Westmore · UDRP DecisionReedsmithcapital.com
The Panel ordered transfer of <reedsmithcapital.com>. It found the domain confusingly similar because it incorporated the REED SMITH mark in its entirety with the additional word “capital.” The Panel also found that Respondent lacked rights or legitimate interests after Complainant made an unrebutted prima facie case. Bad faith was established based on the reputation of Complainant and its mark, the domain’s use for links to legal-service providers including Complainant’s competitors, and the adverse inferences drawn from Respondent’s failure to answer cease-and-desist communications or the Complaint.
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The decision illustrates how complete incorporation of a professional-services mark, combined with a field-related term and competitor-oriented legal links, can satisfy all three UDRP elements when the respondent offers no countervailing evidence. It also demonstrates that default did not replace Complainant’s burden, but allowed the Panel to treat the prima facie rights-or-legitimate-interests case as unrebutted and to draw appropriate inferences under Rule 14(b).
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Reed Smith LLP v. Reed Smith Capital Case No. D2014-2123 1. The Parties Complainant is Reed Smith LLP of Pittsburgh, Pennsylvania, United States of America (“United States”), represented internally. Respondent is Reed Smith Capital of Frontenac, Kansas, United States. 2. The Domain Name and Registrar The disputed domain name <reedsmithcapital.com> (hereinafter the “disputed domain name”) is registered with FastDomain, Inc. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 2, 2014. On December 4, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 4, 2014, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. Complainant submitted an amendment to the Complaint on December 22, 2014. The Center verified that the Complaint together with the amendment to the 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on January 5, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was January 25, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 26, 2015. The Center appointed M. Scott Donahey as the sole panelist in this matter on February 6, 2015. 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 Complainant is an international law firm with approximately 1,900 attorneys in 26 offices located in the United States, Europe, Asia, and the Middle East. Complainant’s legal services include counselling and legal advice to emerging growth/venture capital markets and the financial industry generally. Complainant is the owner of the service marks REED SMITH which have been registered with the United States Patent and Trademark Office, (the “USPTO”) in conjunction with the provision of legal services. The earliest of these marks was registered on September 4, 1984. Complaint, Annex 6. Respondent registered the disputed domain name on November 27, 2013. Complaint, Annex 1. When visited by the Panel, the disputed domain name resolves to a web site at which links to various firms offering legal services both related to financial and business advice and other types of legal advice are featured, and includes links to Complainant’s competitors. On four separate occasions (March 31, 2014, April 17, 2014, May 7, 2014, and June 11, 2014, Complainant sent Respondent cease and desist letters demanding that Respondent transfer the disputed domain name to Complainant, two of which were sent by certified mail, return receipt requested, and two of which were sent by electronic mail, all to addresses given by Respondent or its principal. Respondent failed to acknowledge or respond in any way to these communications. 5. Parties’ Contentions A. Complainant Complainant contends that the disputed domain name is confusingly similar to the service mark REED SMITH in which Complainant has rights, that Respondent has no rights or legitimate interests in respect of the disputed domain name, and Respondent has registered and is using the disputed domain name in bad faith. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the complainant must prove each of the following: 1) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and, 2) that the respondent has no rights or legitimate interests in respect of the domain name; and, 3) that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar Where a domain name incorporates the complainant’s mark in its entirety, the domain name is confusingly similar to the complainant’s mark, despite the addition of other words in the domain name and despite the fact that common words may be appended or common words inserted therein. Therefore the Panel finds that the disputed domain name, which incorporates Complainant’s REED SMITH mark, is confusingly similar to Complainant’s REED SMITH mark. B. Rights or Legitimate Interests The consensus view of WIPO UDRP panelists concerning the burden of establishing no rights or legitimate interests in respect of a domain name is as follows: “While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions , Second Edition (“WIPO Overview, 2.0”), paragraph 2.1. In the present case Complainant provides arguments that Respondent has no rights or legitimate interests in respect of the disputed domain name and Respondent has failed to assert any such rights. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith Complainant’s service mark and legal services firm is well-known, not only in the United States, but also around the world for providing legal services of all types, including legal advice and counsel to the financial sector and venture capital firms. Indeed the disputed domain name resolves to a web site on which all links posted are to legal service providers, rather than to entities involved in providing financial services (one would expect links to the latter of the Respondent were operating a bona fide financial (“capital”) business). Many of the links are directed to direct competitors of Complainant. Complainant sent Respondent a series of letters, requesting that Respondent cease and desist the use of the disputed domain name, as the disputed domain name was confusingly similar to Complainant’s REED SMITH mark. Respondent failed to reply to any of these demand letters. Complainant filed a Complaint in this matter, alleging that the disputed domain name was confusingly similar to Complainant’s REED SMITH mark, that Respondent had no rights or legitimate interests in respect of the disputed domain name and that the disputed domain name was registered and is being used in bad faith. Respondent failed to reply to this Complaint. The Panel notes that paragraph 14(b) of the Rules gives the Panel discretion to draw such inferences from Respondent’s default as it considers appropriate. Accordingly, the Panel finds that Respondent has registered and is using the disputed domain name in bad faith. 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 <reedsmithcapital.com> be transferred to the Complainant. M. Scott Donahey Sole Panelist Date: February 11, 2015.
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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