Six Arbitration Panels brought a single UDRP seeking 19 domain names all owned by ICSID Lawyers, LLC and collectively won 18 of the domains.
The Complainants are London Court of International Arbitration (LCIA) of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”); International Chamber of Commerce (ICC) of Paris, France; Singapore International Arbitration Centre (SIAC) of Singapore; Arbitration Institute of the Stockholm Chamber of Commerce (SCC) of Stockholm, Sweden; American Arbitration Association/International Center for Dispute Resolution (AAA/ICDR) of New York.
The panel ordered 18 of the 19 domains to be transferred finding that:
“”The Respondent is not affiliated with the Complainants in any way. It has not been authorized by any of the Complainants to register or use the Domain Names or to seek the registration of any domain name incorporating the Complainants’ Marks or any marks similar to the Complainants’ Marks. There is no evidence that the Respondent is commonly known by the Domain Names or any similar name. Rather the Respondent is known as ICSID Lawyers. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a legitimate noncommercial use.
Rather it appears that the Respondent is using and has used Domain Names to, without the permission of the Complainants, redirect to the Respondent’s Website. The Respondent’s Website advertises the Respondent, who purports to offer legal services in connection with international arbitration. The key question is whether this use amounts to use of the Domain Names for a bona fide offering of goods or services.
The Respondent submits that such use is justified because it is an arbitration law firm that represents clients at each of the Complainants’ arbitral institutions. It is not a direct competitor of the Complainants. Furthermore, as its websites provide information on the Complainants’ arbitral institutions they educate visitors on the Complainants’ services.
The Panel finds that the Respondent’s use of the Domain Names does not give it rights in the Domain Names as it is not using the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services. Firstly, the Respondent goes by ICSID Lawyers. It is not using a name corresponding for to the Domain Names to offer any services.
The key issue is whether the mere fact that the Respondent provides services that relate to the Complainants in some way is sufficient to allow it to register a Domain Name that is identical or confusingly similar to the Complainants Marks.…
