Budage Pty Ltd v. WhoisGuard, Inc / Regina Parrish
WIPO Case No. DCO2019-0016
6 June , 2019
Linklaters LLP v. WhoisGuard Protected / Cindy Smith
WIPO Case No. D2019-0941
7 June, 2019
and
Farrer & Co LLP v. FARRER DOT COM LIMITED
WIPO Case No. D2019-1010
4 July 2019
Law firms, like drug companies and celebrities, are sitting ducks for having their good names besmirched by cybersquatters. Two of the latest victims are the prestigious Australian firm of solicitors, Clayton Utz and the international firm Linklaters. These cases were brought under the Uniform Domain Name Dispute Resolution Policy, (UDRP) which is designed to rectify clear instances of cybersquatting. It is good to see that the arbitration process provided under the Policy is usually carried out swiftly and effectively. At its core, the UDRP was created to protect the rights of trademark holders from bad faith and malicious use of internet domain names and, generally speaking, it does a good job. The first two cases were relatively straightforward, and undefended by the Respondents (the parties who registered the domain name) and both were examples of how domain names can be used for fraudulent and deceptive behaviour, if safeguards are not established. As such, the arbitration panels who decided the cases had no hesitation in finding for the Complainants and transferring the disputed domain names to them. But what a nuisance for Clayton Utz and Linklaters to have to go through the whole process when they might have avoided it by registering a few more domain names as well as the ‘.com” to cover themselves.
However, despite the wealth of resources law firms may have at their disposal, they are not always successful in their claims. The third case, in which the prestigious UK law firm Farrer got itself in to trouble and lost, is a little more complex than the first two. It serves as an important reminder that when you bring a complaint to the UDRP, it is vital not only to prepare well in advance, but also provide substantive relevant evidence, and not to exaggerate.
The Clayton Utz Case
Clayton Utz has held a trademark since 2010 for its trading name, Clayton Utz. Its primary website is at <claytonutz.com>. The Respondent registered the disputed domain name in one of the new extensions- <claytonutz.co> in March 2019 and used it primarily for a fraudulent email scheme. Specifically, it sent emails from the disputed domain name under the name of the Chief Executive Partner of Clayton Utz, with the aim of soliciting payments and information. Having been made aware of this, the Complainant brought a claim under the UDRP.
Even though the Respondent did not submit a defence, it was still necessary for the Complainant to prove all three elements of the policy to ensure the domain name was transferred.
The Findings
Based on the evidence submitted by the Complainant, the panel had no difficulty in finding in favour of Clayton Utz under all three elements. First, the disputed domain name, except for the TLD or umbrella extension of “.co” was identical to the Complainant’s mark. Secondly, the fact that the domain name, which in itself is a distinctive trademark was used in a fraudulent email scheme, and for pay-per-click links, led the panel to conclude that the goodwill of the trademark was being taken advantage of. As such, the Respondents’ use of the disputed domain was not for a bona fide offering of goods and services, nor any legitimate or fair non-commercial use.
In finding the last element of the policy, bad faith registration and use, the panel emphasised that the Respondent’s use of the domain name was “deceptive and fraudulent” and that, of course, must be bad faith. The email scheme, a clear example of what is called “phishing”, must have occurred with the knowledge of and intent to take advantage of the Complainant’s trademarks, given that names of members of the Complainant’s business were attempted to be used in the email scheme. Based on the substantive evidence, the panel found this to be a clear example of bad faith registration and use.
Given the three elements of the policy were successfully proved by the Complainant, the panel ordered the domain name be transferred to Clayton Utz, highlighting the straightforward and streamlined process the UDRP provides to victims of obvious cybersquatting.
The Linklaters’ Case
Linklaters’ case was also straightforward and was based on another attempted fraud. This time, the miscreant had not used the new “.co” extension, as in Clayton Utz’s case, but had just taken Linklaters’ name and added a generic word, to create the domain name < linklaters-lawfirm.com>.The domain name had been used to create an email address in the name of an employee of the firm and an email had then been sent to a certain person to try to mislead him into paying out US$ 945,000.00. Wishful thinking ! Two other companies had also notified Linklaters of similar attempts to extract money fraudulently, using the same email address connected to the Domain Name.
The Panel did the same analysis and reached the same conclusion as the panel in Clayton Utz’s case. Both firms received the transfer of the domain names so all is well that ends well.
However, with an ever-increasing number of TLDs ( like “.law” and “.club” etc) now available, these instances also serve as a reminder for organisations that are often the subject of phishing and cybersquatting to ensure their domain registrations are in order. Preventing phishing by purchasing extra domain names in a range of TLDs when they first become available is almost always the easier and cheaper option than making a claim under the UDRP or suing in the courts. The modest registration fees have to be paid, but what a relief to know that you do not have to keep worrying about whether you will have to face another domain name attack on your firm.
The Farrer Case
Despite being brought by another major law firm, the Farrer case was quite different to the previous two. The British law firm operates at the domain name <farrer.co.uk>, and filed a complaint under the UDRP to seek transfer of <farrer.com>. It seems this complaint was not due to any fraudulent activity, phishing or cybersquatting taking place, but rather because numerous emails were being mistakenly sent to the wrong address. Regardless of intent, the requirements for a successful UDRP complaint remain the same; in addition to proving trademark rights, Complainants must prove that the Respondent has no right or legitimate interest in the domain name, and that it was both registered and used in bad faith.
In this case, the Respondent was able to demonstrate it was operating an infrequent yet nevertheless legitimate business under the domain name in a different industry to the Complainant, and notwithstanding any finding of bad faith which may negate this, it seemed the case was firmly in the hands of the Respondent. In seeking to prove bad faith use and registration of the domain name, the Complainant could not give any direct evidence of the Respondent attacking their trademark or disrupting their business. Instead, it tried to establish a pattern of bad faith behaviour based on the Respondent’s other domain name dealings. While a weak case in itself, each one of Complainant’s claims in this regard were easily explained by the Respondent. The panel consequently also found this element in favour of the Respondent and the complaint was denied. While the panel noted that Farrer’s case was a “clear failure,” it did not find Reverse Domain Name Hijacking, as it believed that the Respondent had not met its burden of proof in this regard.
With an unfortunate and embarrassing loss by a prestigious law firm that probably should have known it was never going to win, Farrer must be ruing the chance it missed to register the sought after <.com> domain all those years ago.