Davis Polk & Wardwell LLP (“Davis Polk”) v Matthew Jones

WIPO Case No. D2025-1025

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Davis Polk & Wardwell LLP (“Davis Polk”) v. Matthew Jones

Case No. D2025-1025

1. The Parties

Complainant is Davis Polk & Wardwell LLP, United States of America (“United States”), represented by

Fross Zelnick Lehrman & Zissu, PC, United States.

Respondent is Matthew Jones, United States.

2. The Domain Name and Registrar

The disputed domain name <davispolkllp-us.com> is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was f iled with the WIPO Arbitration and Mediation Center (the “Center”) on March 12, 2025.
On March 13, 2025, the Center transmitted by email to the Registrar a request for registrar verif ication in
connection with the disputed domain name. On March 13, 2025, the Registrar transmitted by email to the
Center its verif ication response disclosing registrant and contact information for the disputed domain name which
dif fered from the named Respondent (Domain Administrator) and contact information in the Complaint. The
Center sent an email communication to Complainant on March 14, 2025, providing the registrant and contact
information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint.
Complainant f iled an amended Complaint on March 17, 2025.

The Center verif ied that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notif ied Respondent of the Complaint, and the proceedings commenced on March 18, 2025. In accordance with the Rules, paragraph 5, the due date for Response was April 7, 2025. Due to an administrative oversight, Respondent was provided additional time to

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submit its Response. Respondent did not submit any response. Accordingly, the Center informed the Parties

that it would proceed with Panel Appointment on April 17, 2025.

The Center appointed Clark W. Lackert as the sole panelist in this matter on April 30, 2025. The Panel f inds that
it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of

Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

Complainant Davis Polk & Wardwell (“Davis Polk”) is a law f irm that traces its beginnings to Francis N. Bangs, who opened his own one-man law f irm in New York City in 1849. In 1925, the f irm began using the name “Davis Polk Wardwell Gardiner & Reed”, changing to “Davis Polk Wardwell Sunderland & Kiendel” in 1942. In 1967, the partnership voted to change the firm name to “Davis Polk & Wardwell”. For decades, Complainant, its clients, and others in the legal industry also have referred to Complainant by the shorthand name “Davis Polk”. With ten offices strategically located in key business centers and political capitals, Complainant is a premier law f irm that leading companies and f inancial institutions around the world turn to for counsel on their most

significant business and legal matters. Complainant and its associated entities have of f ices in New York, NY; Redwood City, CA; Washington, DC; São Paulo; London; Madrid; Hong Kong; Beijing; Tokyo; and Brussels. Complainant opened its London office in 1972, followed by Washington, DC in 1980, Tokyo in 1987, Hong Kong in 1993, California in 1999, Madrid in 2001, Beijing in 2007, São Paulo in 2011, and Brussels in 2023.

Complainant has rights in DAVIS POLK and DAVIS POLK & WARDWELL (collectively the “DAVIS POLK Marks”). As a result of decades of use, and a substantial global investment in promoting Complainant’s services, the DAVIS POLK Marks have become assets of significant value, identifying Complainant’s services exclusively. In addition, Complainant owns the domain name <davispolk.com> registered on May 31, 1996, and trademark registrations throughout the world for the DAVIS POLK Marks, including without limitation:

Jurisdiction	Registration Number	Registration Date
United States of America	3820693	July 20, 2010
United States of America	2321090	February 22, 2000
Switzerland	594307	December 4, 2009
European Union	008437634	March 1, 2010
China	7627738	December 21, 2010
South Africa	2009/15661	August 14, 2009
India	1850709	August 13, 2009
Brazil	830368019	May 22, 2012

The disputed domain name was registered on February 13, 2025.

5. Parties’ Contentions
A. Complainant

Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name and argues as follows.

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Turning to the f irst element of the Policy, Complainant has strong rights in the DAVIS POLK Marks based on its use of the trademarks since as early as 1967, its registration of the DAVIS POLK Marks in jurisdictions around the world, and its extensive marketing and promotional activities for its legal services. The disputed domain name is confusingly similar to Complainant’s DAVIS POLK Marks, merely adding the non-distinctive term for “LLP” meaning “limited liability partnership”, the geographic term “US”, and the generic Top-Level Domain (“gTLD”) “.com”. The disputed domain name incorporates the DAVIS POLK trademark in its entirety. “It is established case law that where a domain name incorporates complainant’s registered mark, this is suff icient to establish that the domain name is identical or confusingly similar for the purposes of the Policy.” Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd.) v. Arthur Wrangle, WIPO Case No. D2005-1105; see also

Makeup Art Cosmetics Inc. v. Zhihua, WIPO Case No. D2010-0868 (three domain names all beginning with the MAC mark and followed by either descriptive or generic terms related to the complainant’s cosmetics business create domain names that are confusingly similar to the complainant’s mark). “The addition of other terms (here, ‘llp’) … does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy.” Fenwick & West LLP v. Oliver James, WIPO Case No. D2024-4546 (f inding

