WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Ashfords LLP v. Hioo Uoehojf

Case No. D2020-1579

1. The Parties

The Complainant is Ashfords LLP, United Kingdom, represented by Ashfords LLP, United Kingdom.

The Respondent is Hioo Uoehojf, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <ashfordsllp.com> is registered with Hosting Concepts B.V. d/b/a Openprovider (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 16, 2020. On June 16, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 16, 2020, 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 Complainant on June 17, 2020 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, 2020.

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 19, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 9, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 3, 2020.

The Center appointed Adam Samuel as the sole panelist in this matter on August 6, 2020. 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 a United Kingdom law firm. The Complainant owns a number of trademarks for the name ASHFORDS, including a United Kingdom trademark, registration number 00002135457, filed on June 11, 1997 and registered on January 2, 1998.

The Respondent registered the disputed domain name on May 21, 2020.

The Complainant promotes its activities through the domain name <ashfords.co.uk>, registered on November 6, 1996.

5. Parties’ Contentions

A. Complainant

The disputed domain name differs from the Complainant’s trademark only in that it contains the term “LLP” and the generic Top-Level Domain (“gTLD”) “.com”, both of which should be discarded for the purposes of assessing similarity or identity. The disputed domain name is confusingly similar to the Complainant’s mark in that it differs only by non-distinctive elements.

The Complainant has not given the Respondent permission to use the Complainant’s mark. The Respondent’s only interest in the disputed domain name is to use it to send phishing emails to the Complainant’s clients posing as the Complainant. In an email dated May 22, 2020, the Respondent contacted a client of the Complainant to request payment, posing as the Complainant, a request not authorized by the Complainant. The Respondent then telephoned the Complainant’s client posing as the Complainant. The appearance of the phishing emails was identical to the Complainant’s own emails and invoices. This similarity in design and layout is intended to confuse recipients into thinking that they are receiving official correspondence from the Complainant. Far from having a legitimate use in the disputed domain name, the Respondent has a specifically illegitimate interest in it.

The Respondent clearly knew of the Complainant when it registered the disputed domain name. The Respondent contacted a client of the Complainant. It referred to and mimicked the email addresses of the Complainant’s employees. It used the same getup and appearance as the Complainant in its emails. The disputed domain name is virtually identical to the Complainant’s trademark.

The Respondent has supplied false address information to the Registrar of the disputed domain name. This is further evidence of bad faith registration and use of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:

(i) the disputed domain name 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 disputed domain name; and

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

A. Identical or Confusingly Similar

The disputed domain name consists of the Complainant’s trademark ASHFORDS, the abbreviation “LLP” which normally stands for “limited liability partnership and the gTLD “.com”. The gTLD is irrelevant here because it is a standard registration requirement. See section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The addition of ordinary meaning words to the Complainant’s trademark, here the common abbreviation “LLP” which represents the legal status of the Complainant, does not prevent a disputed domain name from being confusingly similar to that trademark. As section 1.8 of the WIPO Overview 3.0 explains:

“Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, … meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.”

For these reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

The Respondent is not called “ASHFORDS” or anything similar. There is no evidence that the Complainant has ever authorized the Respondent to use its trademarks. Based on the available record, and in the absence of any response from the Respondent on this point, 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

A day after registering the disputed domain name, the Respondent, posing as the Complainant’s credit control supervisor contacted a customer of the Complainant seeking payment of a number of invoices to a different account to that of the Complainant.

From the use of the Complainant’s trademark and the Complainant’s invoice style, it is apparent that the Respondent knew of the Complainant’s trademark and registered the disputed domain name in order to impersonate and subsequently did impersonate the Complainant. This demonstrates that the Respondent registered and has used the disputed domain name in bad faith. See section 3.1.4 of the WIPO Overview 3.0.

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 disputed domain name, <ashfordsllp.com> be transferred to the Complainant.

Adam Samuel
Sole Panelist
Date: August 17, 2020