Fieldfisher LLP v Ron Bart

WIPO Case No. D2024-4049

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Fieldfisher LLP v. Ron Bart

Case No. D2024-4049

1. The Parties

The Complainant is Fieldfisher LLP, United Kingdom, represented by Fieldfisher LLP, United Kingdom.

The Respondent is Ron Bart, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <fieldsfisher.com> is registered with Register.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 2, 2024.
On October 2, 2024, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On October 2, 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 (Perfect Privacy LLC, Network Solutions LLC) and contact
information in the Complaint. The Center sent an email communication to the Complainant on October 3,
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 amendment to the

Complaint on October 3, 2024.

The Center verified that the Complaint together with the amendment to 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
Complaint, and the proceedings commenced on October 4, 2024. In accordance with the Rules, paragraph
5, the due date for Response was October 24, 2024. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on October 30, 2024.

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The Center appointed Christian Pirker as the sole panelist in this matter on November 6, 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 7.

4. Factual Background

The Complainant is a European law firm headquartered in London, United Kingdom with offices in Europe, the United States, and China.

The Complainant was renamed to Fieldfisher LLP in November 2015, formerly named “Field Fisher
Waterhouse LLP”.

The Complainant provides legal services in various sectors, has over 1,800 employees across numerous international offices and has received many recognitions in its industry.

The Complainant owns various trademarks registrations for FIELDFISHER, including:

- International trademark registration for FIELDFISHER, No. 1238145, registered on August 4, 2014, in international class 45 concerning notably legal services and legal research.

- European Union trademark registration for FIELDFISHER, No. 012575511, registered on June 30,

2014, in international classes 9, 16, 25, 35, 36, 38, 41, and 45.
- United Kingdom trademark registration for FIELDFISHER, No. UK00912575511, registered on June 30, 2014, in international classes 9, 16, 25, 35, 36, 38, 41, and 45.

- United States trademark registration for FIELDFISHER, No. 79161122, registered on February 2,

2016, in United States classes 100 and 101.

The Complainant also owns the domain name <fieldfisher.com>, registered on March 9, 2007, to represent the company on the Internet.

The disputed domain name <fieldsfisher.com> was registered on July 22, 2024, and at the time of filing the

Complaint, it did not resolve to an active page.

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.

The Complainant asserts that the disputed domain name is confusing similar to FIELDFISHER and notably to its domain name <fieldfisher.com>, with the addition of the single letter “s”, pluralisation of the term “field”. The Complainant further alleges that the Respondent has no rights or legitimate interests in the disputed domain name. Finally, the Complainant asserts that the disputed domain name has been registered and was used in bad faith. It alleges that it is implausible that the Respondent was unaware of the Complainant when the disputed domain name was registered, in particular since the Respondent used the disputed domain name and the Complainant’s misspelled email address to support a phishing scheme and fraudulent payments from at least one of the Complainant’s clients by pretending to be the Complainant.

B. Respondent

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

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6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, the Complainant must prove that each of the three following elements is satisfied for the disputed domain name:

(i)        The 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 domain name; and

(iii)      The domain name has been registered and is being used in bad faith.

In according with paragraph 5(f) of the Rules, if a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel decides the dispute based upon the complaint.

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.

Based on the available record, the Panel finds the Complainant has shown rights in respect of a trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1.

It is also a consensus view among panels that a domain name which contains a common or obvious misspelling of a trademark normally will be found to be confusingly similar to such trademark, where the misspelled trademark remains the dominant or principal component of the domain name. WIPO Overview 3.0, section 1.9. The practice of purposefully misspelling a trademark by adding a letter in the disputed domain name is commonly referred to as “typosquatting”, which creates a virtually identical and/or confusingly similar mark to the Complainant’s trademark under paragraph 4(a)(i) of the Policy (see, Humana Inc v. Cayman Trademark Trust, WIPO Case No. D2006-0073).

The Panel notes that the trademark in its entirety is reproduced within the disputed domain name, with only a minor distinction, adding the letter “s” in the disputed domain name, as a pluralisation of the term “field”, and that the trademark remains the principal component of the disputed domain name.

Accordingly, and based on the available record, the Panel finds that the disputed domain name is confusing similar to the trademark and that 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.

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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.

Based on the available record, 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.

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.

It is also a consensus view among Panelist that the use of a domain name for purposes other than to host a website may constitute bad faith. Such purposes include sending email, phishing, identity theft, or malware distribution. (In some such cases, the respondent may host a copycat version of the complainant’s website.).

Many such cases involve the respondent’s use of the domain name to send deceptive emails, e.g., to obtain sensitive or confidential personal information from prospective job applicants, or to solicit payment of fraudulent invoices by the complainant’s actual or prospective customers. WIPO Overview 3.0, section 3.4.

It seems clear to the Panel that the Respondent registered the disputed domain name with full knowledge of the Complainant’s trademark, particularly since the trademark is included in its entirety with only the addition of a letter, leading orally to a very small difference. This conclusion is moreover supported by the evidence

submitted of the use of a misspelled email address to support a phishing scheme and to attempt to obtain

fraudulent payment from at least one of the Complainant’s clients by pretending to be the Complainant.

The failure of the Respondent to submit a response or any communication supports the finding of bad faith

WIPO Overview 3.0, section 3.2.1.

Accordingly, these evidences prove that it is unlikely that the Respondent was not aware of the name, when registering the disputed domain name.

It is further a consensus view among Panelist that, an illegitimate activity such as phishing can never confer rights or legitimate interests on a respondent, such behavior is manifestly considered evidence of bad faith. WIPO Overview 3.0, section 3.1.4.

As stated above, the Panel accepts the Complainant’s assertion that the Respondent has intentionally used the disputed domain name and the Complainant’s misspelled email address to support a phishing scheme and to attempt to obtain fraudulent payments from at least one of the Complainant’s clients by pretending to be the Complainant (one of the Complainant’s credit controller), which leads to a conclusion of evidence of bad faith registration and use.

Based on the available record, 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 <fieldsfisher.com> be transferred to the Complainant.

/Christian Pirker/
Christian Pirker
Sole Panelist
Date: November 20, 2024