Fenwick & West LLP v gift good
WIPO Case No. D2024-3861
•13-11-2024
| ARBITRATION AND MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
Fenwick & West LLP v. gift good
Case No. D2024-3861
1. The Parties
The Complainant is Fenwick & West LLP, United States of America (“United States”), internally represented.
The Respondent is gift good, United States.
2. The Domain Name and Registrar
The disputed domain name <fenwck.com> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 21, 2024. On September 23, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 23, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent (Unknown Registrant) and contact information in the Complaint. The Center sent an email communication to the Complainant on September 25, 2024, 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 September 27, 2024.
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 (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the
Complaint, and the proceedings commenced on October 3, 2024. In accordance with the Rules, paragraph
5, the due date for Response was October 23, 2024. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on October 24, 2024.
The Center appointed Evan D. Brown as the sole panelist in this matter on October 30, 2024. 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
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4. Factual Background
The Complainant is in the business of providing legal services. It owns the trademark FENWICK for which it
enjoys the benefits of registration (e.g., United States Registration No. 3,836,798, registered on August 24,
2024).
According to the WhoIs records, the disputed domain name was registered on July 31, 2024. The
Respondent has used the disputed domain name to send email messages to imitate an attorney at the
Complainant’s law firm, in an attempt to commit financial fraud against a third party.
5. Parties’ Contentions
A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to the domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name, and (iii) the disputed domain name has been registered and is being used in bad faith. The Panel finds that all three of these elements have been met in this case.
A. Identical or Confusingly Similar
This first element functions primarily as a standing requirement. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. 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. This element requires the Panel to consider two
issues: first, whether the Complainant has rights in a relevant mark; and second, whether the disputed
domain name is identical or confusingly similar to that mark.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark
certificate belong to its respective owner. See Advance Magazine Publishers Inc., Les Publications Conde
Nast S.A. v. Voguechen, WIPO Case No. D2014-0657. The Complainant has demonstrated its rights in the
FENWICK mark by providing evidence of its trademark registrations. See WIPO Overview 3.0, section 1.2.1.
| trademark – it only lacks the letter “i” within it. These circumstances make it confusingly similar to the | This appears to be a typosquatting case. The disputed domain name is almost identical to the complainant’s by only one missing letter to be confusingly similar). |
| Accordingly, the Panel finds that the Complainant has satisfied this first element under the Policy. |
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B. Rights or Legitimate Interests
The Panel evaluates this element of the Policy by first looking to see whether the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. If the Complainant makes that showing, the burden of production of demonstrating rights or legitimate interests shifts to the Respondent (with the burden of proof always remaining with the Complainant). See WIPO Overview 3.0, section 2.1; AXA SA v. Huade Wang, WIPO Case No. D2022-1289.
On this point, the Complainant asserts, among other things, that: (1) the Respondent has not been licensed or authorized by the Complainant to register or use the disputed domain name, particularly because it encompasses the Complainant’s FENWICK mark, (2) the Respondent is not known by the disputed domain name, and (3) the Respondent has registered and used the disputed domain name to take unfair advantage of the recognition and prominence associated with the Complainant’s FENWICK mark to send fraudulent emails, in an attempt to induce the third party to make a bank payment to the Respondent.
The Complainant has established its prima facie case. Nothing in the record tilts the scales in the Respondent’s favor and use of a domain name for illegal activity can never confer rights or legitimate interests upon a respondent. Accordingly, the Panel finds that the Complainant has established this second element under the Policy.
C. Registered and Used in Bad Faith
The Policy requires a complainant to establish that the disputed domain name was registered and is being used in bad faith. The facts of this case demonstrate that the Respondent registered the disputed domain name for commercial gain or otherwise to interfere in the business of the Complainant, and to trade on the Complainant’s goodwill and reputation. By impersonating the Complainant and at least one of its attorneys,
the Respondent’s actions constituted fraud. See Nelson Mullins Riley & Scarborough LLP v. Redacted for Privacy, Privacy Service Provided by Withheld for Privacy ehf / Mike Dave, NelsonNeded, WIPO Case No. D2022-1636; Faegre Baker Daniels, LLP v. WhoisGuard Protected, WhoisGuard, Inc. / Douglas Ocenasek,
WIPO Case No. D2019-2688. For these reasons, the Panel finds that the disputed domain name was registered and is being used in bad faith and that the Complainant has established this third element under the Policy.
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 <fenwck.com> be transferred to the Complainant.
/Evan D. Brown/
Evan D. Brown
Sole Panelist
Date: November 13, 2024
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