Taylor Wessing Limited Liability Partnership v Name Redacted

WIPO Case No. D2025-1697

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Taylor Wessing Limited Liability Partnership v. Name Redacted

Case No. D2025-1697

1. The Parties

The Complainant is Taylor Wessing Limited Liability Partnership, United Kingdom, internally represented.

The Respondent is Name Redacted.[1]

[1]The Respondent appears to have used the name of a third party when registering the disputed domain name. In light of the potential

2. The Domain Name and Registrar

The disputed domain name <taylorwessuk.com> is registered with OVH sas (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on April 28, 2025. On April 28, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 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 (Unknown) and contact information in the Complaint. The Center sent an email communication to the Complainant on April 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 in English on May 1, 2025.

On April 30, 2025, the Center informed the Parties in German and English, that the language of the Registration Agreement for the disputed domain name is German. On May 1, 2025, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not submit any comment on the Complainant’s submission.

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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 in English and German of the Complaint, and the proceedings commenced on May 5, 2025. In accordance with the Rules, paragraph 5, the due date for Response was May 25, 2025. The Respondent did not submit any

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

The Center appointed Dilek Zeybel as the sole panelist in this matter on June 3, 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 major global law firm, with 1,200 lawyers operating in 17 locations. The Complainant
has been ranked among the world’s top law firms in the legal industry for many years. In 2023, the

Complainant’s global revenues were in excess of GBP 400 million.

The Complainant is the owner of the following trademark registrations:

- United States of America trademark, TAYLOR WESSING no. 76474048 registered on April 19, 2005, in classes 16, 41, and 42; and

- European Union trademark, TAYLOR WESSING no. 002727519 registered on March 31, 2004, in

classes 9, 16, 35, 36, 38, 41, and 42.

The Complainant owns and operates its main website at the domain name <taylorwessing.com>.

The Respondent registered the disputed domain name on April 10, 2025. The disputed domain name does not resolve to an active landing page. The disputed domain name has been used to send emails to third parties, falsely purporting to originate from a partner at the Complainant’s law firm, in an attempt to request payment of outstanding invoices.

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.

Notably, the Complainant contends that the disputed domain name is confusingly similar to its earlier registered trademarks, TAYLOR WESSING, and was created and used to mislead third parties into believing that the Respondent is associated with, or part of, the Complainant, in a fraudulent attempt to collect payment for alleged overdue invoices, with the aim of transferring funds to the Respondent. The Respondent used the name of a partner at the Complainant’s law firm, by sending communications from the email address […]@taylorwessuk.com without authorization.

The Complainant has no connection with the Respondent and claims that the Respondent has no rights or legitimate interests in the disputed domain name.

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B. Respondent

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

6. Discussion and Findings

Paragraph 15(a) of the Rules directs the Panel as to the principles to be applied in determining the dispute:
“A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance
with the Policy, these Rules and any rules and principles of law that it deems applicable”.

The Policy provides, at paragraph 4(a), that each of the three elements must be made for a complaint to prevail:

(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;

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

Pursuant to paragraph 14(b) of the Rules, where a party does not comply with any provision of the Rules, the

Panel may draw such inferences as it considers appropriate.

Considering the Parties’ submissions, the Policy, the Rules, the Supplemental Rules, and applicable law, the

Panel’s findings with respect to each of the above elements are set out below.

Language of the Proceeding

The language of the Registration Agreement for the disputed domain name is German. 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.

The Complaint was filed in English. The Complainant requested that the language of the proceeding be
English for several reasons, including the fact that the Respondent has used English in email
communications with third parties and it would be disproportionate and an unnecessary burden on the

Complainant to require these proceedings to be carried out in German.

The Respondent did not make any specific submissions with respect to the language of the proceeding and
did not reply to the Complainant’s contentions. The case file contains evidence that the Respondent used

English in email communications with third parties, which allegedly formed part of fraudulent activities.

The Panel notes that the Notification of Complaint has been sent in both German and English by email. The
Respondent was afforded a fair opportunity to respond in either language but chose not to do so.

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, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English.

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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 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 Panel finds the mark is recognizable 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 Panel further notes that a domain name consisting of a common, obvious, or intentional misspelling of a
trademark is considered confusingly similar to the relevant mark for the purposes of the first element of the
Policy. In particular, removing the ending “ing” from the Complainant’s trademark TAYLOR WESSING in the
disputed domain name <taylorwessuk.com> does not prevent a finding of confusing similarity.
WIPO Overview 3.0, section 1.9.

Although the addition of other terms to the disputed domain name, here the term “uk”, may bear on the assessment of the second and third elements, the Panel finds the addition of such a 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.

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 as impersonation/passing off and fraud, in this case involving the sending of emails to third parties while posing as the Complainant in order to collect purported outstanding payments, 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.

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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.

The disputed domain name almost entirely reproduces the Complainant’s trademark TAYLOR WESSING,

where removing the ending “ing” in the disputed domain name <taylorwessuk.com>. Internet users may not notice the subtle misspelling of the Complainant’s trademark in the disputed domain name. The Panel finds

that it is implausible that the Respondent registered the disputed domain name without the knowledge of the

Complainant. Considering that the Respondent impersonated one of the Complainant’s partners in sending

fraudulent emails, the Panel finds that the Respondent was aware of the Complainant and its trademark and

deliberately targeted the Complainant.

The Panel notes that the use of the geographical term “uk” in the disputed domain name likely refers to the from the Complainant’s mark, this addition may in fact reinforce an impression of affiliation with the Complainant, particularly as the Respondent has impersonated actual partners of the Complainant’s law firm in an apparent attempt to derive undue financial gain.

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 as impersonation, passing off, and fraud involving the sending of emails to third parties while posing as the Complainant in order to collect purported outstanding payments, 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 <taylorwessuk.com> be transferred to the Complainant.

/Dilek Zeybel/ Dilek Zeybel Sole Panelist Date: June 17, 2025

identity theft, the Panel has redacted the Respondent’s name from this decision. However, the Panel has attached as Annex 1 to this
decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name of the Respondent.
The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding and has indicated
Annex 1 to this decision shall not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v. FAST-
12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788.