Fenwick & West LLP v ugch ayun

WIPO Case No. D2025-2197

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Fenwick & West LLP v. ugch ayun

Case No. D2025-2197

1. The Parties

The Complainant is Fenwick & West LLP, United States of America, internally represented.

The Respondent is ugch ayun, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <feniwick.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 June 5, 2025. On
June 5, 2025, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On June 6, 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 (Redacted for Privacy, Privacy service provided by Withheld for
Privacy ehf) and contact information in the Complaint. The Center sent an email communication to the
Complainant on June 6, 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 June 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 June 12, 2025. In accordance with the Rules, paragraph 5, the due date for Response was July 2, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 7, 2025.

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The Center appointed Gordon Arnold as the sole panelist in this matter on July 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

The Complainant is an American law firm with numerous areas of legal practice. Since as early as 1972, the property and other issues. The Complainant’s services, publications, and a list of some of its clients is provided on its website at “ The domain name <fenwick.com> has been registered to the Complainant since 1999. The Complainant is consistently ranked by prominent industry reporters as being among the best law firms in the United States. The Complainant was one of five finalists for American Lawyer’s “Law Firm of the Year” in 2021.

Chambers & Partners, one of the leading directories in the legal industry, ranked the Complainant as a Band
1 law firm nationally in Startups & Emerging Companies, and ranked the firm nationally for capital markets,
M&A, intellectual property, life sciences, privacy and data security, technology, tax controversy and corporate
and finance tax work. Forbes included the Complainant in its list of America’s Top Trusted Corporate Law
Firms. In the 2022 edition of “Best Law Firms,” U.S. News & World Report ranked the Complainant as a Tier
1 law firm nationally in a number of legal services, including Intellectual Property, Technology Law, Securities
/ Capital Markets Law, Patent Law, Venture Capital Law, and Trademark Law. The Complainant also was
named Technology Law Firm of the Year by Global M&A Network at its Americas M&A Atlas Awards and
one of Law360’s Capital Markets Groups of the Year, and has received numerous recognitions nationally for
its copyright, trademark and patent litigation and prosecution and IP transactional work. In addition, the
Complainant has received several awards for its firm culture and community involvement, including being
awarded the National Public Service Award by the ABA’s Business of Law Section and named one of one of
the “Best Places to Work in the Bay Area” by Silicon Valley Business Journal and San Francisco Business
Times as well as the one of the “Best Places to Work in New York City” by Crain’s New York Business. The
Complainant was also named the best law firm for women in business law in North America, the best law
firm in the nation for work-life balance and pro bono work and the best law firm for women in the western U.S
at the Americas Women in Business Law Awards by Euromoney.

The Complainant submitted records from the United States Patent and Trademark Office including the following information:

Mark: FENWICK
US Serial Number: 77784163
Application Filing Date: July 17, 2009
US Registration Number: 3836798
Registration Date: August 24, 2010
Register: Principal
Mark Type: Service Mark
LIVE/REGISTRATION/Issued and Active

Status: The registration has been renewed.

The disputed domain name was registered on April 30, 2025, long after the use of the Complainant’s mark.

The Complainant provided evidence that the disputed domain name has been used in connection to the sending of email communications purporting to come from the employees of the Complainant.

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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.

In particular, the Complainant asserts the following:

- The FENWICK mark is incorporated in the Complainant’s business name, Fenwick & West LLP, and

its website, “ The FENWICK mark has been widely used and promoted since at least
2003 and has exclusively identified the Complainant’s legal services.

- The FENWICK mark and the Complainant’s associated domain name, <fenwick.com>, are used for

company email addresses, and for both intercompany communication as well as for communication with its customers, vendors, and the general public. As a result, the FENWICK mark symbolizes the goodwill and reputation associated with the Complainant.

- The Respondent clearly knew of the FENWICK mark and its use by the law firm Fenwick & West LLP and registered a nearly identical domain name in the face of that knowledge precisely so that, after hacking into a third party’s email, the Respondent could impersonate one of the law firm’s attorneys. There is no

plausible argument that the Respondent did not know of the Complainant’s mark; instead, the Respondent
has made this knowledge apparent, as the Respondent used the disputed domain name to impersonate
attorneys working at the Complainant law firm. Specifically, the Respondent created email addresses to look
like three of the Complainant’s attorney’s email addresses and used them in correspondence to mislead third
parties to believe that the Respondent’s email was legitimate.

- The Complainant’s trademark and the email sent from the disputed domain name used the name of one of the Complainant’s employees. Here, it is evident that the Respondent has no relationship with the FENWICK trademark, since the Respondent is using it only to impersonate attorneys in the Complainant law

firm. Additionally, by using the disputed domain name solely to impersonate attorneys in the Complainant
law firm to create a veneer of credibility to defraud a third party, the Respondent shows an intent to capitalize
on the goodwill and reputation of the Complainant and the Complainant’s FENWICK trademark in active bad
faith.

- The Respondent uses the disputed domain name for one reason only: to deceive and induce a third

party to make a bank payment to the Respondent. The disputed domain name does not lead to an active
webpage; the Respondent registered it solely to create email addresses that are confusingly similar to
Complainant’s to be used to further its fraud and bad faith.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. 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. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

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The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

The Panel finds the mark is recognizable within the disputed domain name, the only difference being an extra letter “i” in the Complainant’s trademark. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, sections 1.7. and 1.9.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, 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 come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

Panels have held that the use of a domain name for illegitimate or illegal activity. Here, the activity includes hacking, impersonation of employees of the Complainant, and attempted fraud. These can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The actions of the Respondent that the Complainant alleged (and supported with sufficient evidence) shows bad faith.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

Panels have held that the use of a domain name for unauthorized account access/hacking, impersonation/passing off, or other types of fraud, constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy.

The Panel finds that the Complainant has established the third element of the Policy.

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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 <feniwick.com> be transferred to the Complainant.

/Gordon Arnold/
Gordon Arnold
Sole Panelist
Date: July 17, 2025