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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Taylor Wessing v Corporate Registers [2006] DRS 3320 (30 March 2006) URL: http://www.bailii.org/uk/cases/DRS/2006/3320.html Cite as: [2006] DRS 3320

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Nominet UK Dispute Resolution Service

DRS 03320

Taylor Wessing v Corporate Registers

Decision of Independent Expert

1. Parties

Complainant: Taylor Wessing

United Kingdom

Respondent: Corporate Registers

United Kingdom

2. Domain Name

taylorjohnsongarrett.co.uk

3. Procedural Background

On 24 January 2006, the Complaint was lodged with Nominet. In accordance with the Dispute Resolution Service Policy hard copies of the Complaint were received in full on 26 January 2006.

On 27 January 2006 Complaint documents were generated for service upon the Respondent. No response was received from the Respondent by the due date of 23 February 2006.

On 28 February, Mr Clive Thorne was selected as the Expert. He has confirmed his independence and willingness to act.

The Expert understands that the necessary fees were received from the Complainant on 24 February 2006. There are no interlocutory or interim matters outstanding. No communication has been received from the Respondent.

4. Facts

The factual background is summarised in the Complaint. There being no Response the Expert accepts the truth of the facts stated in the Complaint.

The Complainant Taylor Wessing is a long established and well-known international law firm providing a full range of legal services to major corporations, institutions and private clients. It has offices in the United Kingdom, France, Germany, Belgium, Spain, UAE and China. There are currently over 200 partners with a total staff of 980.

The firm was established as a result of a merger of two firms. These were Joynson-Hicks which was established in 1922 and Taylor Garrett which was founded in 1982. These firms merged to become Taylor Joynson Garrett in 1989. Between 1989 and September 2002 the firm traded under the name Taylor Joynson Garrett. In September 2002, the firm became known as Taylor Wessing through a combination of the practices of Taylor Joynson Garrett and a German law firm Wessing.

The Complainant asserts that it has been recognised consistently since 1989 by its clients and the legal market as a pre-eminent law firm under the name Taylor Joynson Garrett and since 2002 under the name Taylor Wessing. It exhibits to the Complaint reviews and rankings in the legal directory "The Legal 500". It also exhibits at Annex 2 to the Complaint extensive publicity in the legal press including from the publication "Legal Week". Relevant articles include coverage of the firm's business under the mark Taylor Joynson Garrett, the merger of the Taylor Joynson Garrett and Wessing practices and recent news items.

The firm uses a current website www.taylorwessing.com (a copy of which is exhibited as Annex 3). It also continues to operate the domain name "taylorjoynsongarrett.com" which links indirectly to the website www.taylorwessing.com. Archive copies of the Taylor Joynson Garrett website are annexed at Annex 4 to the Complaint. The Complainant submits that as a result of its extensive use of marketing under the name of Taylor Joynson Garrett since 1989 and its leading status in the legal market it has acquired a substantial reputation and goodwill in the mark Taylor Joynson Garrett in the United Kingdom and other countries. It submits that the mark is inherently distinctive and as a result of the fame it has acquired it is not descriptive of the firm's business or of anything else.

The background to the dispute is that the Respondent, Corporate Registers registered the domain name without the Complainant's consent on 28 January 2005. This is evidenced by the WHOIS search exhibited at Annex 5 to the Complaint. It should be noted that the Registrant is simply referred to as Corporate Registers with an address in London N13. The registrant's agent is described as Schlund and Partner AG at registrar.schlund.info.

The Complainant first became aware of the Respondent's activities on the 15 April 2005 when it received a fax dated 14 April 2005 which had been addressed to a client. The fax letter stated as follows:

"Attention: President/CEO

Sir,

I write on behalf of a highly placed and valued client, and I solicit your service and possible partnership in handling the financial transaction. The transaction will involve you managing a portfolio in excess of US$ 100 million.

At this point, much of the details are confidential and will be passed on to you on a need to know basis. My client reserves the right to proceed with you, should you be interested and capable, to provide this service.

