Latham & Watkins LLP v ckdsaw

WIPO Case No. D2024-5133

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Latham & Watkins LLP v. ckdsaw

Case No. D2024-5133

1. The Parties

The Complainant is Latham & Watkins LLP, United States of America (“United States”), internally represented.

The Respondent is ckdsaw, China.

2. The Domain Names and Registrar

The disputed domain names <lathamcwatkins.com> and <lathamxwatkins.com> are registered with Realtime

Register B.V. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 12, 2024. On December 13, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 13, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent (“REDACTED FOR PRIVACY”) and contact information in the Complaint. The Center sent an email communication to the Complainant on December 17, 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 December 20, 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 December 23, 2024. In accordance with the Rules, paragraph 5, the due date for Response was January 12, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 20, 2025.

The Center appointed Torsten Bettinger as the sole panelist in this matter on January 27, 2025. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration

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of Impartiality and Independence, as required by the Center to ensure compliance with the Rules,

paragraph 7.

4. Factual Background

The Complainant is an American limited liability partnership with a prominent international law practice in
fourteen countries, which has operated under the well-known name and mark LATHAM & WATKINS since its
founding in 1934. The Complainant owns a United States registration, No. 2,413,795, for its LATHAM &
WATKINS trademark, issued on December 19, 2000, for legal services and related services in Class 42, and
a United States registration, No. 4,968,228, for its LATHAM & WATKINS trademark, issued on May 31,
2016, for legal services and related services in Class 42, and other related services in Class 41, and other

registrations for other services in other classes.

The Complainant also owns a number of domain names consisting of or incorporating its LATHAM &
WATKINS mark, or variations of it, including <latham.com>, <lathamandwatkins.com>, and

<lathamwatkins.com>.

The Respondent registered the disputed domain names on April 19, 2024, without any authorization from the
Complainant.

Prior to the filing of the Complaint, the disputed domain names resolved to a web site purporting to be the Complainant and offering legal services. The Respondent displayed the Complainant’s entire LATHAM & WATKINS mark numerous times on the websites.

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 names.

Notably, the Complainant contends since its founding in Los Angeles, California, in 1934, the Complainant has offered professional legal services under the LATHAM & WATKINS trademark and that through extensive use and advertising the LATHAM & WATKINS mark has developed a very strong reputation among clients.

With regard to the requirement of “identity or confusing similarity between the trademark and the domain name” pursuant to paragraph 4(a)(i) of the Policy, the Complainant submits that:

- the disputed domain names are clearly intended to play on Complainant’s LATHAM & WATKINS mark

as the disputed domain name <lathamcwatkins.com> simply adds the letter “c”, and the disputed domain name <lathamxwatkins.com> simply adds the letter “x” to the middle of the Complainant’s trademark and legitimate domain name <lathamwatkins.com>;

- the obvious similarity between the disputed domain names and the Complainant’s legitimate domain
name makes clear that the Respondent is attempting to trade off of and make reference to the Complainant’s
well-known LATHAM & WATKINS mark;

- the Respondent’s omission of the ampersand from the Complainant’s mark is immaterial as the

ampersand character cannot be used as a part of a domain name;

- in registering the disputed domain names, the Respondent has engaged in “typosquatting”;

- the Respondent’s use of the disputed domain names would cause clients and others in the legal

industry to mistakenly believe that the disputed domain names are affiliated with the Complainant’s LATHAM
& WATKINS trademark and/or the <lathamwatkins.com> domain name.

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With regard to the Respondent having no rights or legitimate interests in the disputed domain names, the
Complainant submitted that:

- the Respondent cannot claim any rights or legitimate interest in the disputed domain names because it

never received the Complainant’s authorization, license, consent, or permission to use the LATHAM &
WATKINS mark or register the disputed domain names, and it has not entered into any relationship with the
Complainant;

- the Respondent’s only use of the disputed domain names are to misleadingly confuse and defraud
clients in the legal industry, and to trade off of the LATHAM & WATKINS trademark and the trust and
goodwill associated with the Complainant and its mark;

- the Respondent has not made a bona fide offering of goods and services on the website or other fair use of the disputed domain names.
- the Respondent’s only known use of the domain names was to host fraudulent websites purporting to be the Complainant and offering legal services;

- the Respondent displayed the Complainant’s entire LATHAM & WATKINS mark numerous times on

the websites;

- the Respondent even displayed the LATHAM & WATKINS mark in a similar color and font as

