Liesegang & Partner mbB, Rechtsanwälte v Host Master, Njalla Okta LLC

WIPO Case No. D2025-1965

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Liesegang & Partner mbB, Rechtsanwälte v. Host Master, Njalla Okta LLC

Case No. D2025-1965

1. The Parties

The Complainant is Liesegang & Partner mbB, Rechtsanwälte, Germany, internally represented.

The Respondent is Host Master, Njalla Okta LLC, Saint Kitts and Nevis.

2. The Domain Name and Registrar

The disputed domain name <liesegangpartner.com> is registered with Tucows Domains Inc. (the

“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 16, 2025. On May 16, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 27, 2025, 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 (Registrant not disclosed) and contact information in the Complaint. The Center sent an email communication to the Complainant on May 28, 2025, 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 amendment to the Complaint on May 28, 2025.

The Center verified that the Complaint together with the amendment to the 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 May 28, 2025. In accordance with the Rules, paragraph 5, the due date for Response was June 17, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 18, 2025.

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The Center appointed Marina Perraki as the sole panelist in this matter on June 24, 2025. 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.

4. Factual Background

The Complainant is a law firm in the form of partnership registered under the laws of Germany. It provides its services under the name LIESEGANG & PARTNER since 2016. The Complainant has been using its name throughout its letter heads, email signatures and invoices. The Complainant owns domain name registrations for LIESEGANG & PARTNER including <liesegang-partner.de> and <liesegang-partner.com>.

The disputed domain name was registered on March 12, 2025 and was used to create an email address and
send fake reminders for unpaid invoices purportedly of the Complainant to third parties, impersonating the

Complainant and signing with the Complainant’s name and address.

The disputed domain name currently leads to an inactive website.

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 name.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which the Complainant must satisfy with respect to the domain name:

(i) the 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 domain name; and

(iii) the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. 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. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

WIPO Overview 3.0, section 1.3. The mark is inherently distinctive as it consists of the name and surname of a partner of the law firm LIESEGANG & PARTNER. The Complainant has demonstrated use of the company name since 2016 at least on its website.

The Panel finds the Complainant has established unregistered trademark or service mark rights for

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According to the WIPO Overview 3.0, section 1.1.1 the term “trademark or service mark” as used in UDRP paragraph 4(a)(i) encompasses both registered and unregistered (sometimes referred to as common law) marks. Per the Complaint and as not disputed by the Respondent, the Complainant’s LIESEGANG &

PARTNER services and website are associated with the Complainant’s services such that, as the Panel finds on balance, the Complainant has common law rights in LIESEGANG & PARTNER for the purposes of the Policy.

The entirety of the common law mark is reproduced within the disputed domain name. Accordingly, the
disputed domain name is identical to the common law mark for the purposes of the Policy. WIPO Overview

3.0, section 1.7.

The generic Top-Level Domain (“gTLD”) “.com” is disregarded, as gTLDs typically do not form part of the
comparison on the grounds that they are required for technical reasons (Rexel Developpements SAS v.
Zhan Yequn, WIPO Case No. D2017-0275; Hay & Robertson International Licensing AG v. C. J. Lovik,

WIPO Case No. D2002-0122).

The Panel finds the first element of the Policy has been established.

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 name. 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 name such as those enumerated in the Policy or otherwise.

Panels have held that the use of a domain name for illegal activity, here claimed phishing and
impersonation/passing off, can never confer rights or legitimate interests on a respondent. WIPO Overview

3.0, section 2.13.1.

The Panel 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.

Because the LIESEGANG & PARTNER mark had been used and registered by the Complainant before the disputed domain name registration, the Panel finds it more likely than not that the Respondent had the Complainant’s mark in mind when registering the disputed domain name. This also in view of the fact that the disputed domain name incorporates the Complainant’s mark in total, along with the gTLD “.com”.

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Furthermore, the disputed domain name was used to send fraudulent emails impersonating the Complainant,
using the Complainant’s name and address, which clearly shows that the Respondent knew of the

Complainant and targeted the same.

As regards bad faith use, the Panel considers the following factors:

(i) the use of the disputed domain name in the fraud scheme which involved impersonating the Complainant

and sending emails of fake payment reminders purportedly sent by the Complainant; and

(ii) the failure of the Respondent to submit any formal response.

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.

Panels have held that the use of a domain name for illegal activity here, claimed phishing and impersonation/passing off constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy.

The current passive holding of the disputed domain name does not change the above.

The Panel 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 name <liesegangpartner.com> be transferred to the Complainant.

/Marina Perraki/
Marina Perraki
Sole Panelist
Date: July 8, 2025