Pillsbury Winthrop Shaw Pittman LLP v Wanfeng Lu / Carolina

WIPO Case No. D2025-1576

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION
PILLSBURY WINTHROP SHAW PITTMAN LLP v. Wanfeng Lu / Carolina
Rodrigues, Fundacion Comercio Electronico

Case No. D2025-1576

1. The Parties

The Complainant is PILLSBURY WINTHROP SHAW PITTMAN LLP, United States of America (“US”), represented by ZeroFox, US.

The Respondents are Wanfeng Lu, US and Carolina Rodrigues, Fundacion Comercio Electronico, Panama.

2. The Domain Names and Registrar

The disputed domain names <lpillsburylaw.com> (the “first disputed domain name”) and <pillsburylaw.cc>

(the “second disputed domain name”) are registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 17, 2025. connection with the disputed domain names. On April 23, 2025, 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 April 25, 2025 with the registrant and contact information of nominally multiple underlying registrants revealed by the Registrar, requesting the Complainant to either file separate complaints for the disputed domain names associated with different underlying registrants or alternatively, demonstrate that the underlying registrants are in fact the same entity and/or that all domain names are under common control. The Complainant filed an amendment to the Complaint on April 30, 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”).

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In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondents of the Complaint, and the proceedings commenced on May 6, 2025. In accordance with the Rules, paragraph 5, the due date for Response was May 26, 2025. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on May 27, 2025.

The Center appointed Mehmet Polat Kalafatoğlu as the sole panelist in this matter on June 4, 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, PILLSBURY WINTHROP SHAW PITTMAN LLP, is a full-service law firm headquartered in
New York. The Complainant operates from 20 offices worldwide with over 700 lawyers.

The Complainant indicates that it owns multiple registered trademarks, including the US trademark registration No. 2123586 for PILLSBURY, registered on December 23, 1997, for services in class 42.

The Complainant promotes its legal services on its official website located at the domain name
<pillsburylaw.com>, which was registered on January 24, 1996.

The first disputed domain name was registered on October 22, 2024. At the time of this decision, it resolves to an inactive page. However, the Complainant provided evidence that it was previously resolved or redirected to a website that displays a security warning message for spyware and a phone number for technical support.

The second disputed domain name was registered on October 19, 2024. At the time of filing the Complaint and this decision, it does not resolve to an active webpage.

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. The Complainant’s contentions can be summarized as follows.

First, the Complainant contends that the disputed domain names are confusingly similar to its trademark.

Second, the Complainant asserts that the Respondents do not have rights or legitimate interests in respect asserts that it is not aware of, nor can it find, any other business that commonly goes by this name or operates a brand or trade name related to it. The Complainant notes that consumers would attribute ownership of the disputed domain names to the Complainant or an affiliation with the Complainant, but there is no such authorized relationship between the parties.

of the disputed domain names. In this regard, the Complainant, inter alia, contends that the disputed domain
names have not been used nor prepared for use for a bona fide offering of goods or services. The first
disputed domain name redirects to a page with numerous malicious ads and there also exists an active MX
record that the Respondent may use to send and receive fraudulent emails. The second disputed domain
name is not active and there is no record of any previous use which would indicate a legitimate interest. The

Third, the Complainant submits that the disputed domain names were registered and are being used in bad faith. In this regard, the Complainant, inter alia, argues that the whole incorporation of its trademark establishes the bad faith registration; the disputed domain names are not actively used to show that they are

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intended to be unique and reasonably distinguishable from the Complainant; the active MX record for the
first disputed domain name indicates that the Respondent intends to send and receive emails from this
domain name, an address which would have a high likelihood of being attributed to the official
correspondence of the Complainant, thereby disrupting their business. The Complainant also refers to the

privacy service used by the Respondents.

B. Respondents

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

6. Discussion and Findings

6.1. The Complainant’s Consolidation Request

The amendment to the Complaint was filed in relation to nominally different domain name registrants. The Complainant alleges that the domain name registrants are the same person or entity. The Complainant requests the consolidation of the Complaint against the multiple disputed domain name registrants pursuant to paragraph 10(e) of the Rules.

