Recent Case Notes & Commentary

Updated: Cybersquatting on Law Firms - the UDRP in Action

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