Fenwick & West Llp v tommy rogers

WIPO Case No. D2025-1395

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Fenwick & West LLP v. tommy rogers

Case No. D2025-1395

1. The Parties

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

The Respondent is tommy rogers, United States.

2. The Domain Name and Registrar

The disputed domain name <fenwickllp-law.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 (Domain Administrator, See PrivacyGuardian.org) and contact
information in the Complaint. The Center sent an email communication to the Complainant on April 9,
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

April 11, 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 (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 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 7, 2025.

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The Center appointed Andrew J. Park as the sole panelist in this matter on May 12, 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, Fenwick & West LLP, is a well-known American law firm that provides a broad range of legal services since 1972, including corporate, litigation, and intellectual property matters, particularly on behalf of technology and life sciences companies. The Complainant operates under the FENWICK mark, which has been widely used and promoted, and in continuous commercial use since at least 2003, and is registered with the United States Patent and Trademark Office (“USPTO”) as of August 24, 2010. The FENWICK mark identifies not only the firm’s legal services but also the Complainant’s business name, Fenwick & West LLP, its website with the domain name <fenwick.com>, which has been registered to the Complainant since 1999. The domain name is used for professional communications both internally and with clients, vendors, and the general public, thereby further strengthening the association between the mark and the Complainant’s legal practice and symbolizing the goodwill and reputation associated with the Complainant.

Building on its long-standing reputation and strong brand identity, the Complainant has earned consistent recognition as one of the leading law firms in the United States by major legal industry authorities. It was a finalist for American Lawyer’s “Law Firm of the Year” in 2021 and has been ranked nationally in multiple practice areas — including startups, M&A, intellectual property, and capital markets — by Chambers & Partners and U.S. News & World Report. Forbes named the Complainant among America’s Top Trusted Corporate Law Firms. The firm has also been recognized for its excellence in technology law and capital markets by Law360 and the Global M&A Network, and has received numerous awards for its workplace culture, public service, and support of gender equity in the legal profession. Through its longstanding use, reputation, and numerous distinctions, the FENWICK mark has become a well-known identifier of the Complainant’s high-quality legal services and professional integrity.

The Complainant is the owner of the below trademark registration:

Mark	FENWICK
Owner	Fenwick & West LLP
Filing Date	July 17, 2009
Registration Date	August 24, 2010
First Use in
Commerce	September 3, 2003
Expiration Date	August 24, 2030
Registration Number	3836798
Registrar	USPTO registration
Status	Registered

The disputed domain name <fenwickllp-law.com> was registered on March 13, 2025 by the Respondent. fraudulent emails impersonating an attorney at the Complainant’s law firm.

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 because:

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(1) The disputed domain name is identical or confusingly similar to the Complainant’s trademark FENWICK well before the registration date of the disputed domain name by the Respondent.

in which the Complainant has rights. The Complainant’s mark FENWICK has been registered with the

The disputed domain name wholly incorporates the Complainant’s trademark FENWICK in its entirety and merely appends the descriptive term “llp” and the generic word “law”, both of which are directly related to the Complainant’s core legal services and therefore do not dispel, but rather exacerbate, the likelihood of confusion. The addition of such terms may even give rise to a false impression of affiliation or sponsorship by the Complainant. Also, the presence of a generic Top-Level Domain (“gTLD”) such as “.com” is irrelevant when assessing confusing similarity under the UDRP.

Accordingly, the Complainant insists that the disputed domain name <fenwickllp-law.com> is confusingly similar to the Complainant’s trademark FENWICK.

(2) the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant Respondent, and there is no information that the Respondent is trading under a name corresponding to the disputed domain name. Furthermore, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain. There is no evidence of any use of the disputed domain name as a bona fide offering of goods or services, nor of any demonstrable preparations for such an offering.
claims that the Respondent lacks any rights or legitimate interest in the disputed domain name because the

To the contrary, the Respondent appears to have registered and used the disputed domain name solely for demonstrated any other use of the disputed domain name beyond this scheme. The only plausible motivation for the Respondent’s registration and use of the disputed domain name is to exploit the Complainant’s reputation and the goodwill associated with the FENWICK mark to perpetrate fraud and secure unauthorized financial gain. Such conduct clearly does not give rise to any rights or legitimate interests in the disputed domain name under the Policy.
fraudulent purposes. On information and belief, the Respondent has used the disputed domain name to
create an email address that impersonates a licensed attorney at the Complainant in order to deceive a third
party. The fraudulent email correspondence includes the real name and signature of the impersonated

attorney, indicating a deliberate attempt to pass off as an authorized representative of the Complainant.

(3) The Respondent’s registration and use of the disputed domain name constitutes bad faith under the
UDRP, as the disputed domain name was clearly intended to exploit the Complainant’s trademark reputation,
create a likelihood of confusion among consumers, tarnish the Complainant’s mark, and deprive the
Complainant of the opportunity to register a disputed domain name in which it has a legitimate interest.

First, the Respondent registered the disputed domain name with prior knowledge of the Complainant’s trademark rights. The Complainant’s registered trademark FENWICK predates the registration of the disputed domain name, which was created on March 13, 2025, by nearly 15 years. Given the distinctive

and arbitrary nature of the FENWICK mark and the Complainant’s longstanding use and reputation in the
legal services sector, it is inconceivable that the Respondent was unaware of the Complainant’s prior rights.
Under established UDRP precedent, bad faith may be found where the respondent knew or should have
known of the complainant’s mark at the time of registration. See Façonnable SAS v. Names4sale, WIPO
Case No. D2001-1365; Barney’s Inc. v. BNY Bulletin Board, WIPO Case No. D2000-0059.