Complainant does on its legitimate website: “

Finally, with regard to the disputed domain names having been registered and being used in bad faith, the
Complainant argues that,

- the disputed domain names incorporate the Complainant’s entire LATHAM & WATKINS mark and

therefore can “only sensibly refer to the Complainant”; thus, “there is no obvious possible justification for the
Respondent’s selection” of the disputed domain names other than bad faith;

- the terms “lathamcwatkins” and “lathamxwatkins” have no apparent existence or meaning except as
misspellings and references to the Complainant’s LATHAM & WATKINS trademark, which means the
disputed domain names were registered in an attempt to imitate the Complainant and were registered in bad
faith;

- the Respondent used the disputed domain names to resolve to websites that were designed to

impersonate the Complainant;
- the Respondent displayed the LATHAM & WATKINS mark numerous times on its websites, and even attempted to display the mark in the Complainant’s typical color and font;

- the Respondent’s use of a proxy service, particularly in the context of impersonating the Complainant, further evidences bad faith.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy states that a complainant must prove each of the three following elements:

(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. Identical or Confusingly Similar

The Complainant has demonstrated that it owns multiple trademark registrations for the mark LATHAM &
WATKINS prior to the registration of the disputed domain name on April 19, 2024.

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It is well-established that the test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the trademark is used or other marketing and use factors usually considered in trademark infringement cases. (See sections 1.1.2 and 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

As set forth in section 1.7 of the WIPO Overview 3.0: “in cases where a domain name incorporates the entirety of a trademark […] the domain name will normally be considered confusingly similar to that mark.” (See, e.g., Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (“the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy”)).

In this case, the disputed domains are identical to the Complainant’s LATHAM & WATKINS trademark except for the addition of the letters “c” in the disputed domain name <lathamcwatkins.com> and “x” in the disputed domain name <lathamcwatkins.com> and the omission of the ampersand character in both of the disputed domain names. See section 1.9 of the WIPO Overview 3.0.

The Panel finds that the trademark is recognizable within the disputed domain names for the disputed domain names to be confusingly similar to the trademark.

The omission of the ampersand character is also immaterial with regards to the requirement of identity or confusing similarity as the ampersand character cannot be used as a part of a domain name.

Finally, it is well accepted in past UDRP decisions that the generic Top Level Domain (“gTLD”) “.com”, such as (e.g., “.com”, “.club”, “.nyc”, “.tech,” etc.), is typically not taken into account when assessing the issue of identity and confusing similarity, except in certain cases where the applicable gTLD may itself form part of the relevant trademark (see section 1.11 of the WIPO Overview 3.0).

The Panel therefore concludes that the disputed domain names are confusingly similar to the Complainant’s

LATHAM & WATKINS trademark in which the Complainant has rights.

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.

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 names.

The Complainant stated that the Respondent cannot claim any rights or legitimate interests in the disputed domain names because it never received the Complainant’s authorization, license, consent, or permission to use the LATHAM & WATKINS mark or register the disputed domain names, and it has not entered into any relationship with Complainant. The Complainant also provided evidence that the Respondent displayed the Complainant’s entire LATHAM & WATKINS mark numerous times on the websites to which the disputed domain names resolved.

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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 names such as those enumerated in the Policy or otherwise.

The Panel therefore 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.

In the present case, the Panel notes that the Complainant provided evidence of multiple trademark registrations for the LATHAM & WATKINS mark that predate the registration of the disputed domain names.

In light of the extensive use of the Complainant’s LATHAM & WATKINS trademark and the fact that the disputed domain names resolved to websites that apparently attempted to impersonate the Complainant, the Panel has no doubt that the Respondent was aware of the Complainant and the Complainant’s trademark rights when registering the disputed domain names.

The Panel therefore concludes that the Respondent registered the disputed domain names 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.

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.

In the present case, the Panel notes that the Respondent registered the disputed domain names with the bad faith intent to attract Internet users, for commercial gain, by creating a likelihood confusion with the Complainant. Moreover, the Respondent used the disputed domain names to offer websites that were designed to impersonate the Complainant by displaying the LATHAM & WATKINS mark numerous times. Panels have held that the use of a domain name for illegitimate activity, here impersonating the Complainant for fraudulent purposes, constitutes bad faith. WIPO Overview 3.0, section 3.4.

The Panel therefore finds that the Complainant has established the third element of the Policy.

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 names <lathamcwatkins.com> and <lathamxwatkins.com> be transferred to the Complainant.

/Torsten Bettinger/
Torsten Bettinger
Sole Panelist
Date: February 10, 2025