Fenwick & West Llp v Name Redacted

WIPO Case No. D2025-1404

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Fenwick & West LLP v. Name Redacted

Case No. D2025-1404

1. The Parties

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

The Respondent is Name Redacted.[1]

[1]The Respondent appears to have used the name of an attorney at the Complainant’s law firm when registering the disputed domain

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 4, 2025. On
April 7, 2025, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On April 7, 2025, 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 April 7, 2025, providing the registrant and
contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the

Complaint.

The Center verified that the 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

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Complaint, and the proceedings commenced on April 15, 2025. In accordance with the Rules, paragraph 5, the due date for Response was May 5, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 6, 2025.

The Center appointed Colin T. O'Brien as the sole panelist in this matter on May 9, 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

Complainant is an American law firm with numerous areas of legal practice. Since as early as 1972,
Complainant has been advising and litigating on behalf of clients regarding corporate, litigation, intellectual
property and other issues. Complainant provides its legal services under the FENWICK name. Complainant
owns a United States trademark registration for FENWICK (Reg. No. 3836798 registered on August 24,
2010 and used in commerce since September 30, 2003. Complainant has used the domain name

<fenwick.com> since 1999.

The domain name <fenwickllp-us.com> was registered on February 12, 2025 the (“disputed domain name”).

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 disputed domain name.

Notably, the Complainant contends that Complainant has used the FENWICK mark continuously since well prior to February 12, 2025, the registration date for the disputed domain name. Complainant owns the trademark registration for the FENWICK mark registered on August 24, 2010 and used in commerce since September 30, 2003. Complainant uses the FENWICK mark as a service mark that identifies Complainant’s business name.

The disputed domain name merely adds an “llp” and “-us” next to the FENWICK mark (“fenwickllp-us”). Adding the acronym “llp” and the country code “us” next to the FENWICK mark does not alter the phonetic or conceptual similarity between the disputed domain name and the FENWICK mark, and is clearly intended to appear as the FENWICK mark.

Respondent has not been licensed or authorized by Complainant to register or use the disputed domain name, particularly because it encompasses Complainant’s FENWICK mark. Respondent is not commonly known by the name or nickname of the disputed domain name, or any name containing Complainant’s FENWICK mark. Respondent’s WhoIs information in connection with the Domain Name makes no mention of the disputed domain name or the mark as Respondent’s name or nickname.

Respondent is using the disputed domain name to impersonate an attorney at the Complainant’s law firm in
order to defraud a third party. The disputed domain name does not resolve to an active website instead,
Respondent only uses the domain in order to create an associated email address that purports to belong to
an attorney associated with Complainant for the sole purpose of impersonating that attorney. Respondent’s
fraudulent email correspondence uses this attorney’s real name and signature in the body of the email to
further the fraud. Respondent appears to have registered this disputed domain name to intentionally mislead
a third party to believe that the fraudulent email is coming from an attorney at the Complainant law firm. This
indicates that, on information and belief, Respondent created the site solely for the purpose of defrauding
this party.

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The use of the disputed domain name for this fraudulent scheme is particularly insidious because, except for the inclusion of the acronym “llp” and country code “us”, Respondent’s email address is identical to the email address of an attorney who works for the Complainant.

Respondent’s only plausible reason to register and use the disputed domain name and associated email
address is to take unfair advantage of the recognition and prominence associated with Complainant’s

FENWICK mark to fraudulently induce the third party to make a bank payment to Respondent.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has demonstrated it owns registered trademark rights in the FENWICK mark. The addition
of the terms “llp” and “us” does not prevent a finding of confusing similarity. See section 1.8 of the WIPO

Overview of WIPO Panel Views on Selected UDRP Questions Third Edition (“WIPO Overview 3.0”).

Accordingly, the disputed domain name is confusingly similar to a mark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Complainant has presented a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name and has not been commonly known by the disputed domain name. The fact that the Respondent obtained the disputed domain dame which incorporated Complainant’s

federally registered FENWICK trademark and merely adds the terms “llp” and “us” to Complainant’s primary
domain name <fenwick.com> indicates that the Respondent likely sought to piggyback on the mark for
illegitimate reasons, namely, to engage in a phishing scheme targeting clients of the Complainant (an
inference supported by the Complainant’s evidence and not denied by the Respondent).

After a complainant has made a prima facie case, the burden of production shifts to a respondent to present evidence demonstrating rights or legitimate interests in the domain name. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.

Here, the Respondent has provided no evidence of any rights or legitimate interests in the disputed domain name. Regardless, the use of a domain name for illegal activity can never confer rights or legitimate interests upon a respondent. WIPO Overview 3.0, section 2.13.

In the absence of any evidence rebutting the Complainant’s prima facie case indicating the Respondent’s
lack of rights or legitimate interests in respect of the disputed domain name, the Panel finds that the

Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The disputed domain name was registered years after the Complainant first used its FENWICK mark. The evidence provided by the Complainant makes it clear that the Respondent undoubtedly knew of the Complainant’s FENWICK mark and knew that it had no rights or legitimate interests in the disputed domain name when it registered the disputed domain dame.

There is no apparent benign reason for the Respondent to have registered the disputed domain dame that is a variant of the Complainant’s mark.

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Further, the use of the disputed domain name by Respondent is in bad faith. Paragraph 4(b)(iv) states that evidence of bad faith may include a respondent’s use of a domain name to intentionally attempt to attract, for commercial gain. The Complainant has alleged that the Respondent used the disputed domain name to send fraudulent emails to a client impersonating a partner of the domain name to scam the Complainant’s client. The fact that the disputed domain name does not resolve to an active website, noting that it can nevertheless be used for email purposes and as ammunition to attack the Complaint and its clients, is clearly indicative of bad faith use on the part of Respondent. In sum, there is a clear implausibility of the possibility of Respondent’s good faith use of the disputed domain name, Complainant’s mark is distinctive, Respondent has failed to submit a response, and Respondent has concealed its identity in a nefarious manner by falsely claiming they were a partner at Complainant’s firm. In the totality of circumstances, the Panel finds bad faith. See WIPO Overview 3.0, section 3.3.

Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith.

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

/Colin T. O'Brien/
Colin T. O'Brien
Sole Panelist
Date: May 23, 2025

name. In light of the potential identity theft, the Panel has redacted the Respondent’s name from this decision. However, the Panel has
attached as Annex 1 to this decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the
name of the Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this
proceeding, and has indicated Annex 1 to this decision shall not be published due to the exceptional circumstances of this case. See
Banco Bradesco S.A. v. FAST-12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788.