WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

CMS Cameron McKenna Nabarro Olswang LLP (“First Complainant”), CMS Legal Services EEIG (“Second Complainant”) v. John Fowler

Case No. D2019-2399

1. The Parties

The Complainants are CMS Cameron McKenna Nabarro Olswang LLP, United Kingdom (“UK”) and CMS Legal Services EEIG, Germany, represented by CMS Cameron McKenna Nabarro Olswang LLP, UK.

The Respondent is John Fowler, UK.

2. The Domain Name and Registrar

The disputed domain name <cmsnabarro.com> is registered with One.com A/S (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 2, 2019. On October 2, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 10, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainants on the same day providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on October 14, 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 October 15, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 4, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 5, 2019.

The Center appointed Steven A. Maier as the sole panelist in this matter on November 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.

4. Multiple Complainants

The Panel finds that the Complainants have a specific common grievance against the Respondent and that it is equitable and procedurally efficient to accept the consolidation.

5. Factual Background

The First Complainant is a UK limited liability partnership which was formed by the amalgamation of three UK law firms in 2017. The First Complainant is part of a global network known as the CMS Group. The Second Complainant is a German entity responsible for the coordination of the member firms within the CMS Group and for the administration of their trademarks and other intellectual property rights.

The Complainants are the owners of trademark registrations including the following:

- European Union Trade Mark number 016326092 for the word mark CMS CAMERON MCKENNA NABARRO OLSWANG, registered on June 9, 2017, in numerous classes.

- European Union Trade Mark number 001787175 for the word mark CMS, registered on September 24, 2001, in Classes 9, 16, and 42.

- European Union Trade Mark number 004847596 for the word mark NABARRO, registered on November 30, 2006, in Class 42.

The disputed domain name was registered on May 24, 2018.

The disputed domain name does not appear to have resolved to any active website.

6. Parties’ Contentions

A. Complainant

The Complainants state that the First Complainant was formed by a merger in 2017 of the law firms CMS Cameron McKenna LLP, Nabarro LLP and Olswang LLP and that it provides a wide range of legal services under the name and mark CMS CAMERON MCKENNA NABARRO OLSWANG. They state that the First Complainant operates 25 UK offices which produced turnover of GBP 518 million in the year to April 2018. They refer to a substantial digital presence including a website at “www.cms.law” and a significant presence on social media as well as providing evidence of prominent industry recognition and awards.

The Complainants submit that the disputed domain name is identical or confusingly similar to a trademark in which the Complainants have rights, including the trademarks referred to above.

The Complainants submit that the Respondent has no rights or legitimate interests in respect of the disputed domain name. They say that they have no affiliation with the Respondent and have not authorised it to use their trademarks and that the Respondent has not been commonly known by any name associated with the disputed domain name. They further contend that the Respondent is making neither bona fide commercial use nor legitimate noncommercial or fair use of the disputed domain name.

The Complainants further submit that the Respondent has used the disputed domain name as an instrument of fraud. They provide evidence of an email sent from “[…]@cmsnabarro.com” to eBay, purporting to come from the First Complainant and including one of its UK office addresses. The email encloses a supposed letter of authorization from one of the Complainants’ well-known clients, which the Complainants say is a forgery.

The Complainants submits that the disputed domain name was registered and has been used in bad faith. They contend that the Complainants’ trademarks are widely known as a result of the matters set out above and that, given the Respondent’s use of the disputed domain name, the Respondent must have been aware of the Complainants’ trademarks and must have registered and used the disputed domain name with the intention of taking unfair advantage of those marks.

The Complainants also submit that the Respondent has provided false contact details. They say that the Respondent’s address as disclosed by the registrar is in fact the Complainants’ own London office address, although they do not have any employee with the supposed name of the Respondent.

The Complainants request the transfer of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainants’ contentions.

7. Discussion and Findings

In order to succeed in the Complaint, the Complainants are required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights;

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

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

Even in a case where no formal Response has been filed, the Complainants must still establish that each of the three above elements is present.

A. Identical or Confusingly Similar

The Complainants have established that they have registered trademark rights in marks including CMS CAMERON MCKENNA NABARRO OLSWANG, CMS and NABARRO. The disputed domain name <cmsnabarro.com> adopts two elements from the first of these trademarks and also combines the second and third of the trademarks. In the circumstances, the Panel finds that the disputed domain name is identical or confusingly similar to a trademark in which the Complainants have rights.

B. Rights or Legitimate Interests

In the view of the Panel, the Complainants’ submissions set out above give rise to a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. However, the Respondent has not participated in this proceeding and has not, therefore, submitted any explanation for its registration and use of the disputed domain name, or evidence of rights or legitimate interests on its part in the disputed domain name, whether in the circumstances contemplated by paragraph 4(c) of the Policy or otherwise. There being no other evidence before the Panel of any such rights or legitimate interests, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

The disputed domain name comprises two distinctive terms which, in the view of the Panel, can have no meaning in commerce other than to refer to the Complainants’ law firm and their constituent parts. The Panel also accepts the Complainants’ evidence that the Respondent has used the disputed domain name for the purpose of a fraudulent communication which impersonated the First Complainant and has provided false contact details that also impersonate the First Complainant. The Panel finds in these circumstances that the Respondent registered and has used the disputed domain name for the purpose of taking unfair advantage of the reputation and goodwill attaching to the Complainants’ name and trademarks and, therefore, that the disputed domain name has been registered and is being used in bad faith.

8. Decision

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 <cmsnabarro.com> be transferred to the First Complainant.

Steven A. Maier
Sole Panelist
Date: November 20, 2019