You will be given a consideration of 3% of the gross portfolio value plus a full reimbursement of all expenses.

If you consider that you are able to do this professionally and discretely then immediately contact me by fax on the number +44 (0)207 504 8201 or by email: [email protected].

I solicit that this information be kept in the highest confidence.

You have the assurance of my highest regards.

William Taylor"

It should be noted that the fax coversheet referred to a law firm called Taylor, Johnson, Garrett. The client apparently sent this to the Complainant asking whether it was aware of the scam and saying that "they use your old company name I see".

The Complainant took this very seriously and made enquiries as to the existence of the so called international law firm Taylor Johnson Garrett. In particular, enquiries were made at the office address in Jersey which is referred to on the Respondent's website. The enquiries indicated there was no firm trading or practising under the name Taylor Johnson Garrett at that address. The website also gave a London telephone number. This appeared to operate as a fax number only. The Legal 500 database also demonstrated that there appeared to be no firm trading under the name Taylor Johnson Garrett.

Further enquiries demonstrated that the contents of the website were, at least in part, compiled from websites of various legitimate law firms including Linklaters, Shoosmiths and Simcocks. This is demonstrated at Annexes 8, 9 and 10 to the Complaint.

Having become aware of these activities and established that Taylor Johnson Garrett did not exist the Complainant immediately reported the matter to the Law Society, the Law Society Fraud Intelligence Unit and to the Police. It also wrote to the Respondent's internet service provider which eventually removed the website from the Internet.

The Complainant continued to monitor the website and subsequently became aware that it had been reactivated. This was as a result of receiving an email dated 4 January 2006 (exhibited at Annex 12 to the Complaint) which purported to be from a potential client. It referred to the Complainants "old website" which it described as "www.taylorjohnsongarrett.co.uk". The email stated that "I think personally you should delete this old website, simply because it is costing you new business and creates only damage to your law firm's reputation worldwide".

The email was received by a member of staff, Bev Jury, in the Complainant's Business Development Department, who responded pointing out that Taylor Johnson Garrett was a different firm to Taylor Wessing (formerly Taylor Joynson Garrett) but Taylor Wessing did not have an office in St Helier. Her email was replied to by another email dated 9 January 2006 from a Mr Steinar Kjeldsen apparently from an address in Trondheim Norway indicating that "I might be wrong but I had some ideas that Taylor Johnson Garrett was the same law firm, anyway it does not matter at all".

The Complainant suspects that it is very likely that the email was not genuine and was sent under fake or assumed identity. It speculates that the reason why emails were sent was that the Respondent would wish to contact the Complainant indirectly in order to provoke it into seeking a transfer of the Domain Name from which it would hope to make a profit.

5. Discussion and Findings:

Under Paragraph 2(a) of the DRS Policy a Complainant must show that:-

(i) the Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name; and

(ii) The Domain Name, in the hands of the Respondent, is an Abusive Registration.

The burden of proof in showing that both limbs of paragraph 2(a) of the DRS Policy are present falls upon the Complainant.

The Expert proceeds to deal with each in turn.

(i) the Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name.

The Complainant has adduced no evidence of any registered trade marks. Instead it relies upon the unregistered mark Taylor Joynson Garrett and the substantial reputation and goodwill that it has acquired in the mark in the UK and elsewhere. The Complainant points out that its rights in the mark are enforceable under English law by the common law action for passing off.

The Complainant ceased trading under the name "Taylor Joynson Garrett" in September 2002 and now trades as "Taylor Wessing". However, it relies upon the evidence that press coverage still continues to refer to the mark "Taylor Joynson Garrett" and the fact that its clients still associate the mark with the Complainant. Some evidence of this is given by the fact that the firm's client copied the Respondent's fax of 14 April 2005 to the Complainant. The Expert accepts that the Complainant has acquired a substantial reputation and goodwill in the mark "Taylor Joynson Garrett" and this has continued.

