Latham & Watkins LLP v Robert Joanne

WIPO Case No. D2023-2161

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Latham & Watkins LLP v. Robert Joanne

Case No. D2023-2161

1. The Parties

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

Respondent is Robert Joanne, United States.

2. The Domain Name and Registrar

The disputed domain name <latham-llp.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 May 16, 2023. On
May 17, 2023, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On May 17, 2023, 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, Privacy service provided by Withheld
for Privacy ehf) and contact information in the Complaint. The Center sent an email communication to
Complainant on May 22, 2023, providing the registrant and contact information disclosed by the Registrar,
and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended

Complaint on May 25, 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 Respondent of the Complaint, and the proceedings commenced on June 8, 2023. In accordance with the Rules, paragraph 5, the due date for Response was June 28, 2023. Respondent did not submit a response. Accordingly, the Center notified

Respondent’s default on July 10, 2023.

The Center appointed Jeffrey M. Samuels as the sole panelist in this matter on July 18, 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

Complainant Lathan & Watkins LLC is one of the largest law firms in the world, with over 3,000 attorneys in thirty-two offices located in fourteen countries. Complainant was founded in Los Angeles, California in 1934.

Complainant owns several United States trademark registrations[1] for the LATHAM & WATKINS trademark, which it has used since 1934. Complainant also owns numerous domain names consisting of or incorporating, at least in part, the LATHAM & WATKINS mark, including the domain name <latham.com>.

The disputed domain name does not resolve to an active website and was used to send fraudulent emails impersonating Complainant. It was registered on January 10, 2023.

[1] The registrations are United States Registration Nos. 2414795, registered on December 19, 2000; 4986824, registered on June 28,

5. Parties’ Contentions

A. Complainant

Complainant asserts that the disputed domain name is confusingly similar to the LATHAM & WATKINS trademark. It contends that the addition of “llp,” which stands for limited liability partnership, to the domain name is insufficient to distinguish the disputed domain name and “does nothing to alleviate confusing similarity”. In fact, Complainant adds, the inclusion of “llp” in the disputed domain name demonstrates that Respondent was targeting Complainant’s mark.

Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name. It notes that it has not authorized, licensed, or consented to Respondent’s use of the LATHAM & WATKINS trademark.

Complainant further argues that Respondent has not made a bona fide offering of goods or services on the website or a fair use of the disputed domain name. “To the contrary, Respondent’s only known use of the domain name was an attempt to impersonate one of Latham’s attorneys to fraudulently extract money from one of Latham’s clients.”

There also is no evidence that Respondent is commonly known by the disputed domain name or that the disputed domain name resolves to an active website, Complainant maintains.

With respect to the issue of bad faith registration and use, Complainant reiterates its claim that Respondent used the disputed domain name to impersonate one of Latham’s attorneys and attempted to fraudulently extract money from at least three of Complainant’s clients.

Complainant further indicates that, in view of the fact that the disputed domain name incorporates the
LATHAM & WATKINS mark, such disputed domain name can only sensibly refer to Complainant. “[I]t is ‘not
possible to conceive of a plausible situation in which the Respondent would have been unaware of’ the
Complainant’s brand at the time the Domain Name was registered.’”

Complainant also relies on Respondent’s passive holding of the disputed domain name, as well as its use of a proxy service, to support a finding of bad faith registration and use.

B. Respondent

Respondent did not reply to Complainant’s contentions.

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6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel further finds that Complainant, through its ownership of trademark registrations for the LATHAM &
WATKINS trademark, as well as its longstanding use of the mark, has rights in the mark.

The Panel concludes that the disputed domain name is confusingly similar to the LATHAM & WATKINS trademark. The disputed domain name incorporates the mark in significant part[2], adding only the term “-llp” which do not obviate a finding of confusing similarity. In addition, the use of the disputed domain name to send fraudulent emails impersonating Complainant confirms the finding of confusing similarity.

[2] The Panel takes notice of the fact that many law firms have, for promotional or other reasons, shortened their names to include only

B. Rights or Legitimate Interests

The Panel holds that Complainant has met its burden of establishing that Respondent has no rights or
legitimate interests in the disputed domain name. The evidence establishes that Respondent’s only known
use of the disputed domain name was in an attempt to impersonate one of Complainant’s attorneys to
fraudulently extract money from the firm’s clients. Respondent, masquerading as one of Complainant’s
attorneys, emailed at least three Complainant’s clients, requesting the clients to provide a contact in their
finance department to expedite payment on certain invoices and seeking an update on payment on an
outstanding invoice. Such “use” of a disputed domain name does not give rise to legitimate rights. See,
e.g., Morrison & Foerster LLP v. roerine jullie, WIPO Case No. D2023-0168 (finding no legitimate rights
where respondent used disputed domain name mofo-llp.com as part of email phishing scheme to
impersonate complainant’s employees to seek sensitive financial information and divert payments from
unsuspecting firm clients); Latham & Watkins LLP v. Robert Iho, amex, WIPO Case No. D2022-4808
(finding no legitimate rights where “Respondent’s only known use of [<lathamawatkins.com>] was an attempt
to impersonate one of Complainant’s former managing partners to fraudulently extract money from one of its
clients”).

The Panel further notes that there is no evidence that Respondent is commonly known by the disputed domain name and that the disputed domain name does not resolve to an active website.

C. Registered and Used in Bad Faith

The Panel concludes that the disputed domain name was registered and is being used in bad faith. The use of the disputed domain name to send fraudulent emails, as outlined above, constitutes evidence of bad faith. See, e.g., Latham & Watkins LLP v. Robert Iho, amex, supra; Ropes & Gray LLP v. Domain Administrator,

c/o DomainsByProxy.comD2020-0294

, WIPO Case No. . Further, given the similarities between domain name, there can be no doubt that Respondent was clearly targeting Complainant at the time of registration of the disputed domain name. The Panel notes that Complainant’s full name is Latham & Watkins LLP.

The Panel finds that the use of the disputed domain name for purposes of Complainant’s impersonation and
sending emails for phishing purposes constitute bad faith.
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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 <latham-llp.com> be transferred to Complainant.

/Jeffrey M. Samuels/
Jeffrey M. Samuels
Sole Panelist
Date: August 1, 2023

2016; 4976906, registered on June 14, 2016; and 4968228, registered on May 31, 2016.

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