Pillsbury Winthrop Shaw Pittman LLP v Pillsbury Pillsbury

WIPO Case No. D2025-0934

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Pillsbury Winthrop Shaw Pittman LLP v. PILLSBURY PILLSBURY,
PILLSBURY

Case No. D2025-0934

1. The Parties

Complainant is Pillsbury Winthrop Shaw Pittman LLP (hereinafter “the Complainant” or “Pillsbury”), United

States of America (“US”), represented by ZeroFox, US.

Respondent is PILLSBURY PILLSBURY, PILLSBURY, US.

2. The Domain Name and Registrar

The disputed domain name <pillsburylaw.biz> is registered with Squarespace Domains II LLC (the

“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 6, 2025.
On March 7, 2025, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On March 7, 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 (Redacted for Privacy) and contact information in the Complaint.
The Center sent an email communication to the Complainant on March 11, 2025, providing the registrant and
contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the

Complaint. The Complainant did not file an amendment to the Complaint.

The Center verified that 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 March 31, 2025. In accordance with the Rules, paragraph
5, the due date for Response was April 20, 2025. Respondent did not submit any response. Accordingly,
the Center notified Respondent’s default on April 24, 2025.

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The Center appointed Phillip V. Marano as the sole panelist in this matter on May 1, 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.

The Panel issued an initial Procedural Order on May 15, 2025. It observed that “the name ‘Pillsbury’ and the
address 31 W 52nd St, New York, NY, could either correspond to Complainant, or a surname, and such
registration details raise a question as to why the name ‘Pillsbury’ was provided and how the registration
details could impact a determination as to the Respondent’s bad faith.” It ordered that “the Parties provide
any documented evidence and arguments, supported by appropriate citations to the WIPO Overview 3.0 or
persuasive cases concerning the Respondent’s use of ‘Pillsbury’ as a ‘registrant name’ and a ‘registrant
organization’ for the WhoIs details of the disputed domain name.” It further ordered that the Parties “shall
submit any additional documentation or arguments in support of the Respondent’s bad faith in the
registration and passive holding of the disputed domain name. This shall include documented evidence and
arguments supported by appropriate citations concerning: (i) the degree of distinctiveness or reputation of
the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of
actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact
details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to
which the domain name may be put. See WIPO Overview 3.0, Section 3.3; see also Telstra Corporation
Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.”

On May 21, 2025, Complainant requested via email “a short extension for the response due date of at least 2 days.” The Panel issued a second Procedural Order on May 22, 2025, which extended the same due date to May 28, 2025. On May 28, 2025, Complainant filed an informal email reply that is reproduced in its entirety

below.

4. Factual Background

Complainant is a full-service law firm which is headquartered in New York, operates twenty offices worldwide with over seven hundred lawyers, and specializes “in multiple fields such as energy, real estate and financial services.” Complainant offers information about its services through its official <pillsburylaw.com> domain

name and website. Complainant owns a valid and subsisting registration for the PILLSBURY trademark in
the US (Reg. No. 2,123,586), registered on December 23, 1997, with the earliest priority dating back to
1874.

Respondent registered the disputed domain name on February 14, 2024. At the time this Complaint was filed, the disputed domain name did not resolve to any website content. The Registrar revealed registration data for Respondent that corresponds to Complainant’s name and physical address.

5. Parties’ Contentions

A. Complainant

Complainant, through its external cybersecurity vendor, has filed a 465-word Complaint, with limited supporting annexed evidence, and devoid of citations to applicable authority, such as the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Complainant’s contentions have been reproduced below:

The Complainant in this proceeding is Pillsbury Winthrop Shaw Pittman LLP (hereinafter referred to as
“The Complainant” or simply “Pillsbury”). Pillsbury is a full-service law firm which specializes in
multiple fields such as energy, real estate and financial services. Headquartered in New York, the
Complainant operates from 20 offices worldwide with over 700 lawyers under their employment. They
have spent over the last century in operation cultivating a strong reputation that reaches globally.
Pillsbury has multiple registered trademarks, most notably for the “Pillsbury” name under USPTO

