WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bryan Cave Leighton Paisner LLP v. WhoisGuard, Inc. / Ijoba Money

Case No. D2019-2035

1. The Parties

The Complainant is Bryan Cave Leighton Paisner LLP, United States of America (“United States”), internally represented.

The Respondent is WhoisGuard, Inc., Panama / Ijoba Money, Nigeria, self-represented.

2. The Domain Name and Registrar

The disputed domain name <bclpllaw.com> (the “Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 20, 2019. On August 20, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same date, 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 August 30, 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 September 3, 2019. The Center received an informal email communication from the Respondent on September 3, 2019. The Complainant filed an amendment to the amended Complaint on September 20, 2019.

The Center verified that the Complaint together with the amended Complaint and the amendment to 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 September 23, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 13, 2019. No further communication was received from the Respondent. Accordingly, the Center notified the Parties on October 14, 2019, that it would proceed to panel appointment.

The Center appointed Ian Lowe as the sole panelist in this matter on October 24, 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.

4. Factual Background

The Complainant is an international law firm with more than 1,400 lawyers in 31 offices around the world, including in North America, Europe, the Middle East and Asia. Its predecessor firm was founded in 1873 in St Louis, Missouri, United States, and the Complainant was named Brian Cave LLP until April 2018 when it adopted its current form and changed its name as a result of its merger with Berwin Leighton Paisner LLP.

The Complainant is the proprietor of a number of trademark registrations comprising its initials “BCLP” including United Kingdom trademark number 3263851 BCLP registered on January 26, 2018, International trademark number 1424544 BCLP registered on March 1, 2018, designating a number of territories including the European Union, and United Kingdom trademark number 3263855 BCLP LAW registered on January 26, 2018.

From 2001 until April 2018, Berwin Leighton Paisner was commonly referred to as “BLP” and acquired substantial goodwill in that name as a result. It promoted its legal services on its website at “www.blplaw.com”. Following the merger in April 2018, the name and mark BCLP was adopted to preserve the goodwill in “BLP”, and since then the combined firm has acquired a substantial reputation in the name BCLP. The Complainant now promotes its services at the website “www.bclplaw.com”.

The Domain Name was registered on July 9, 2019. It resolves to a web portal of lawyer related links to other web pages each comprising a number of hyperlinks to a variety of websites including those of competitors of the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is confusingly similar to its BCLP and BCLP LAW trademarks (the “Marks”), that the Respondent has no rights or legitimate interests in respect of the Domain Name, and that the Respondent registered and is using the Domain Name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.

B. Respondent

The Respondent did not reply formally to the Complainant’s contentions, but sent an email to the Center on September 3, 2019, in response to the Complainant’s filing of the Amended Complaint, stating:

“We confirm the receipt to this email, and amendment will be made and this dispute domain will be deleted.”

6. Discussion and Findings

For this Complaint to succeed in relation to the Domain Name, the Complainant must prove that:

(i) the Domain Name is identical or confusingly similar to a trademark 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.

A. Identical or Confusingly Similar

The Complainant has uncontested rights in the Marks, both by virtue of its trademark registrations and as a result of the goodwill and reputation acquired through its use of the Marks over the last 18 months. Ignoring the generic Top-Level Domain (“gTLD”) “.com”, the Domain Name comprises the entirety of the BCLP LAW mark with the insertion of the single letter “l” and the entirety of the BCLP mark with the addition of the word “law” and the additional letter “l”. In the view of the Panel, these differences do not detract from the confusing similarity between the Domain Name and the Marks. Accordingly, the Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Complainant has made out a strong prima facie case that the Respondent could have no rights or legitimate interests in respect of the Domain Name. The Respondent has used the Domain Name not in connection with a bona fide offering of goods or services, but for a website with links to other webpages featuring pay-per-click links to third party websites offering legal services similar to those provided by the Complainant and related services. There is no suggestion that the Respondent has ever been known by the Domain Name. The nature of the Domain Name suggests that it has been registered for the purposes of what is commonly known as typosquatting. The Respondent has chosen not to respond formally to the Complaint or to take any steps to counter the prima facie case established by the Complainant. In its informal email to the Center referred to above the Respondent indicated that it proposed to “delete” the Domain Name. In the circumstances, the Panel finds that the Respondent does not have any rights or legitimate interests in respect of the Domain Name.

C. Registered and Used in Bad Faith

In light of the use to which the Domain Name has been put, and since the Domain Name comprises what the Panel considers clearly to be a misspelling of the BCLP LAW mark, the Panel is in no doubt that the Respondent had the Complainant and its rights in the Marks in mind when it registered the Domain Name. The Respondent has used the Domain Name for pay-per-click links to third party websites. In the Panel’s view, the legitimate inference is that the Respondent undertook such activity with a view to commercial gain, intending to attract Internet users mistyping “bclplaw” to the webpage to which the Domain Name resolves by creating a likelihood of confusion with the Marks and as to the affiliation or endorsement of that webpage. Accordingly, the Panel considers that this amounts to paradigm bad faith registration and use for the purposes of the Policy.

7. Decision

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 <bclpllaw.com> be transferred to the Complainant.

Ian Lowe
Sole Panelist
Date: November 1, 2019