Gibson, Dunn & Crutcher LLP v Amanda Pedro

WIPO Case No. D2024-0736

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Gibson, Dunn & Crutcher LLP v. Amanda Pedro

Case No. D2024-0736

1. The Parties

The Complainant is Gibson, Dunn & Crutcher LLP, United States of America (“United States”), self- represented.

The Respondent is Amanda Pedro, United States.

2. The Domain Name and Registrar

The disputed domain name <gibsondunn.bio> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 16, 2024. On February 19, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 19, 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 (Redacted for Privacy, Withheld for Privacy ehf) and contact information in the Complaint. The Center sent an email communication to the Complainant on February 28, 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 amended Complaint on March 3, 2024.

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 March 4, 2024. In accordance with the Rules, paragraph 5,
the due date for Response was March 24, 2024. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on March 28, 2024.

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The Center appointed Evan D. Brown, Phillip V. Marano, and Lorelei Ritchie as panelists in this matter on April 29, 2024. The Panel finds that it was properly constituted. Each member of 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 large law firm with offices in North America, Asia, Europe and the Middle East. It owns the disputed domain name was registered on December 13, 2023.

various trademarks, including the mark GIBSON DUNN, for which it enjoys the benefits of registration (see

As of the time of the filing of the Complaint, no active website appeared at the disputed domain name. The Complainant contends, and has provided evidence to demonstrate, that the Respondent has used the disputed domain name to engage in phishing – that is, to send and receive fraudulent email messages while impersonating an associate of the Complainant, in an effort to commit financial fraud.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical or confusingly similar to the domain name; and that the disputed domain name was registered and is being used in bad faith.

B. Respondent

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

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied: (i) the disputed 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 disputed domain name, and (iii) the disputed domain name has been registered and is being used in bad faith. The Panel finds that all three of these elements have been met in this case.

A. Identical or Confusingly Similar

This first element functions primarily as a standing requirement. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. 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. Id. This element requires the Panel to consider
two issues: first, whether the Complainant has rights in a relevant mark; and second, whether the disputed

domain name is identical or confusingly similar to that mark.

A registered trademark provides a clear indication that the rights in the mark shown on the trademark
certificate belong to its respective owner. See Advance Magazine Publishers Inc., Les Publications Conde
Nast S.A. v. Voguechen, WIPO Case No. D2014-0657. The Complainant has demonstrated its rights in the
GIBSON DUNN mark by providing evidence of its trademark registration.

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The disputed domain name incorporates the GIBSON DUNN mark in its entirety. Disregarding the “.bio” identical to the Complainant’s mark.

Accordingly, the Complainant has satisfied this first element under the Policy.

B. Rights or Legitimate Interests

The Panel evaluates this element of the Policy by first looking to see whether the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. If the Complainant makes that showing, the burden of production of demonstrating rights or legitimate interests shifts to the Respondent (with the burden of proof always remaining with the Complainant). See WIPO Overview 3.0, section 2.1; AXA SA v. Huade Wang, WIPO Case No. D2022-1289.

On this point, the Complainant asserts, among other things, that the Respondent has no affiliation with the Complainant nor a license to utilize the GIBSON DUNN mark, and that the Respondent is not using the disputed domain name in connection with any bona fide offering of goods or services. Instead, the Complainant asserts that the Respondent has used the disputed domain name to send one or more email messages in an attempt to impersonate an associate of the Complainant and thereby engage in fraudulent conduct.

The Panel finds that the Complainant has made the required prima facie showing. The Respondent has not presented evidence to overcome this prima facie showing. And nothing in the record otherwise tilts the balance in the Respondent’s favor.

Accordingly, the Panel finds that the Complainant has established this second element under the Policy.

C. Registered and Used in Bad Faith

The Policy requires a complainant to establish that the disputed domain name was registered and is being used in bad faith. The facts of this case demonstrate that the Respondent registered the disputed domain name for commercial gain or otherwise to interfere in the business of the Complainant, and to trade on the Complainant’s goodwill and reputation. By impersonating the Complainant and at least one of its attorneys,

the Respondent’s actions likely constituted fraud. See Nelson Mullins Riley & Scarborough LLP v. Redacted
for Privacy, Privacy Service Provided by Withheld for Privacy ehf / Mike Dave, NelsonNeded, WIPO Case
No. D2022-1636; Faegre Baker Daniels, LLP v. WhoisGuard Protected, WhoisGuard, Inc. / Douglas

Ocenasek, WIPO Case No. D2019-2688.

Moreover, the use of false registration data in connection with the disputed domain name further supports a
finding of bad faith registration and use. Providing false contact information violates paragraph 2 of the
Policy, which requires a registrant to represent that the statements it “made in [its] Registration Agreement
are complete and accurate.” Action Instruments, Inc. v. Technology Associates, WIPO Case No.
D2003-0024. Maintaining that false contact information in the WhoIs records (which can easily be updated
at any time) after registration constitutes bad faith use of the domain name because it prevents a putative
complainant from identifying the registrant and investigating the legitimacy of the registration. Id. See also
Royal Bank of Scotland Group v. Stealth Commerce a.k.a. Telmex Management Services, Inc., WIPO Case
No. D2002-0155; Home Director, Inc. v. HomeDirector, WIPO Case No. D2000-0111.

In this case, the Complainant has offered persuasive evidence that the Respondent used false contact information to register the disputed domain name. Specifically, the Complainant offered evidence that the Respondent’s street address yielded zero results from a search of the US Postal Service database, and that the Respondent provided a zip code and state that do not correspond to one another. The Complainant also offered evidence that the Respondent’s telephone number yielded zero results from a search of the TransUnion database. And the Complainant offered compelling evidence that the email address provided by the Respondent appears to show an attempt to impersonate an attorney from yet another law firm. The

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Respondent also appears to use in their email address a typographical variation of the domain name used by this additional law firm.

Panels have held that the use of a domain name for illegal activity – here, claimed phishing, constitutes bad faith. WIPO Overview 3.0, section 3.4.

For these reasons, the Panel finds that the disputed domain name was registered and is being used in bad faith.

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 <gibsondunn.bio> be transferred to the Complainant.

/Evan D. Brown/ Evan D. Brown Presiding Panelist

/Phillip V. Marano/ Phillip V. Marano Panelist

/Lorelei Ritchie/
Lorelei Ritchie
Panelist
Date: May 13, 2024