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Registration #2123586. The Complainant also has maintained a strong online presence through their official website “pillsburylaw.com”, which was registered in January, 1996. The disputed domain in this proceeding “pillsburylaw.biz”, which was registered on July 20th, 2023. The disputed domain is confusingly similar to the Complainant’s trademark and “PILLSBURY LAW” trade name in its whole incorporation of the mark with no changes. The only difference is in the Top Level Domain, which does not reasonably distinguish the domain name from the Complainant.

As far as the Complainant is aware, the disputed domain has not been used nor prepared for use for a bona fide offering of goods or services. The domain currently does not resolve, nor is there any record of hosted content on the page. While the Respondent has the right to register a domain name for a

fair use or noncommercial purpose, there is no presence of content that would qualify as fair use. The name or operate a brand or trade name related to it. There is no evidence to suggest that the Respondent has any rights or legitimate interests in this domain name. The Complainant has not authorized, licensed or otherwise permitted the Respondent to use its trademark or to imply any connection between the two parties.

It is well established that whole incorporation of the Complainant’s mark is enough to establish bad faith at the time of registration. Under “passive holding” this would also be the case in its active use if the domain still does not resolve or is parked. The full use of the Complainant’s company name with no alteration to distinguish it from them indicates that the Respondent is aware of Pillsbury Law and is attempting to leverage their trademark for their own gain. The domain hosts no content referencing “Pillsbury Law” to justify legitimate use of the domain. Finally, the Respondent has done all of this while obfuscating their contact and registration information using a privacy service. Not only does this indicate that they are not likely to be working in a public or official capacity, but the lack of attribution could be a intended shield in the course of any subversive actions.

On May 28, 2025, in response to the Panel’s initial Procedural Order, Complainant filed an informal email
reply, again devoid of supporting annexed evidence or citations to applicable authority. The entirety of
Complainant’s contentions in that informal email reply been reproduced below:

In response to the procedural order, the WhoIs information listing the disputed domain as owned by “Pillsbury” in New York reinforces the Respondent's bad faith registration and holding of the domain. The Complainant is not aware of nor can they find any other organization known as “Pillsbury Law”, especially one that is also from New York. Due to the same organization name and listed state of the

Complainant's headquarters, it is even more likely that the WhoIs information is meant to be referential to the Complainant.

The Respondent has demonstrated through the WhoIs information that they are aware of the authorized.

B. Respondent

Respondent did not reply to Complainant’s contentions. Respondent did not reply to the Panel’s Procedural

Order.

6. Discussion and Findings

To succeed in its Complaint, Complainant must establish in accordance with paragraph 4(a) of the Policy:

i.         The disputed domain name is identical or confusingly similar to a trademark in which Complainant has

rights;
ii.	Respondent has no rights or legitimate interests in respect of the disputed domain name; and

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iii.        The disputed domain name has been registered and is being used in bad faith.

Although Respondent did not reply to Complainant’s contentions, the burden remains with Complainant to
establish by a balance of probabilities, or a preponderance of the evidence, all three elements of paragraph
4(a) of the Policy. A respondent’s default would not by itself mean that the complainant is deemed to have
prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true.
UDRP panels have been prepared to draw certain inferences in light of the particular facts and
circumstances of the case, e.g. where a particular conclusion is prima facie obvious, where an explanation
by the respondent is called for but is not forthcoming, or where no other plausible conclusion is apparent.
See WIPO Overview 3.0, sections 4.2 and 4.3; see also The Vanguard Group, Inc. v. Lorna Kang, WIPO
Case No. D2002-1064 (“The Respondent’s default does not automatically result in a decision in favor of the
complainant. The Complainant must still prove each of the three elements required by Policy paragraph
4(a)”).

