An Internet domain name might be used for a legitimate website or email address, or for other legitimate purposes, including for resale under certain circumstances. Nevertheless, given the easy-to-access system of domain name registration, they can also be used for more dishonest purposes.
Lawyers are an active part of the system of trademark protection against abusive registration of domain names, helping their clients to protect their trademarks against cybersquatters. At the same time, lawyers are themselves target of abusive domain name registration and must look after protecting their own brands that are essential to any business, including lawyers’ business.
I will look into recent UDRP cases to see, first, how lawyers were targeted by cybersquatters and second, what is the evidentiary burden they must meet in order to succeed in a UDRP claim, which is a swift method to fight abusive domain name registrations.
Lawyers’ Brands Targeted by Cybersquatters
Domain Names Used for Illegal Activity (Impersonation and Phishing)
In a recent UDRP case at the World Intellectual Property Organisation (WIPO), the complainant was the law firm Brabners LLP from the United Kingdom (UK). They claimed to have been using their BRABNERS trademark as part of the company name and trading name for over 200 years in the UK and internationally. The complainant also showed registered trademark rights in the UK. The domain name in dispute was <brabnerslaw.com> and it was used to resolve to a website identical to the complainant’s website. Moreover, the disputed domain name was used for phishing messages in which the respondent was impersonating the complainant.
More specifically, the evidence in the case file showed that the respondent was using the domain name for sending emails impersonating one of the complainant’s partners with respect to a “so-called unclaimed permanent life insurance policy. Correspondence seeks the recipient’s consent to partner with the named individual partner of the Complainant so as to benefit as the beneficiary of a claim on the insurance policy”.
In another recent WIPO case, the complainant was the law firm Linklaters LLP, from the UK. It relied on registered trademark rights over the LINKLATERS brand. The domain name at issue was <linkllaters.com>, a misspelled version of the complainant’s trademark. It was used to “create multiple email addresses impersonating the Complainant’s employees to contact the Complainant’s clients, with fraudulent and criminal purposes”. The complainant sustained that the respondent was contacting the complainant’s clients to require the change of payment information, respectively for the clients to make next payments to the respondent’s bank account. The fraudulent emails were appearing like legitimate emails sent by the complainant, as they were made to look like they were sent by one of the lawyers and partners of the complainant.
A similar situation, where the domain name was used to send fraudulent invoices to the complainant’s clients impersonating one of the attorneys at the complainant’s law firm, was in the WIPO case filed by the law firm Morrison & Foerster LLP from the United States. They relied on their registered trademark rights over MORRISON & FOERSTER. The website at the domain name resolved in this case to a landing page indicating that the webpage was a security threat. The domain name in dispute was <morrisonfoersterlaw.net>.
Similarly, the United States law firm Greenberg Traurig LLP filed a UDRP claim to obtain the transfer of the domain name <gtlaww.com> that was used for sending emails to the complainant’s clients soliciting funds to be transferred to what appeared to be the respondent’s own bank account. At some point the domain name in dispute also resolved to a parking page with links to the complainant’s competitors. The complainant relied on registered trademark rights over GT, GREENBERG TRAURIG and GT GREENBERG TRAURIG trademarks.
In all the above cases, the use of the respective domain names for phishing was considered by panels not to show rights or legitimate interests for the respondents, as the use of a domain name for illegal activity (including phishing) can never confer rights or legitimate interests (section 2.13.1 of the WIPO Overview 3.0). Such use for fraudulent purposes was also considered to indicate bad faith registration and use of the relevant domain names.
Domain Names Used for Bogus Websites
In a recent WIPO case, the complainant was the law firm Stibbe B.V. from the Netherlands. It relied on registered trademark rights over STIBBE. The domain name in dispute, <stibbelaw.com> was used for a webpage of an alleged Dutch law firm having a similar name with that of the complainant. According to the complainant, no law firm with that name was registered with the Dutch Bar Association and the attorneys mentioned on the website at the disputed domain name were not registered with the Dutch Bar Association. Subsequently, the website resolved to an error page.
In a similar situation, the complainant in another WIPO case, the law firm Simpson Thacher & Bartlett LLP from the United States, obtained the transfer of the domain name <simpsonbartlettlawfirm.com>. The complainant, tracing its roots back to 1904, relied on registered rights over the trademark SIMPSON THACHER & BARTLETT LLP. The domain name in dispute was used to resolve to a website allegedly providing information about a law firm named Simpson Bartlett Law Firm. The complainant was unaware of an organisation doing business under that name and provided evidence that the website contained bogus contact information and fake attorney profiles.
