Fenwick & West LLP v andrew jones

WIPO Case No. D2025-2562

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Fenwick & West LLP v. andrew jones

Case No. D2025-2562

1. The Parties

The Complainant is Fenwick & West LLP, United States of America (“United States”), represented internally.

The Respondent is andrew jones, United States.

2. The Domain Name and Registrar

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

(the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 1, 2025. On July 1, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 1, 2025, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name that differed from the named Respondent (Unknown Registrant, Redacted for Privacy (DT)) and contact information in the Complaint. The Center sent an email communication to the Complainant on July 2, 2025, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 2, 2025.

The Center verified 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.

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint and the amended Complaint, and the proceedings commenced on July 7, 2025. In accordance with the Rules, paragraph 5, the due date for a response was July 27, 2025. The Respondent did not submit a response. Accordingly, the Center notified the Respondent’s default on July 29, 2025.

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The Center appointed A. Justin Ourso III as the panelist in this matter on August 5, 2025. The Panel finds 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

The Complainant, an American law firm with a prominent national practice in the United States, has operated under its FENWICK mark since 1972.

The Complainant owns a United States registration, No. 3,836,798, for its FENWICK trademark, issued on
August 24, 2010, for legal services in Class 45.

The Complainant owns the domain name <fenwick.com>, which it uses for email communications and operates a website at “ through which it conducts business with its clients and advertises its services to potential clients.

The Respondent registered the Domain Name on May 14, 2025, and used the Domain Name that same day to initiate a series of emails impersonating a Complainant employee and targeting a Complainant client in an attempt to divert an invoice payment to the Respondent. Prior to and since the filing of the Complaint, the

Domain Name has not resolved to an active web site.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the Domain Name.

Notably, the Complainant contends that the Respondent sent a series of emails impersonating a payment to the Respondent.

B. Respondent

The Respondent did not submit a response to the amended Complaint.

6. Discussion and Findings

A complainant must prove three elements to obtain relief: (i) the domain name is identical or confusingly similar to a trademark in which the complainant has rights; (ii) the respondent has no rights or legitimate interests in the domain name; and (iii) the respondent registered and is using the domain name in bad faith.

Policy, paragraph 4(a).

A. Identical or Confusingly Similar

WIPO Overview 3.0, sections 1.7 and 1.8.

On the first element, the Panel finds that the Complainant’s registration establishes its trademark rights. section 1.2.1. The Domain Name consists of the Complainant’s entire trademark, with the added elements of a geographical reference to the “US” and an entity designation, “LLP”, which are consistent with the Complainant’s location and the nature of its entity. The Panel finds that the mark is sufficiently recognizable within the Domain Name for the Domain Name to be confusingly similar to the trademark.

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Accordingly, the Panel concludes that the Complainant has proven the first element: the Domain Name is confusingly similar to a trademark in which it has rights.

B. Rights or Legitimate Interests

The Respondent has not claimed the existence of any circumstance under the Policy, paragraph 4(c), that demonstrates that a respondent has rights to, or legitimate interests in, a domain name. The Complainant, on the other hand, has shown that it established its trademark rights before the Respondent registered the Domain Name; it has not authorized the Respondent to use its trademark; the record contains no evidence

that the Respondent is commonly known by the Domain Name, owns a trademark registration for the the Domain Name to impersonate an employee of the Complainant, which is not a bona fide commercial use, a legitimate noncommercial use, or a fair use of the Domain Name. These constitute prima facie a showing that the Respondent lacks any rights or legitimate interests in the Domain Name under the Policy, paragraph 4(a)(ii), shifting the burden of production on this second element to the Respondent to come forward with relevant evidence proving rights or legitimate interests in the Domain Name. WIPO Overview 3.0, sections 2.1 and 2.13. The Respondent has not submitted any evidence to rebut the prima facie showing.

Additionally, the Respondent’s name and email address do not resemble the Domain Name, corroborating that the Respondent is not commonly known by the Domain Name and the Respondent failed to provide any evidence of an actual or a planned bona fide commercial use, a noncommercial use, or a fair use of the Domain Name, or even to respond to the Complaint. On the contrary, the evidence shows impersonation and an intended deceptive use for commercial gain. WIPO Overview 3.0, sections 2.5 and 2.13.

Most importantly, the Panel finds that the Complainant has proven that the Respondent impersonated a Complainant employee in a fraudulent attempt to misdirect to the Respondent an invoice payment. Panels have categorically held that the use of a domain name for impersonation to perpetrate a fraud can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.

Accordingly, the Panel concludes that the Complainant has proven the second element: the Respondent lacks rights or legitimate interests in the Domain Name.

C. Registered and Used in Bad Faith

The Panel finds that the Respondent registered the Domain Name and then, on the same day,
impersonated a Complainant employee in an attempt to misdirect the payment for an invoice to the
Respondent, which is per se a deceptive and illegitimate activity and a bad faith use of the Domain Name.
WIPO Overview 3.0, sections 3.1.4 and 3.4. These findings compel the Panel’s conclusion that the
Respondent (1) intentionally registered the Domain Name in bad faith to impersonate the Complainant and
target a Complainant client and (2) used it in bad faith to impersonate the Complainant and target a client for
its own illegitimate commercial gain. WIPO Overview 3.0, sections 3.1, 3.1.4, and 3.4. The Respondent’s
failure to submit a response to the Complaint supports the conclusion of bad faith registration and use.
WIPO Overview 3.0, sections 3.2.1 and 4.3.

Accordingly, the Panel concludes that the Complainant has proven the third element: the Respondent registered and is using the Domain Name in bad faith.

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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 Domain Name <us-fenwickllp.com> be transferred to the Complainant.

/A. Justin Ourso III/
A. Justin Ourso III
Panelist
Date: August 18, 2025