It is especially noteworthy in this case that a panel may undertake limited factual research into matters of public record where it considers such information useful to assessing the case merits and researching a decision. This includes visiting the website linked to the disputed domain name in order to obtain more information about the respondent or its use of the domain name, consulting historical resources like the Internet Archive, reviewing dictionaries, encyclopedias, or accessing trademark registration or other

governmental databases. WIPO Overview 3.0, Section 4.8. As highlighted below, the Panel has sought to
undertake such limited research in this case. It is also noteworthy, that “in some circumstances, a panel may
also rely on personal knowledge (e.g., to take “judicial notice” of the reputation of a well-known mark, or a

corporate affiliation/structure).” Id. at Section 4.8.

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.

The Panel conducted limited investigation to access the US Patent and Trademark Office Principal Register
and confirm the US trademark registration cited by Complainant for PILLSBURY trademark. Therefore,
Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1. The entirety of the mark is reproduced within the disputed domain name.
Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.7.

Although the addition of other terms, such as the term “law” in the disputed domain name, may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

In regard to gTLDs, such as .biz in the disputed domain name, they are generally viewed as a standard registration requirement and are disregarded under the first element. WIPO Overview 3.0, section 1.11.

The Panel therefore 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.

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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 extremely limited record available, 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. In particular, passively holding a domain name in and of itself does not constitute a bona fide offering of goods or services. Philip Morris USA Inc. v. Gabriel Hall, WIPO Case No. D2015-1779; Teachers Insurance and Annuity Association of America v. Wreaks Communications
Group, WIPO Case No. D2006-0483 (“[A]bsent some contrary evidence from Respondent, passive holding of a Domain Name does not constitute legitimate noncommercial or fair use”). In this Complaint, the record is devoid of any evidence that the disputed domain name has ever been used by Respondent, for legitimate purposes or otherwise. The Panel conducted limited investigation to attempt to resolve the disputed domain name and to access Internet Archive records for the disputed domain name, as well as check the registration data for the disputed domain name for any nameserver configurations, and found no evidence of either
legitimate or use, as discussed in greater detail below, any bad faith use.

Therefore, based primarily on Respondent’s default, Complainant’s assertion that it “has not authorized, licensed or otherwise permitted the Respondent to use its trademark or to imply any connection between the two parties”, and Complainant’s additional assertion that, “Complainant is not aware of nor can they find any other organization known as ‘Pillsbury Law’, especially one that is also from New York”, the Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

Again, based on the extremely limited record available in this case, while there are certain questions that remained unanswered, the Panel finds that the case shows the bare minimum necessary to reach a conclusion under the balance of probabilities applicable under the Policy. Complainant essentially argues that Respondent registered and used the disputed domain name in bad faith because: (i) the disputed domain name wholly incorporates Complainant’s PILLSBURY trademark; (ii) the Respondent has “passively held” the disputed domain name; and (iii) Respondent has obfuscated their domain name registration data; and “Respondent has demonstrated through the WhoIs information that they are aware of the Complainant and are attempting to imply an affiliation or relationship with them that has not been authorized”.

Contrary to Complainant’s conclusory argument, wholesale incorporation of a trademark, particularly a surname that has acquired distinctiveness in relation to Complainant’s services over time, would not be conclusive evidence of bad faith under the third element of the Policy. To that end, the Panel conducted a

limited web search investigation which revealed that thousands of individuals worldwide share the identical “Pillsbury” surname. And while inclusion of the generic term “law” in the disputed domain name might serve as indicia to suggest Respondent has targeted Complainant or Complainant’s services in bad faith, another limited web search or Martindale search (of attorneys in the US) revealed dozens of attorneys in the US,
some of whom practice in New York (where Complainant is located and the domain name registration data

suggests Respondent is located), who provide legal services through their identical “Pillsbury” surname.