The disputed domain name registrants did not comment on the Complainant’s request.

Paragraph 3(c) of the Rules states that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.

In addressing the Complainant’s request, the Panel will consider whether (i) the disputed domain names or
corresponding websites are subject to common control; and (ii) the consolidation would be fair and equitable
to all Parties. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition
(“WIPO Overview 3.0”), section 4.11.2.

As regards common control, the Panel notes that the disputed domain names target the same trademark in a specific sector; the compositions of the disputed domain names are highly similar, which indicates a naming pattern in the disputed domain names; they are both registered with the same registrar and within three

days of each other. The Panel also emphasizes that the Respondents have not objected to the more likely than not subject to common control.

As regards fairness and equity, the Panel sees no reason why consolidation of the disputes would be unfair or inequitable to any Party. The consolidation would also guarantee procedural efficiency in the circumstances of the case.

Accordingly, the Panel decides to consolidate the disputes regarding the nominally different disputed domain name registrants (referred to below as “the Respondent”) in a single proceeding.

6.2. Substantial Issues

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 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.

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The Panel finds the mark is reproduced within the disputed domain names. Accordingly, the disputed domain names are confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of other terms here, the letter “l” and the term “law” in the first disputed domain name and the term “law” in the second disputed domain name, may bear on assessment of the second and third elements, the Panel finds the addition of such terms do 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.

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 names. The Complainant declared that the Respondent is not authorized to use its trademark. There is no evidence in the available record suggesting that the Respondent is commonly known by the disputed domain names. In addition, the Panel considers the compositions of the disputed domain names, which incorporate the Complainant’s trademark and are almost identical to the Complainant’s official website (the only differences being the addition of the letter “l” in the first disputed domain name and the use of the ccTLD “.cc” in the second). In the Panel’s view, the compositions of the disputed domain names carry a high risk of implied affiliation with the Complainant and confusion among Internet users. Such compositions cannot constitute fair use as they suggest sponsorship or endorsement by the Complainant.

Moreover, the Panel particularly considers the previous use of the first disputed domain name. Panels have held that the use of a domain name for illegitimate activity can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1. In the present case, the Complainant has submitted

unrebutted evidence that the first disputed domain name was used for distributing spyware. The common control over the disputed domain names creates a high risk for similar use for the second 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 names such as those enumerated in the Policy or otherwise.

Based on the available record, 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.

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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.

In the present case, the Panel considers the following: the Complainant’s distinctive trademark predates by decades the registration of the disputed domain names; the disputed domain names do not only incorporate the Complainant’s trademark but also they are almost identical to the Complainant’s official website; the

unrebutted evidence that the first disputed domain name was previously used for spyware distribution.
Therefore, the Panel finds that the Respondent must have been aware of the Complainant’s trademark when
registering the disputed domain names and registered them in bad faith with the intention of targeting the
Complainant’s trademark and business. WIPO Overview 3.0, section 3.2.2.

Regarding the first disputed domain name, the Panel is satisfied with the Complainant’s evidence that it was used to redirect Internet users to a webpage for spyware distribution. Panels have held that the use of a domain name for illegitimate activity constitutes bad faith. WIPO Overview 3.0, section 3.4. In the absence of any response from the Respondent rebutting the Complainant’s assertion, the Panel finds the Respondent’s registration and use of the first disputed domain name constitutes bad faith under the Policy. In the circumstances of the case, the current passive use of the first disputed domain name does not alter the Panel’s conclusions.

The Panel also finds that the passive holding of the second disputed domain name does not prevent a finding of bad faith under the Policy. See WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the distinctiveness of the Complainant’s trademark, the composition of the disputed domain name described above, the Respondent’s failure to submit a response, and the implausibility of any good faith use to which the second disputed domain name may be put. Accordingly, the Panel finds that in the circumstances of this case, the passive holding of the second disputed domain name does not prevent a finding of bad faith.

Based on the available record, 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 names <lpillsburylaw.com> and <pillsburylaw.cc> be transferred to the

Complainant.

/Mehmet Polat Kalafatoglu/
Mehmet Polat Kalafatoglu
Sole Panelist
Date: June 18, 2025