Fieldfisher LLP v Ruben M

WIPO Case No. D2022-4074

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Fieldfisher LLP v. Ruben M

Case No. D2022-4074

1. The Parties

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

The Respondent is Ruben M, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <fieldfisherlawgroup.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 October 28, 2022. connection with the disputed domain name. On October 28, 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 (Privacy service provided by Withheld for Privacy ehf) and contact information in the Complaint. The Center sent an email communication to the Complainant on October 31, 2022, 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 November 1, 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 the Respondent of the Complaint, and the proceedings commenced on November 2, 2022. In accordance with the Rules, paragraph 5, the due date for Response was November 22, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 23, 2022.

The Center appointed George R. F. Souter as the sole panelist in this matter on November 28, 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.

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4. Factual Background

The Complainant is a long-established law firm, which has, since 2014, been trading under its FIELDFISHER trademark, and currently has 1,700 employees, in 26 offices in 11 countries. The Complainant has provided the Panel with details of a number of trademark registrations of its FIELDFISHER trademark, including

United Kingdom registration number UK00912575511, registered on June 30, 2014.

The disputed domain name was registered on September 6, 2022, and resolves to a website purporting to
be part of the Complainant’s FIELDFISHER legal services, and details of such use has been supplied to the

Panel by the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that the disputed domain name is confusingly similar to its FIELDFISHER trademark, containing the Complainant’s FIELDFISHER trademark in its entirety, with the mere addition of, in the circumstances of this case, the generally descriptive words “law group”.

The Complainant alleges that the disputed domain Respondent lacks rights or legitimate interests in the disputed domain name, in particular, to the best of the Complainant’s knowledge, the Respondent is not generally known by the disputed domain name, and that the Complainant has never granted permission to use its FIELDFISHER trademark in connection with the registration of a domain name, or otherwise.

The Complainant alleges that the disputed domain name was registered in bad faith, and is being used in bad faith, in connection with the use of the disputed domain name as referred to above. The Complainant also alleges that the Respondent has used its website to provide an apparent scam under the disputed

domain name. In this respect, the Complainant alleges that by the medium of WhatsApp, the Respondent has contacted potential clients trying to offer its services. A screenshot of an example of this is included in Annex 8 of the Complaint, where the Respondent has attempted to offer its services over WhatsApp through

attempting to call and text the potential client.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain name be transferred to the Complainant:

(i)           the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii)          the 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.

A. Confusing similarity

The Panel finds that the Complainant has rights to its FIELDFISHER trademark for the purposes of these proceedings.

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It is well established in prior decisions under the UDRP, with which the Panel agrees, that a generic Top-Level Domain (“gTLD”) may generally be disregarded when comparing a trademark with a disputed domain name. The Panel considers the “.com” gTLD to be irrelevant in the circumstances of the present case, and finds that it may be disregarded here.

The Complainant’s FIELDFISHER trademark is clearly recognizable in the disputed domain name, rendering the disputed domain name confusingly similar to the Complainant’s trademark, and the additional elements do not detract from this finding. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the

Policy in connection with the disputed domain name.

B. Rights or Legitimate Interests

The Panel considers that the Complainant’s allegations are sufficient to provide a prima facie case under this heading.

It is the consensus view of UDRP panels, with which the Panel agrees, that a prima facie case advanced by
the complainant will generally be sufficient for the complainant to be deemed to have satisfied the
requirement of paragraph 4(a)(ii) of the Policy, provided the respondent does not come forward with
evidence demonstrating rights or legitimate interests in the domain name and the complainant has presented
a sufficient prima facie case to succeed under paragraph 4(a)(ii) of the Policy.

The Respondent did not advance any claim of rights or legitimate interests in the disputed domain name to rebut this prima facie case.

Furthermore, the nature of the disputed domain name, incorporating the Complainant’s well-known

FIELDFISHER trademark, carries a risk of implied affiliation. See WIPO Overview 3.0, section 2.5.1.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the

Policy, in connection with the disputed domain name.

C. Registered and Used in Bad Faith

The Panel is of the view that the finding that a respondent has no rights or legitimate interests in a disputed domain name can lead, in appropriate circumstances, to a finding of registration of a disputed domain name in bad faith. The circumstances of the present case, in which the Panel regards it as self-evident that the

Complainant’s FIELDFISHER trademark was deliberately appropriated in the disputed domain name, are such that the Panel concludes that a finding of registration in bad faith is justified in connection with the disputed domain name and so finds.

The disputed domain name resolves to a website purporting to be part of the Complainant’s Fieldfisher legal services, evidenced by the inclusion of the Complainant’s address on the website. It is well-established in prior decisions under the Policy that the use of a disputed domain name to impersonate the complainant constitutes use of that disputed domain name in bad faith. The circumstances of the present case, in the Panel’s opinion, are an egregious example of bad faith use, and, accordingly, the Panel finds that the disputed domain name is being used in bad faith.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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, <fieldfisherlawgroup.com> be transferred to the Complainant.

/George R. F. Souter/
George R. F. Souter
Sole Panelist
Date: December 12, 2022