Simpson Thacher & Bartlett LLP v Leonard Norris

WIPO Case No. D2022-2484

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Simpson Thacher & Bartlett LLP v. Leonard Norris

Case No. D2022-2484

1. The Parties

The Complainant is Simpson Thacher & Bartlett LLP, United States of America (“United States”), internally represented.

The Respondent is Leonard Norris, United States.

2. The Domain Name and Registrar

The disputed domain name <simpsonbartlettlawfirm.com> is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 7, 2022. On July 8, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 8, 2022, the Registrar transmitted by email to the Center its

verification response, confirming that the Respondent is listed as the registrant and providing the contact

details.

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 July 12, 2022. In accordance with the Rules, paragraph 5, the due date for Response was August 1, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 2, 2022.

The Center appointed Evan D. Brown as the sole panelist in this matter on August 4, 2022. 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.

page 2

4. Factual Background

The Complainant is a large law firm that traces its roots back to 1904. It owns the trademark SIMPSON THACHER & BARTLETT LLP and enjoys the benefit of registration of that mark in the United States (Reg. No. 4450615, registered December 17, 2013). According to the WhoIs records, the disputed domain name was registered on May 28, 2021. The Respondent has used the disputed domain name to set up a website purporting to provide information about a law firm named Simpson Bartlett Law Firm. The Complainant asserts that it is unaware of any organization doing business under the name Simpson Bartlett Law Firm, which has no common meaning in the legal field except insofar as it suggests an association with the Complainant. The Complainant provided evidence that the website at the disputed domain name contains bogus contact information and fake attorney profiles. The Complainant asserts that there is no valid purpose for the disputed domain name, which appears designed for use in a phishing or extortion scheme.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical or confusingly similar to the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.

B. Respondent

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

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name, and (iii) the disputed domain name has been registered and is being used in bad faith. The Panel finds that all three of these elements have been met in this case.

A. Identical or Confusingly Similar

This first element under the Policy functions primarily as a standing requirement. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. This element requires the Panel to consider two issues: first, whether the Complainant has rights in a relevant mark; and,

second, whether the disputed domain name is identical or confusingly similar to that mark.

A registered trademark provides a clear indication that the rights in the mark shown on the trademark
certificate belong to its respective owner. See Advance Magazine Publishers Inc., Les Publications Conde
Nast S.A. v. Voguechen, WIPO Case No. D2014-0657. The Complainant has demonstrated its rights in the
SIMPSON THACHER & BARTLETT LLP mark by providing evidence of its trademark registration.

The disputed domain name is confusingly similar to the Complainant’s mark. A distinctive portion of the Complainant’s mark comprises the disputed domain name. The distinctive portion of the disputed domain name differs from the SIMPSON THACHER & BARTLETT LLP mark only in the removal of “Thacher”. The content of the website associated with a domain name is usually disregarded by panels when assessing confusing similarity under the first element. WIPO Overview 3.0, section 1.15. In some instances, however, panels have taken note of the content of the website associated with a domain name to confirm confusing similarity whereby it appears prima facie that the respondent seeks to target a trademark through the disputed domain name. Guided by these principles, the Panel takes note of the content of the Respondent’s website - which purports to provide services similar to those of the Complainant - to confirm the confusing similarity between the disputed domain name and the Complainant’s mark.

page 3

The Panel finds that the Complainant has established this first UDRP element.

B. Rights or Legitimate Interests

The Panel evaluates this element of the Policy by first looking to see whether the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. If the Complainant makes that showing, the burden of production of demonstrating rights or legitimate interests shifts to the Respondent (with the burden of proof always remaining with the Complainant). See WIPO Overview 3.0, section 2.1; AXA SA v. Huade Wang, WIPO Case No. D2022-1289.

On this point, the Complainant asserts principally that the only apparent explanation for the Respondent’s registration of the disputed domain name is a desire to perpetrate scams upon the Complainant’s clients, potential clients, employees, recruits, co-counsel, and vendors or to extort valuable consideration from the

Complainant. Additionally, the Complainant asserts, among other things, that it has not authorized the
Respondent to register the disputed domain name, nor is the Respondent commonly known by the name
Simpson Bartlett Law Firm.

The Panel finds that the Complainant has made the required prima facie showing. The Respondent has not presented evidence to overcome this prima facie showing. And nothing in the record otherwise tilts the balance in the Respondent’s favor.

Accordingly, the Panel finds that the Complainant has established this second element under the Policy.

C. Registered and Used in Bad Faith

The Policy requires a complainant to establish that the disputed domain name was registered and is being used in bad faith. The Policy describes several non-exhaustive circumstances demonstrating a respondent’s bad faith registration and use. Under paragraph 4(b)(iv) of the Policy, a panel may find bad faith when a respondent “[uses] the domain name to intentionally attempt to attract, for commercial gain, Internet users to [respondent’s] website or other online location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location or a product or service on [the respondent’s] website or location”.

The undisputed facts, including evidence that the website at the disputed domain name contains bogus Net2phone Inc. v. Dynasty System Sdn Bhd, WIPO Case No. D2000-0679. One cannot reasonably conclude that the Respondent set up the website at the disputed domain name for any sort of purpose other than to unfairly trade on the goodwill of the Complainant’s mark and to confuse Internet users.

contact information and fake attorney profiles, indicate that the Respondent registered and used the disputed
domain name in bad faith, by intentionally attempting to divert, for commercial gain, Internet users to one or
more competing websites in an effort to confuse and mislead consumers. Deutsche Lufthansa AG v.

For these reasons, the Panel finds that the Complainant has established this third element under 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 <simpsonbartlettlawfirm.com> be transferred to the Complainant.

/Evan D. Brown/
Evan D. Brown
Sole Panelist
Date: August 19, 2022