Gibson, Dunn & Crutcher Llp v james troyus

WIPO Case No. D2023-3677

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Gibson, Dunn & Crutcher LLP v. james troyus

Case No. D2023-3677

1. The Parties

Complainant is Gibson, Dunn & Crutcher LLP, United States of America, represented by Gibson Dunn &

Crutcher, LLP, United States of America (“United States”).

Respondent is james troyus, United States.

2. The Domain Name and Registrar

The disputed domain name <gibsondunnllp-us.com> (“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 September 1, amended Complaint on September 9, 2023.

2023. On September 1, 2023, the Center transmitted by email to the Registrar a request for registrar
verification in connection with the Domain Name. On September 1, 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 (Redacted for Privacy, Privacy service provided by Withheld for
Privacy ehf) and contact information in the Complaint. The Center sent an email communication to
Complainant on September 4, 2023, providing the registrant and contact information disclosed by the
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 Respondent of the Complaint,
and the proceedings commenced on September 11, 2023. In accordance with the Rules, paragraph 5(a),
the due date for Response was October 1, 2023. Respondent did not submit any response. Accordingly,
the Center notified Respondent’s default on October 5, 2023.

page 2

The Center appointed Lawrence K. Nodine, Phillip V. Marano, and Ingrīda Kariņa-Bērziņa as panelists in this matter on November 7, 2023. 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

Complainant Gibson, Dunn & Crutcher LLP is an international law firm headquartered in Los Angeles, the Middle East. Gibson Dunn is a limited liability partnership, or LLP.

Originally founded in 1890, the firm has been known as Gibson Dunn since 1911. Complainant registered
the name GIBSON DUNN (hereinafter the “Mark”) as a service mark with the United States Patent and
Trademark Office for use in connection with “legal services” and “providing information in the field of law via
a website on global computer networks.” United States Trademark Registration No. 2,614,712 (registered on

September 3, 2002, and amended December 18, 2018, citing first use in commerce in 1911).

Complainant has registered numerous domain names that incorporate the Mark, including

<gibsondunn.com>, which Complainant registered in 1997.

Gibson Dunn’s attorneys and employees have email accounts with the format [first initial] [last name]
@gibsondunn.com.

The Domain Name was registered on July 18, 2023. It does not resolve to an active website, but the record reflects that email exchange (“MX”) records have been configured for it. The record contains a copy of an e- mail message in which Respondent, impersonating one of Complainant's partners, requested payment of an invoice. The email mimics the appearance of email sent by Complainant, including Complainant’s logo and contact information.

No information about Respondent is available.

5. Parties’ Contentions

A. Complainant

Complainant contends that bad faith registration may be inferred from the identity of the Mark and the
Domain Name.

Complainant also contends with supporting evidence that Respondent used false contact information registering the Domain Name. Searches performed for the name “James Troyus” in credit reporting agency

TransUnion’s and LexisNexis’s Accurint databases return zero individuals with that name. A TransUnion

search for the provided United States phone number that Respondent provided when registering the Domain

Name also returns zero results. Similarly, searches performed for the address that Respondent provided in

the United States Postal Service (USPS)’s and real estate brokerage Redfin’s databases return zero results.

Complainant contends that, by using the Domain Name to generate fraudulent email seeking to obtain payment and confidential information from Complainant’s client, Respondent has engaged in phishing, which is per se illegitimate activity.

B. Respondent

Respondent did not reply to Complainant’s contentions.

page 3

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel finds that Complainant has rights in the Mark, as evidenced by United States Trademark
Registration No. 2,614,712. The Panel also finds that the Domain Name is confusingly similar to
Complainant’s Mark. The addition of “llp” and “-us” to the Domain Name does not avoid a finding of
confusing similarity and the “.com” TLD is generally not relevant. WIPO Overview of WIPO Panel Views on
Selected UDRP Questions, Third Edition (hereinafter “WIPO Overview 3.0”), Sections 1.7 and 1.8.

WIPO Overview 3.0 at Section1.8.

The Panel finds that Complainant has satisfied Policy paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Panel finds that Complainant has satisfied its burden to prove that Respondent has no rights or legitimate interests in the Domain Name. Complainant’s certified Complaint alleges that Respondent is not

affiliated with, licensed by or otherwise authorized by Complainant to use the Mark and that Respondent is

not known by the name corresponding to the Domain Name. This showing shifts to Respondent the burden to respond with an explanation and evidence rebutting Complainant’s prima facie case, but Respondent has not responded.

The evidence demonstrates that, although the associated website is inactive, Respondent’s Domain Name has been used to send phishing emails. The use of the Domain Name to send fraudulent phishing email can never confer rights or legitimate interests. WIPO Overview 3.0 section 2.13. See also Latham & Watkins LLP v. Robert Iho, amex, WIPO Case No. D2022-4808 (inactive website does not evidence bona fide use). More specifically, Complainant provided a copy of a phishing email sent by Respondent (with an email address created using the Domain Name) to one of Complainant’s clients. In the email, Respondent: attempted to impersonate one of Complainant’s employees; misappropriated Complainant’s Mark and

stylized logo; and fraudulently requested payment for an allegedly outstanding invoice.

The Panel finds that Complainant has satisfied Policy paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

The Panel finds that Complainant has satisfied its burden to that Respondent registered and is using the Domain Name in bad faith. There is no plausible benign explanation for Respondent’s registration of the Domain Name, which is confusingly similar to Complainant’s Mark and very similar to Complainant’s name.

The Panel also finds persuasive the evidence that Respondent used fake contact information when registering the Domain Name. WIPO Overview 3.0 section 3.6. The Panel also infers from Respondent’s inclusion of “llp” in the Domain Name that Respondent was aware that Complainant was a specific type of legal entity, namely a limited liability company, which knowledge supports a finding that Respondent meant to target Complainant specifically. For these reasons, the Panel finds that Respondent registered the Domain Name in bad faith.

Based on the unrebutted evidence of phishing, the Panel finds that Respondent has used the Domain Name in bad faith. WIPO Overview 3.0 section 3.3.

The Panel finds that Complainant has satisfied Policy paragraph 4(a)(iii).

page 4

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 Domain Name, <gibsondunnllp-us.com> be transferred to Complainant.

/Lawrence K. Nodine/ Lawrence K. Nodine Presiding Panelist

/Phillip V. Marano/ Phillip V. Marano Panelist

/Ingrīda Kariņa-Bērziņa/

Ingrīda Kariņa-Bērziņa

Panelist
Date: November 20, 2023