WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bryan Cave Leighton Paisner LLP v. He yanlong (贺延龙)

Case No. D2020-3230

1. The Parties

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

The Respondent is He yanlong (贺延龙), China.

2. The Domain Name and Registrar

The disputed domain name <bryancavett.com> is registered with Hongkong Domain Name Information Management Co., Limited (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 1, 2020. On December 2, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 15, 2021, the Registrar, after several reminders, 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 January 15, 2021 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 January 20, 2021.

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 January 20, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 9, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 10, 2021.

The Center appointed Francine Tan as the sole panelist in this matter on February 17, 2021. 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 across the world, including in North America, Europe, the Middle East, and Asia. Prior to April 2018, the Complainant was named Bryan Cave LLP, which traces its roots to 1873. In April 2018, following the combination of the law firms Bryan Cave LLP and Berwin Leighton Paisner LLP, the name of the Complainant was changed to Bryan Cave Leighton Paisner LLP. Prior to the combination, the Complainant legacy firm Bryan Cave LLP used the BRYAN CAVE mark in connection with its offering of legal and related services around the world, including in China. Since the combination, the Complainant continues to be known and referred to as “Bryan Cave.”

The Complainant owns numerous trademark registrations for BRYAN CAVE and BRYAN CAVE-formative marks (the “BRYAN CAVE trade marks”) in many countries around the world, including in China. It has the following trademark registrations in the United States and China:

(i) U.S. Trade Mark Registration No. 2529214 for BRYAN CAVE LLP, registered on January 15, 2002;
(ii) China Trade Mark Registration No. 14060148 for BRYAN CAVE, registered on April 14, 2015;
(iii) China Trade Mark Registration No. 14060149 for BRYAN CAVE, registered on May 7, 2015;
(iv) U.S. Trade Mark Registration No. 5927177 for BRYAN CAVE LEIGHTON PAISNER, registered on December 3, 2019; and
(v) U.S. Trade Mark Registration No. 5927384 for BRYAN CAVE LEIGHTON PAISNER BCLP & monogram, registered on December 3, 2019.

The Complainant maintains a domain name registration for <bryancave.com> which is redirected to its current website at “www.bclplaw.com”. The Complainant states that it has expended, and continues to expend, a substantial amount of resources, money, time and effort promoting, marketing, advertising, and building consumer recognition and goodwill in its services under and in connection with the BRYAN CAVE trade marks. The Complainant has won numerous awards for legal services and achieved many top rankings in legal directories.

The disputed domain name was registered on July 17, 2020 and resolved to a website providing various links to pornographic video content. Currently, the disputed domain name resolves to an inactive page.

5. Parties’ Contentions

A. Complainant

The disputed domain name is identical and/or confusingly similar to the Complainant’s BRYAN CAVE trade mark as the trade mark is incorporated entirely into the disputed domain name. The addition of the random letters “tt” does not obviate confusion with the Complainant’s BRYAN CAVE trade mark. The minor misspelling of the Complainant’s trade mark in the disputed domain name, commonly known as “typo-squatting” makes no difference to the overall impression of the dominant words in the disputed domain name.

The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not in any way associated with the Complainant. The Respondent is not authorized by the Complainant to use the disputed domain name and there is no indication that the Respondent is commonly known by the disputed domain name. The disputed domain name is identical or confusingly similar to the Complainant’s BRYAN CAVE trade mark and serves as “bait” to attract customers to the Respondent’s site. The Respondent is not making any legitimate noncommercial use of the disputed domain name.

The disputed domain name was registered and is being used in bad faith. The disputed domain name was registered to trade off the reputation and goodwill of the Complainant in its BRYAN CAVE trade marks for financial gain. The Respondent is utilizing the disputed domain name to divert potential users away from the Complainant and its services towards the Respondent’s own website. The disputed domain name resolved to a website with pornographic content which tarnishes the Complainant’s BRYAN CAVE trade marks by associating the marks with pornography and related content. The Respondent is a “serial cybersquatter” who has engaged in a pattern of registering domain names incorporating the trade marks of various brand owners, e.g. <monclerdoudoube-oil.com>, <oakleysunglassuk.com>, <sunglasshut-canada.com>, <tiffanysilveronsale.com>, <michaelmichaelkorssale.com>, <tracksuitsjuicycouture.com>, and <uggaustraliaclearancesale.com>.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has established it has rights in the BRYAN CAVE trade mark. The trade mark is reproduced in its entirety in the disputed domain name. The Panel agrees that the addition of the random letters, “tt”, does not serve to avoid confusing similarity with the Complainant’s trade mark. Further, the generic Top-Level Domain, “.com”, is a technical requirement for domain name registrations and not relevant to the issue of the identity or confusing similarity between the disputed domain name and the Complainant’s trade mark.

The Panel accordingly finds that the first element of paragraph 4(a) of the Policy has been satisfied.

B. Rights or Legitimate Interests

The Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant’s registrations of the BRYAN CAVE trade mark long predate the registration date of the disputed domain name. The Complainant did not license or authorize the Respondent to use the BRYAN CAVE mark as a trade mark or in a domain name. Neither is there evidence that the Respondent is commonly known by the name “Bryan Cave”. The use of the disputed domain name which incorporates the Complainant’s BRYAN CAVE trade mark for a website containing links to pornographic-related content does not constitute a bona fide offering of goods and services nor alegitimate noncommercial or fair use of the disputed domain name.

Having established a prima facie case, the burden of production shifts to the Respondent to show that he/she has rights or legitimate interests in the disputed domain name. The Respondent failed to respond to or rebut the Complainant’s assertions in this proceeding. In any event, the Panel does not expect that the Respondent would have been able to provide any meaningful rebuttal arguments or evidence.

The Panel therefore finds that the second element of paragraph 4(a) of the Policy has been satisfied.

C. Registered and Used in Bad Faith

The Complainant’s BRYAN CAVE trade mark is a well-established mark in the legal services industry, especially with its long history. The Respondent could not by pure coincidence and without prior knowledge of the Complainant and its trade mark have selected the disputed domain name without the Complainant and/or its BRYAN CAVE trade mark in mind. The “mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trade mark by an unaffiliated entity can by itself create a presumption of bad faith” (see section 3.1.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition).

The Panel finds that the Respondent’s absence of rights or legitimate interests in the disputed domain name, his/her pattern of engaging in trademark-abusive domain name registrations, and the use of the disputed domain name for a pornographic website which tarnishes the Complainant’s BRYAN CAVE trade mark, constitute evidence that the disputed domain name was registered and has been used in bad faith. The fact that the disputed domain name currently resolves to an inactive page does not prevent a finding of bad faith.

The Panel therefore finds that the third element of paragraph 4(a) of the Policy has been satisfied.

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 <bryancavett.com> be transferred to the Complainant.

Francine Tan
Sole Panelist
Date: March 2, 2021