Pryor Cashman LLP v Alejandro Cabello Guerrero, ACV

WIPO Case No. D2025-0348

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Pryor Cashman LLP v. ALEJANDRO CABELLO GUERRERO, ACV

Case No. D2025-0348

1. The Parties

The Complainant is Pryor Cashman LLP, United States of America (“United States”), internally represented.

The Respondent is ALEJANDRO CABELLO GUERRERO, ACV, Mexico.

2. The Domain Name and Registrar

The disputed domain name <pryorcashmans.com> 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 January 28, 2025. On January 29, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 29, 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 January 30, 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 amended Complaint on January 30, 2025.

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 January 31, 2025. In accordance with the Rules, paragraph
5, the due date for Response was February 20, 2025. The Respondent did not submit any response.

Accordingly, the Center notified the Respondent’s default on February 27, 2025.

The Center appointed Pablo A. Palazzi as the sole panelist in this matter on March 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.

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4. Factual Background

The Complainant is a law firm founded in 1963 and headquartered in New York, United States. It has over

200 attorneys and three offices, including locations in both Miami and Los Angeles.

The Complainant owns the following trademark registration for PRYOR CASHMAN:

- United States Registration No. 3,834,912 for PRYOR CASHMAN, registered on August 17, 2010, for class

45 covering legal services.

The Complainant provided evidence in support of the above.

The Complainant own a website located at “

The disputed domain name was registered on January 24, 2025, and is currently not active. However, according to the Complaint, the disputed domain name was used to send fraudulent emails to third parties impersonating one of the partners of the Complainant.

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

According to paragraph 4(a) of the Policy, the Complainant must prove that:

(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 with respect to the disputed domain name; and

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

6.1. Language of the Proceeding

The language of the Registration Agreement for the disputed domain name is Spanish. Pursuant to the Rules, paragraph 11(a), in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.

The Complaint was filed in English. The Complainant requested that the language of the proceeding be English for several reasons, including the fact (i) the Respondent sent an email communication in English using an email address associated with the disputed domain name, and (ii) the Respondent attached a letter to that same email communication that was in English.

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In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.5.1).

Having considered all the matters above, and the circumstances of this case, the Panel finds that accepting the Complaint filed in English does not prejudice the Respondent’s right of defense, and the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English and will proceed with rendering the decision in English.

6.2. Substantive 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.

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.

The addition of the letter “s” at the end of the disputed domain name does not alter this conclusion.

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.

The disputed domain name was used to create fraudulent emails for purposes of unlawfully impersonating on of the Complainant’s partners and creating a fraudulent scheme to steal money from victims.

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Panels have held that the use of a domain name for illegal activity, here, claimed impersonation/passing off,
phishing, or other types of fraud, 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.

In the present case, the Panel notes that:

- the Complainant’s marks have been in use for more than 50 years;

- the Panel takes also into account that the reputation of the Complainant’s trademark PRYOR
CASHMAN as a law firm is clearly established (see, Pryor Cashman LLP v. Rob REhunut, Carolina
Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2023-4162);

- the disputed domain name was registered recently in 2024;

- the Respondent has registered and used the disputed domain name to fraudulently impersonate a
partner of the Complainant for purposes of launching a fraud scheme, which is clear evidence of bad
faith registration and use.

Panels have held that the use of a domain name for illegal activity, here, claimed impersonation/passing off, phishing, or other types of fraud, 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 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 <pryorcashmans.com> be transferred to the Complainant.

/Pablo A. Palazzi/
Pablo A. Palazzi
Sole Panelist
Date: March 17, 2024