Fenwick & West LLP v Privacy Service Provided by Withheld for Privacy ehf /

WIPO Case No. D2022-0835

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Fenwick & West LLP v. Privacy Service Provided by Withheld for Privacy ehf /
Be Fast

Case No. D2022-0835

1. The Parties

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

Respondent is Privacy Service Provided by Withheld for Privacy ehf, Iceland / Be Fast, United States.

2. The Domain Name and Registrar

The disputed domain name <fenwiick.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 March 10, 2022. On March 10, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 10, 2022, 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 and contact information in the Complaint. The Center sent an email communication to Complainant on March 14, 2022, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on March 19, 2022.

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 Respondent of the Complaint, and the proceedings commenced on March 21, 2022. In accordance with the Rules, paragraph 5, the due date for Response was April 10, 2022. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 11, 2022.

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The Center appointed Phillip V. Marano as the sole panelist in this matter on April 19, 2022. 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 Fenwick & West LLP, a California-based law firm that has provided legal services in a variety of areas since 1972. Complainant owns a valid and subsisting registration for the FENWICK trademark in the United States, namely U.S. Reg. No. 3,836,798, which has priority dating back to September 30, 2003.

Respondent registered the disputed domain name <fenwiick.com> on February 9, 2022. At the time this advertisements unrelated to Complainant.

5. Parties’ Contentions

A. Complainant

Complainant asserts ownership of the FENWICK trademark and has adduced evidence of a trademark registration in the United States, with priority dating back to September 30, 2003. The disputed domain name is confusingly similar to Complainant’s FENWICK trademark, according to Complainant, because it

entirely incorporates Complainant’s FENWICK mark, with an additional typographical letter “i”.

Complainant further asserts that Respondent lacks any rights or legitimate interests in the disputed domain name based on the lack of evidence that Respondent is commonly known by the disputed domain names, the lack of evidence that Respondent has made use of, or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, and the fact that the disputed

domain name has been used by Respondent to create and send emails and wire transfer instructions

attempting to defraud Complainant’s client by impersonating an attorney at Complainant’s law firm.

Complainant argues that Respondent has registered and used the disputed domain name in bad faith to
send fraudulent emails and wire transfer instructions to Complainant’s client, by impersonating an attorney at

Complainant’s law firm.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

To succeed in its Complaint, Complainant must establish in accordance with paragraph 4(a) of the Policy:

i. The disputed domain name is identical or confusingly similar to a trademark in which Complainant has
rights;
ii. 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.

Although Respondent did not reply to Complainant’s contentions, the burden remains with Complainant to
establish by a balance of probabilities, or a preponderance of the evidence, all three elements of paragraph
4(a) of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition
(“WIPO Overview 3.0”), section 4.3 (“A respondent’s default would not by itself mean that the complainant is
deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s

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claims are true […] UDRP panels have been prepared to draw certain inferences in light of the particular facts and circumstances of the case, e.g. where a particular conclusion is prima facie obvious, where an explanation by the respondent is called for but is not forthcoming, or where no other plausible conclusion is

apparent.”); see also The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064 (“The
Respondent’s default does not automatically result in a decision in favor of the complainant. The

Complainant must still prove each of the three elements required by Policy paragraph 4(a)”).

A. Identical or Confusingly Similar

prima facie

Ownership of a nationally or regionally registered trademark serves as evidence that section 1.2.1. Complainant submitted evidence that the FENWICK trademark has been registered in the United States with priority dating back to September 30, 2003. Thus, the Panel finds that Complainant’s rights in the FENWICK trademark have been established pursuant to the first element of the Policy.

The only remaining question under the first element of the Policy is whether the disputed domain name is
identical or confusingly similar to Complainant’s FENWICK trademark. In this Complaint, the disputed
domain name is confusingly similar to Complainant’s FENWICK trademark because, disregarding the “.com”
generic Top-Level Domain (“gTLD”), the trademark is contained in its entirety within the disputed domain
name. WIPO Overview 3.0, section 1.7. (“This test typically involves a side-by-side comparison of the
domain name and the textual components of the relevant trademark to assess whether the mark is
recognizable within the domain name … [I]n cases where a domain name incorporates the entirety of a
trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the
domain name will normally be considered confusingly similar...”). In regard to gTLDs, such as “.com” in the
disputed domain name, they are generally viewed as a standard registration requirement and are
disregarded under the first element. WIPO Overview 3.0, section 1.11.

Furthermore, it is well established that domain names which consist of common, obvious or intentional misspellings of trademarks are considered to be confusingly similar for the purposes of the first element of the Policy. WIPO Overview 3.0, section 1.9 (“Examples of such typos include (i) adjacent keyboard letters, (ii) substitution of similar-appearing characters … (iii) the use of different letters that appear similar in different fonts, (iv) the use of non-Latin internationalized or accented characters, (v) the inversion of letters and numbers, or (vi) the addition or interspersion of other terms or numbers”). See e.g. Edmunds.com, Inc. v. Digi Real Estate Foundation, WIPO Case No. D2006-1043 (“This is clearly a ‘typosquatting’ case where the disputed domain name is a slight misspelling of a registered trademark to divert internet traffic … In fact, the domain name comprises the Complainant’s trademark … with a single misspelling of an element of the mark: a double consonant “s” at the end.”). Here, in view of the evidence proffered by Complainant, the Panel concurs that the disputed domain name was registered by Respondent with an intentional misspelling, namely an additional letter “i” in Complainant’s FENWICK trademark.