In the above situations, the panels concluded, in the absence of an explanation from the respondents, that setting up bogus websites is an indication that the domain names were registered in an attempt to divert, for commercial gain, Internet users to competing websites to confuse and mislead consumers.
No Active Website
In many cases the domain names are not used for active websites or for emails. The registration might still be abusive within the meaning of the UDRP.
In a recent WIPO case, Linklaters LLP obtained the transfer of the domain name <linklaterslaw.com>, that resolved to a blank page. Under the second element of the Policy (lack of rights or legitimate interests) the panel considered that the nature of the disputed domain name, incorporating the complainant’s trademark with the addition of the term “law” carried a risk of implied affiliation. In the absence of a response from the respondent, the passive holding of the disputed domain name in the circumstances of the case was considered further evidence of bad faith under the third element of the Policy.
In another recent WIPO case, the complainant was the international law firm Latham & Watkins LLP from the United States. It relied on its registered rights over the trademark LATHAM & WATKINS and obtained transfer of the domain name <lathamswatkins.com>, a misspelled version of the complainant’s trademark. The website at the disputed domain name resolved initially to a parking page mentioning “[t]his Account has been suspended” and subsequently to a website starting with “SORRY! If you are the owner of this website, please contact your hosting provider: webmaster@lathamswatkins.com.” Such use was not considered by the panel to represent a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the domain name in dispute.
As regards the third element of the Policy, the panel considered inter alia that the typosquatting nature of the domain name and the website and the active hyperlink at the website at which the domain name resolved indicated “that Respondent possibly registered the Domain Name with the intention to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the trademarks of Complainant as to the source, sponsorship, affiliation, or endorsement of its website or location or of a service on its website or location, which constitutes registration and use in bad faith in a similar manner to that provided under paragraph 4(b)(iv) of the Policy.”
Evidentiary Burden on Complainants
Complainants must establish three elements to succeed in a UDRP complaint. Under the first one, the complainants must prove that the domain name in dispute is identical or confusingly similar to a trademark or service mark in which the complainant has rights.
Trademark rights can be registered or acquired by use in commerce. In the latter case the complainant must generally prove that the name became distinctive sign associated with the complainant or his services (WIPO Overview 3.0, section 1.3). Similarly, if the complainant relies on common law trademark rights in personal names, “where a personal name is being used as a trademark-like identifier in trade or commerce, the complainant may be able to establish unregistered or common law rights in that name for purposes of standing to file a UDRP case where the name in question is used in commerce as a distinctive identifier of the complainant’s goods or services”. (WIPO Overview 3.0, section 1.5; also discussed on this blog)
In the cases discussed above, the complainants relied on registered trademark rights.
Common Law Trademark Rights Proven
Lawyers could also succeed in the absence of registered trademark rights if all the other conditions are met.
As a recent example, a lawyer named David M. Guilford succeeded in its UDRP complaint, obtaining the transfer of the domain name <davidguilfordlawyers.com>. The domain name was used “to link to a fraudulent website purportedly for “David Guilford & Associates” or “David Guilford Michael Trust & Associates Lawyers.” The content at the website was copied from the website of another law firm. The respondent was also using the domain name in dispute to conduct a purported cryptocurrency scam. The complainant relied in this case on unregistered trademark rights in his name, alleging it was consistently used in commerce since 2004 in connection with legal services.
The panel took into account the evidence in the case file which showed that the complainant had been practicing under the name Guilford Legal Group and that the complainant is the managing partner of his law firm, and concluded that the complainant “has made a passable showing that he has used his name as a distinctive identifier for providing legal services”, and the first element was met (also considering that the respondent has made no effort to rebut the complainant’s claim to rights in his name).
Common Law Trademark Rights Not Proven
Nevertheless, in another recent case, the complainant’s claim was rejected, as the evidence in the case did not allow the panel to conclude that the complainant enjoyed common law trademark rights. The complainant was Majors Law Group, P.C, from the United States. It complained against the registration of the domain name <majorslawgroups.com> that was used to host a criticism website of the complainant and its attorneys. The complainant relied on unregistered rights in the trademark “Majors Law Group”, claiming that the said trademark was known locally in at least Arizona and Washington state, in the United States. The complainant also argued it has used the trademark for three years and to have represented over 2000 clients since 2019. The panel found no evidence in the case file to support the claim of common law trademark rights and its own limited factual searches were not useful either for a conclusion that the trademark claimed by the complainant acquired distinctiveness for the purposes of the Policy.