Second, the Respondent’s use of the disputed domain name evidences bad faith under Paragraph 4(b)(iv) of the Policy. The Respondent registered the disputed domain name for the sole purpose of impersonating a Complainant’s attorney by creating an email address that mimics the Complainant. This email address was used in fraudulent correspondence that included the real attorney’s name and signature, with the intent to deceive a third party into believing the communication originated from the Complainant. Such conduct

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clearly demonstrates an intentional attempt to attract, for commercial gain, a third party by creating a
likelihood of confusion with the Complainant’s mark as to the source or affiliation of the email. This
constitutes bad faith registration and use under the Policy and is consistent with findings in Fenwick & West
LLP v. fredu lassy, WIPO Case No. D2023-2268, and PharmaZell GmbH v. Fred Bingo, WIPO Case No.
D2021-1564.

These are clear indications of bad faith and the purpose of the Respondent in registering the disputed domain name was definitely to mislead, confuse and divert consumers or to tarnish the Complainant’s well- known FENWICK trademark. Thus, the Complainant argues that the Respondent is using the disputed domain name in order to intentionally attempt to attract, for commercial gain, Internet users by creating a likelihood of confusion between the Complainant’s trademark and the disputed domain name as to the source, sponsorship, affiliation, or endorsement of the Respondent, and thereby unfairly capitalizing on the reputation and goodwill of the Complainant and its FENWICK trademark.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

This element consists of two parts: first, whether the Complainant has rights in a relevant trademark, and second, whether the disputed domain name is identical or confusingly similar to that trademark.

The Panel finds that the Complainant has established registered rights in the trademark FENWICK. The disputed domain name incorporates the Complainant’s FENWICK mark in its entirety, adding only the terms “llp” and “-law”. These additions do not prevent a finding of confusing similarity. It is well established that the addition of terms to a complainant’s trademark does not avoid a finding of confusing similarity (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), sections 1.7 and 1.8). Furthermore, the gTLD (“.com”) is typically disregarded in the comparison between a domain name and a trademark (see Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182).

For these reasons, pursuant to paragraph 4(a)(i) of the Policy, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s FENWICK trademark, and the first element of the Policy has been established.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the burden of production on this element shifts 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 do so, the Complainant is deemed to
have satisfied paragraph 4(a)(ii) of the Policy. WIPO Overview 3.0, section 2.1.

Here, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name <fencwickllp-law.com>. The Respondent has not submitted any evidence to rebut this showing and has not demonstrated any of the circumstances set forth under

paragraph 4(c) of the Policy. There is no indication that the Respondent has been commonly known by the disputed domain name, nor is there any evidence of legitimate noncommercial or fair use. The Respondent is not affiliated with the Complainant, has not been licensed or authorized to use the FENWICK trademark,
and is not commonly known by the disputed domain name.
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Furthermore, the Respondent’s use of the disputed domain name—impersonating a Complainant’s attorney through a lookalike email address to mislead third parties—demonstrates an intent to misappropriate the Complainant’s trademark for commercial gain. Specifically, the evidence shows that the Respondent used the disputed domain name to deceive a third party into making a bank transfer, thereby attempting to profit from the goodwill associated with the FENWICK mark. Such conduct is not a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name <fencwickllp-law.com>, and the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that may evidence bad faith registration and use of a domain name. Any one of the following is sufficient to support such a finding:

(i) the domain name was registered primarily for the purpose of selling it to the trademark owner or a
competitor for valuable consideration in excess of documented out-of-pocket costs;
(ii) the domain name was registered to prevent the trademark owner from reflecting the mark in a
corresponding domain name, as part of a pattern of such conduct;
(iii) the domain name was registered primarily to disrupt the business of a competitor; or
(iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain,
Internet users to its website by creating a likelihood of confusion with the complainant’s mark.

The Complainant contends that the Respondent registered and is using the disputed domain name solicit a wire transfer, thereby seeking commercial gain through a clear attempt to confuse users into believing that the disputed domain name was associated with the Complainant’s law firm.

<fenwickllp-law.com> in bad faith under paragraph 4(b)(iv) of the Policy. The Complainant asserts that the

The Respondent has not submitted any Response. In the absence of a Response, and considering the inferences (see WIPO Overview 3.0, section 4.3).

The disputed domain name was registered on March 13, 2025, long after the Complainant had established the terms “llp” and “-law”, which are closely associated with the Complainant’s identity as a law firm. The combination of these elements gives the clear impression that the disputed domain name is affiliated with the Complainant, and demonstrates that the Respondent was aware of the Complainant and its trademark rights at the time of registration.
trademark rights in the FENWICK mark, which it has used extensively in commerce since at least 2003.

Also, the Respondent used the disputed domain name to send fraudulent emails impersonating one of the constitutes a textbook case of bad faith use under paragraph 4(b)(iv) of the Policy, as the Respondent attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s mark.

Complainant’s attorneys. The impersonation included adopting the name and email signature of an actual

Given these circumstances and in the absence of any rebuttal, the Panel concludes that the Respondent
registered and is using the disputed domain name in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
Accordingly, the third element of the Policy has been established.

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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 disputed domain name <fenwickllp-law.com> be transferred to the Complainant.

/Andrew J. Park/
Andrew J. Park
Sole Panelist
Date: May 26, 2025