In view of Complainant’s registration for the FENWICK trademark, Respondent’s incorporation of that trademark in its entirety in the disputed domain name, and Respondent’s incorporation of a clearly intentional misspelling of Complainant’s FENWICK trademark in the disputed domain name, the Panel concludes that Complainant has established the first element of the Policy.

B. Rights or Legitimate Interests

Complainant must make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name, shifting the burden of production on this element to Respondent to come forward with evidence demonstrating such rights or legitimate interests. Where, as in this Complaint, Respondent fails to come forward with any relevant evidence, Complainant is deemed to have satisfied the second

element of the Policy. WIPO Overview 3.0, section 2.1.

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It is evident that Respondent, identified by the Registrar for the disputed domain name as “Be Fast”, is not commonly known by the disputed domain name or Complainant’s FENWICK trademark.

impersonation of the complainant and other types of fraud - can never confer rights or legitimate interests on a respondent. Circumstantial evidence can support a credible claim made by complainant asserting respondent is engaged in such illegal activity, including that respondent has masked its identity to avoid being contactable, or that respondent’s website has been suspended by its hosting provider. WIPO Overview 3.0, section 2.13. See e.g. Graybar Services Inc. v. Graybar Elec, Grayberinc Lawrenge, WIPO Case No. D2009-1017 (“Respondent has used the domain name to pretend that it is the Complainant and in particular to create false emails pretending that they are genuine emails coming from the Complainant and one of its senior executives”) see also The Commissioners for HM Revenue and Customs v. Name	UDRP panels have categorically held that use of a domain name for illegal activity - including the hosting suspended as a result of fraudulent activities. This is evidence of bad faith registration and use of the disputed domain names.”) In this Complaint, Complainant has submitted strong evidence to establish that Respondent registered and used the disputed domain name in a clear attempt to impersonate an attorney at Complainant’s law firm and defraud Complainant’s client using fraudulent wire transfer instructions. Specifically, Respondent sent an email from an @fenwiick.com email address impersonating a specific attorney at Complainant’s law firm, to send Complainant’s client false wire transfer instructions. To this end, the second and third elements of the Policy may be assessed together (as discussed further below) where clear indicia of bad faith suggests that there cannot be any Respondent rights or legitimate interests. WIPO Overview 3.0, section 2.15.
In view of the absence of any evidence supporting any rights or legitimate interests in the disputed domain name, and Complainant’s clear-cut evidence that the disputed domain name has been used to send fraudulent emails and wire transfer instructions to Complainant’s client, the Panel concludes that Complainant has established the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy proscribes the following non-exhaustive circumstances as evidence of bad faith registration and use of the disputed domain name:
i. Circumstances indicating that Respondent has registered or Respondent has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to Complainant who is the owner of the trademark to a competitor of that Complainant, for valuable consideration in excess of Respondent’s documented out of pocket costs directly related to the disputed domain name; or
ii. Respondent has registered the disputed domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
iii. Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
iv. By using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website
or location or of a product or service on Respondent’s website or location.
UDRP panels have categorically held that registration and use of a domain name for illegal activity - including impersonation, passing off, and other types of fraud - is manifestly considered evidence of bad faith within paragraph 4(b)(iv) of the Policy. WIPO Overview 3.0, section 3.1.3. Use of the disputed domain name by Respondent to pretend that it is Complainant or that it is associated with Complainant shows Respondent

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Inc. v. Devteam Meetey, WIPO Case No. D2016-0500 (“The bad faith of the Respondent follows from the uncontested fact that the Respondent impersonated employees of the Complainant and even used the disputed domain name in requesting a third party to pay a large amount of money to the Respondent. This can only be seen as a very clear fraudulent behavior. Registering a domain name which is confusingly similar to the trademark of a complainant and subsequently using such domain name to impersonate employees of the Complainant in an attempt to commit fraud is a clear example of registration and use in bad faith. This Panel considers such behavior as an attempt to disrupt the business of the Complainant as well as an attempt to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s trademark”); Sumitomo Dainippon Pharma Co., Ltd., Sunovion Pharmaceuticals Inc. v. Raid Benson, WIPO Case No. D2018-2893 (finding bad faith when the domain name was used to create email addresses that were used to defraud third parties by impersonating employees of the Complainants). Again, Complainant has produced clear email evidence establishing that Respondent purposefully targeted	registered the domain name for the purpose of disrupting the business of the Complainant.” See Edelman, Respondent’s illegal scheme to impersonate an attorney at Complainant’s law firm, Fenwick & West LLP, and thereby deceive a Complainant’s client into thinking that Complainant was sending them new or different wire transfer instructions to an account almost certainly controlled by Respondent.
In view of Respondent’s attempted impersonation of one of Complainant’s attorneys in order to deceive and defraud Complainant’s client, the Panel concludes that Complainant has established the third element of 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, <fenwiick.com> be transferred to Complainant.
/Phillip V. Marano/ Phillip V. Marano Sole Panelist Date: April 28, 2022