Fieldfisher LLP v Ruben M

WIPO Case No. D2023-1263

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Fieldfisher LLP v. Ruben M

Case No. D2023-1263

1. The Parties

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

The Respondent is Ruben M, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <fieldfisherlawsgroup.com> (“the Domain Name”) 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 23, 2023. On March 23, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 23, 2023, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent (Withheld for Privacy ehf) and contact information in the Complaint. The Center sent an email communication to the Complainant on March 24, 2023, 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 March 29, 2023.

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 4, 2023. In accordance with the Rules, paragraph 5, the due date for Response was April 24, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 25, 2023.

The Center appointed Dawn Osborne as the sole panelist in this matter on May 2, 2023. 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.

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4. Factual Background

The Complainant is the owner of the trade mark FIELDFISHER, registered, inter alia, in the United Kingdom as trade mark no 912575511 since 2014.

The Domain Name does not link to an active site, but has been used in attempted fraudulent email scams using the Complainant’s logo and its name and address details. The Respondent has been the subject of an adverse finding in another UDRP case targeting the Complainant with the almost identical domain name <fieldfisherlawgroup.com>.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions can be summarised as follows:

The Complainant owns the mark FIELDFISHER, registered, inter alia, in the United Kingdom for legal services since 2014.

The Domain Name registered in 2022 is confusingly similar to the Complainant’s mark adding the words
“laws” and “group” and the generic Top-Level Domain (“gTLD”) “.com” which does not prevent a finding of
confusing similarity.

The Respondent does not have rights or legitimate interests in the Domain Name, is not commonly known by it and is not authorised by the Complainant.

The Domain Name is not linked to an active web site, but has been used for a fraudulent email scheme using the logo and name and address details of the Complainant. This is not a bona fide offering of goods or services. It is registration and use in bad faith designed to disrupt the business of the Complainant. The Respondent has been the subject of an adverse finding in another UDRP case targeting the Complainant with the domain name <fieldfisherlawgroup.com>.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Domain Name consist of the Complainant’s FIELDFISHER mark (which is registered, inter alia, in the
United Kingdom for legal services since 2014), the words “laws” and “group”, and the gTLD “.com”.

The addition of ordinary words and a gTLD does not negate confusing similarity between a domain name and a trade mark contained within it. Accordingly the panel holds that the addition of the words “laws” and “group” and the gTLD “.com” does not prevent confusing similarity between the Complainant’s mark and the

Domain Name.

Accordingly, the Panel holds that the Domain Name is confusingly similar to the Complainant’s registered mark.

As such the Panel holds that Paragraph 4 (a) (i) of the Policy has been satisfied.

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B. Rights or Legitimate Interests

The Complainant has not authorised the use of its mark. There is no plausible evidence or reason to suggest the Respondent is, in fact, commonly known by the Domain Name.

The Domain Name has been used in a fraudulent email scheme. This is deceptive and clearly not in good faith. As such it cannot amount to the bona fide offering of goods and services or a noncommercial legitimate or fair use.

As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain

Name and that the Complainant has satisfied the second limb of the Policy.

C. Registered and Used in Bad Faith

Impersonating a complainant by use of a complainant’s mark in a fraudulent email scam is disruptive and evinces bad faith registration and use.

The Respondent has been the subject of an adverse ruling under the UDRP in a previous case (Fieldfisher
LLP v. Ruben M Case, WIPO Case No. D2022-4074) involving the Complainant for the almost identical
domain name <fieldfisherlawgroup.com> showing a pattern of bad faith activity acting against the
Complainant’s interests.

As such, the Panelist believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under para 4 (b)(ii) and (iii).

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, <fieldfisherlawsgroup.com> be transferred to the Complainant.

/Dawn Osborne/
Dawn Osborne
Sole Panelist
Date: May 11, 2023