Complainant also appears to broadly assert the doctrine of “passive holding” under the Policy. From the
inception of the Policy, panelists have found that the non-use of a domain name (including a blank or
“coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. While

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panelists look at the totality of the circumstances in each case, factors that have been considered relevant in are often viewed as paramount, and are viewed together by panels along a continuum of inverse relation, meaning that the more distinctive a Complainant’s trademark, the less plausible a claimed non-infringing good faith use by Respondent.

applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the
complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of
actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact
details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to
which the domain name may be put. See WIPO Overview 3.0, Section 3.3; see also Telstra Corporation

Telstra.

Here, even after the Panel’s direct request in its initial Procedural Order, Complainant has not provided any highest grossing law firm in the world” in 2024. Furthermore, the Panel has knowledge and awareness of Complainant’s PILLSBURY trademark generally within the legal industry.. Nevertheless, while the Panel can take judicial notice in one or more of these areas, Complainant is still required to prove its case, and the Panel declines to research any additional information concerning the degree of distinctiveness or reputation of the PILLSBURY trademark. Without further context from either Party, the extremely limited record in this matter has made it very difficult for the Panel to make a determination based primarily on the first and fourth factors of

evidence or argumentation whatsoever regarding the degree of distinctiveness or reputation of its
PILLSBURY trademark apart from the high-level conclusions that, “Complainant operates from 20 offices
worldwide with over 700 lawyers under their employment” and has “spent over the last century in operation
cultivating a strong reputation that reaches globally.” Apart from the duration of Complainant’s trademark
use, Complainant failed to provide any evidence relevant to inter alia the (i) extent and geographic reach of
advertising and publicity of its mark, (ii) national advertising or third-party publicity, (iii) the amount,
geographic extent, volume of sales of services offered under its mark, (iv) prior panel or judicial
determinations of fame, or (v) the absence of commercially significant third-party uses. The Panel conducted
limited investigation to access Complainant’s official website and peruse various press releases, but did not
find any readily apparent, and did not exhaustively search for, evidence that would demonstrate the degree
of distinctiveness, reputation, or fame of its PILLSBURY trademark. The Panel also conducted a limited
investigation of the <law.com> website to confirm that Complainant “is the 80th largest firm in the United

While the Panel does recognize the failure of Respondent to submit a Response, plus Respondent’s use of a proxy service, or selection of a Registrar that applies proxy services by default, as limited indicia of bad faith, these two individual factors are not determinative in a totality of circumstances analysis. Despite

Complainant’s initial refusal to amend its Complaint to address the registration data revealed by the Respondent, notwithstanding its use of Complainant’s name and physical address in its registration data, is neither known to nor associated with Complainant. Indeed, Complainant has argued that “the WhoIs information [demonstrates Respondent] is aware of the Complainant [and is] attempting to imply an affiliation or relationship with [Complainant].” And while, it remains unclear whether anyone named “Calvin Frederickson” (as indicated in Respondent’s email address) bears any relationship to Complainant, the identity between Complainant’s official <pillsburylaw.com> domain name versus the disputed domain name <pillsburylaw.biz> reinforces Complainant’s argument.

Ultimately, taking all the foregoing circumstances into account, including all facts and circumstances identified through the Panel’s own limited research, it appears more likely than not that the Respondent has registered and passively held the disputed domain name in bad faith. Accordingly, despite the extremely minimal evidence and non-existent citations submitted into the case file by Complainant, the Panel therefore finds the third element of the Policy has also been established. It is worth noting that it is for the Complainant to submit a complete Complaint with sufficient supporting evidence and citations, and the Complainant should not rely on a panelist performing additional research in order to assess the merits, noting that a complaint without sufficient supporting evidence and relevant citations could easily result in a denial.

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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, <pillsburylaw.com>, be transferred to Complainant.

/Phillip V. Marano/
Phillip V. Marano
Sole Panelist
Date: May 29, 2025