<fenwickllp.com> confusingly similar to the FENWICK trademark) (parentheses in original). The addition of the “because they relate directly to places where the Complainant has developed or might develop its core business”); Six Continents Hotels, Inc. v. Ramada Inn, WIPO Case No. D2003-0658 (“[T]he addition of the suffix ‘Michigan’ is apt to suggest that the Complainant’s [Holiday Inn Hotels] are provided in that particular location.”). Given the fact that Complainant’s law firm was founded in and continues to be based in the United States, with multiple offices in the country, Internet users who see the disputed domain name and any emails sent f rom addresses associated with the disputed domain name are likely to immediately recognize Complainant’s Marks and assume that the disputed domain name is owned, controlled, or approved by Complainant.

“US” geographical indicator to Complainant’s DAVIS POLK Marks “add[s] to rather than diminish[es] the
likelihood of confusion” because “[t]he addition of a place name to a trademark … is a common method for
indicating the location of a business enterprise identified by the trademark or service mark”, particularly where,
as here, the geographical indicator refers to a location in which Complainant has offices. Six Continents Hotels,
Inc. v. Dkal, WIPO Case No. D2003-0244; see also Starwood Hotels & Resorts Worldwide, Inc. v. Domaincar,

Turning to the second element of the Policy, Respondent cannot demonstrate or establish any rights or legitimate interests in the disputed domain name. Respondent has no connection or affiliation with Complainant and has not received any license or consent, express or implied, to use Complainant’s trademark in domain names or in any other manner. Upon information and belief , Respondent has made no actual use of the disputed domain name in connection with an active website. There is no evidence to suggest that that Respondent has, before notice of the dispute, made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. There is also no evidence to suggest that Respondent has been commonly known by the disputed domain name or that Respondent is or has been making legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain misleadingly to divert consumers or tarnish Complainant’s trademark. Thus, there is no basis for Respondent to claim that it has legitimately registered the disputed domain name, which incorporates in whole the dominant element of Complainant’s DAVIS POLK trademark.

Turning to the third element of the Policy, Respondent registered and is using the disputed domain name in bad faith. Complainant is one of the best-known law firms in the world. It is therefore inconceivable that Respondent was unaware of the DAVIS POLK mark when it registered the disputed domain name. See Heineken

Brouwerijen B.V. v. Mark Lott, WIPO Case No. D2000-1487 (finding bad faith where complainant’s international fame precludes innocent registration of a confusingly similar domain name). The mere fact that Respondent registered the confusingly similar domain name without authorization is, in and of itself, evidence of its bad faith registration. See, e.g., Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co.,

WIPO Case No. D2000-0163 (bad faith is found where a domain name “is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad

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DCI S.A. v. Link Commercial Corporation, WIPO Case No. D2000-1232. Because the ultimate effect of any use of the disputed domain name will be to cause confusion with Complainant, the use and registration of the disputed domain name must be considered to be in bad faith. See Embratel v. McCarthy, WIPO Case No. D2000-0164; Forte (UK) Ltd. v. Ceschel, WIPO Case No. D2000-0283; Chanel, Inc. v. Cologne Zone, WIPO Case No. D2000-1809. Based on the foregoing, Complainant has established that (i) the disputed domain name is confusingly similar to the DAVIS POLK marks, (ii) Respondent has no legitimate right or interest in the disputed domain name, and (iii) Respondent registered and is using the disputed domain name in bad faith.

faith”). The disputed domain name is not currently associated with an active website. “It has … been
established from the very outset of the introduction of the Policy, that in given factual situations, non-use and
inaction can constitute bad faith registration and use.” Liebherr- International AG v. Domain For Sale!, WIPO

Case No. D2003-0824 (citing Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No.

B. Respondent

Respondent is in default and did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

It is well accepted that the f irst element functions primarily as a standing requirement. The standing
(or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between
the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on
Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The entirety of the DAVIS POLK mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

The Panel f inds the f irst element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the dif f icult task of “proving a negative”, requiring information that is of ten primarily within the knowledge or control of the

respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shif ts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisf ied the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the available record, the Panel f inds Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Respondent has not rebutted

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Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

The Panel f inds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy
establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be
evidence of the registration and use of a domain name in bad faith. In the present case, the Panel notes that
Respondent intentionally attempted to attract Internet users by creating a likelihood of confusion with
Complainant’s well-known mark by passive holding.

Panels have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a f inding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the distinctiveness and reputation of Complainant’s trademark, and the composition of the disputed domain name, and finds that in the circumstances of this case the passive holding of the disputed domain name does not prevent a f inding of bad faith under the Policy.

The Panel f inds that the third element of the Policy has been established.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <davispolkllp-us.com> be transferred to Complainant.

/Clark W. Lackert/
Clark W. Lackert
Sole Panelist
Date: May 8, 2025