.
The Complainant is a Swiss law firm, which is the registered proprietor of Swiss trade mark registration No. 577391. The registered mark is a device mark in the shape of a square. The prominent textual elements are the name PESTALOZZI at the top and in smaller type the words ATTORNEYS AT LAW at the base. The application for the trade mark was filed on June 20, 2008. The trade mark was registered on October 1, 2008. The registration covers a variety of goods and services, particularly legal services. The Complainant is the proprietor of the domain name, <pestalozzilaw.com>, which it uses for both its website and email addresses.
The Domain Name was registered on April 27, 2019 by the Respondent using a privacy service and giving as his name the name of a member of the Complainant law firm. The Panel is satisfied on the evidence filed by the Complainant that the named member of the Complainant’s law firm had nothing to do with the registration or use of the Domain Name and, for the reason set out in section 6A below, has directed that the name of the Respondent as provided to the Center by the Registrar should be redacted.
On May 6, 2019, the Complainant received an email from an individual, whose name was redacted from the exhibited annex to the Complaint (Annex 5) reading: “I am trying to see if this is a legit email? Please just respond with a “no” or “yes” and please advise.” The email accompanying that email was from someone purporting to be the member of the Complainant’s law firm, informing the recipient of that email that a deceased relative of his had left an estate worth USD 18 million and seeking the recipient’s contact details.
Another annex to the Complaint (Annex 6) is an undated memorandum bearing a heading reproducing the Complainant’s trade mark and purporting to come from the member of the Complainant’s firm whose name was used for the registration of the Domain Name. A photograph of that individual taken from the Complainant’s website also features in the heading of the document. The sender’s email address was “Name [email protected]”. The memorandum set out the details of a complex scheme designed to draw the recipient in, the attraction being the offer of a share of a large sum of money.
The Complainant contends that the Domain Name is confusingly similar to the Complainant’s Swiss trade mark, details of which are to be found in section 4 above; that the Respondent has no rights or legitimate interests in respect of the Domain Name; and that the Domain Name was registered and is being used in bad faith.
The essence of the Complainant’s contentions is that the Domain Name was registered to defraud third parties into believing that emails featuring the Domain Name came from the Complainant.
The Respondent did not reply to the Complainant’s contentions.
As can be seen from the factual background set out above (section 4) this case appears to be a case where the individual identified on the Registrar’s WhoIs database is an innocent party unaware of the fraud being perpetrated in his name. In such cases, it is common practice for the Respondent’s name to be redacted from the published decision. The Panel proposes to follow the course of action adopted by the learned panel in Elkjøp Nordic A/S v. Name Redacted, WIPO Case No. D2013-1285 and set out as follows:
“As in Moncler S.r.l. v. Name Redacted, WIPO Case No. D2010-1677, Boehringer Ingelheim Pharma GmbH & Co. KG v. Name Redacted, WIPO Case No. D2012-0890 and Saudi Arabian Oil Company v. Name Redacted, WIPO Case No. D2013-0105, this is a case in which the Panel finds that the Domain Name was registered by a third-party without the involvement of the person identified in the WhoIs as the registrant of the Domain Name, against whom the Complaint was filed. The Panel has accordingly redacted the name of that person from the caption and body of this Decision. The Panel has attached as an Annexure to this Decision an instruction to the Registrar regarding transfer of the Domain Name that includes the name of that person so as to enable effect to be given to the Panel’s order. To this end, the Panel authorises the Center to transmit the Annexure to the Registrar and the parties, but further directs the Center and Registrar, pursuant to paragraph 4(j) of the Policy and paragraph 16(b) of the Rules, that the Annex to this Decision shall not be published in this exceptional case.”
Accordingly, the Panel has attached as Annex 1 to this Decision an instruction authorizing the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding and has indicated that neither the Decision nor Annex 1 shall be published in any way that makes the individual named as the registrant of the Domain Name on the Registrar’s WhoIs database identifiable as having had any connection with the registration or use of the Domain Name.
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(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.
The Complainant’s trade mark is a device mark, but the most prominent feature of the trade mark is the name PESTALOZZI. That name, being readily recognizable in the Domain Name, the Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights.
The circumstances surrounding the selection, registration and use of the Domain Name (see section 4 above) make it clear that the Respondent can have no rights or legitimate interests in respect of the Domain Name. The Domain Name incorporates the Complainant’s PESTALOZZI trade mark and replicates in substance the Complainant’s domain name <pestalozzilaw.com>, the Domain Name was registered in the name of a member of the Complainant law firm without his knowledge or consent and whose name was used in an email address featuring the Domain Name for emails falsely purporting to come from that individual. Moreover, the purpose of the emails was to obtain personal information from the recipients of the emails, people who might have been induced to provide it, given the identity of the purported sender.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
By the same reasoning the Panel finds that the Domain Name has been registered and is being used in bad faith within the meaning of paragraphs 4(a)(iii) and 4(b)(iv) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <pestalozzilaws.com>, be transferred to the Complainant.
Date: July 21, 2019
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