The Expert also needs to consider whether the mark is "identical or similar" to the Domain Name. The only difference between the mark and the Domain Name is the use of "h" in the Domain Name instead of the "y" in the mark. The Complainant points out that this is a common mistake to make and also that the letter "y" appears just above the letter "h" on a computer keyboard. The Expert finds that the mark Taylor Joynson Garrett is similar to the Domain Name. Apart from the Complainant's submissions, the evidence of the client's reaction to the fax of 14 April 2005 shows that it was confused by the use of "Taylor Johnson Garrett". The Expert also notes that the mark and the Domain Name are phonetically similar.

Accordingly, the Expert finds that the Complainant has shown that the Complainant has rights in respect of the name or mark which is identical or similar to the Domain Name.

(ii) The Domain Name, in the hands of the Respondent, is an Abusive Registration.

"Abusive Registration" is defined in paragraph 1 of the DRS Policy as meaning a Domain Name which either:

(i) was registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant's Rights; OR

(ii) has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights.

At paragraph 3 of the DRS Policy, there is set out a non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration.

The Complainant relies inter alia on paragraphs 3.a.i.A and 3.a.ii of the DRS Policy.

Paragraph 3.a.i.A

This relates to evidence of circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily "for the purposes of selling, renting or otherwise transferring the Domain Name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's documented out of pocket costs directly associated with acquiring or using the Domain Name.

In support of its contentions, the Complainant relies upon the evidence relating to the exchange of emails beginning with the email of 4 January 2006 and suggests that "the only credible reason why the Respondent would contact the Complainant indirectly in this way was to provoke the Complainant in approaching the Respondent so as to obtain a transfer of the Domain Name at a profit to the Respondent. In the Expert's view this submission is essentially speculative. There is no evidence to suggest that this was the reason why the email of 4 January 2006 was sent. The overall circumstances surrounding the apparently fictional law firm Taylor Johnson Garrett are dubious and suggest that the steps taken to create an "identity" for the firm were nefarious. There is, however, no evidence to relate this to using the Domain Name specifically as an instrument of fraud.

Paragraph 3.a.ii

This relates to circumstances indicating that the Respondent is using the Domain Name in a way which has confused people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant. Here the Complainant goes as far as submitting that members of the public "are bound to have been confused into believing that the Domain Name is registered to or otherwise connected with us". It also submits that further confusion is "very likely to occur". The reasons for these submissions are:-

(a) the Domain Name is nearly identical to the Mark and the public continues to associate the Mark with our firm;

(b) the website relates to a law firm and reproduces our getup;

(c) the Respondent is targetting our clients.

In the Expert's view the key to paragraph 3.a.ii is use of the Domain Name so as to cause confusion. In the Expert's view there is clear evidence of confusion. The two specific instances which demonstrate this are the Respondent's fax of 14 April 2005 to the Complainant's client, and secondly the response of the Complainant's employee, Bev Jury, to the email of 4 January 2006. In the Expert's view it is also abundantly clear from the overall evidence of the circumstances surrounding the "creation" of Taylor Johnson Garrett that it was intended, as a law firm, to cause confusion as to an association or connection with the Complainant under its former name Taylor Joynson Garrett.

The Expert takes into account the fact that no evidence or submissions have been served by the Respondent which may throw light or attempt to justify the use of the name Taylor Johnson Garrett and the circumstances relating to the attorneys in the firm who are shown on the Respondent's website as Mr William Taylor, Mr Rodney Johnson and Mr Paul Garrett. The Respondent has had an opportunity under the Procedure to serve a Response but has apparently chosen not to do so.

The Expert finds that the Domain Name in the hands of the Respondent is an Abusive Registration.

The Complainant has therefore satisfied its burden of proof in showing that both elements of paragraph 2.a of the DRS Policy are present on the balance of probabilities.

6. Decision

The Complainant has requested that the Domain Name should be transferred from the Respondent to the Complainant. The Expert orders that the Domain Name "taylorjohnsongarrett.co.uk" be transferred from the Respondent to the Complainant.

Clive Duncan Thorne

Expert

30 March 2006