Taylor Wessing Limited Liability Partnership v Name Redacted

WIPO Case No. D2023-0546

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Taylor Wessing Limited Liability Partnership v. Name Redacted

Case No. D2023-0546

1. The Parties

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

Wessing LLP, United Kingdom.

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 <tayloriwessing.com> is registered with Google LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 6, 2023. connection with the disputed domain name. On the same day, 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 and contact information in the Complaint.

The Center sent an email communication to the Complainant on February 8, 2023 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 February 9, 2023.

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”).

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In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the
Complaint, and the proceedings commenced on February 10, 2023. In accordance with the Rules,
paragraph 5, the due date for Response was March 2, 2023. The Respondent did not submit any response.

Accordingly, the Center notified the Respondent’s default on March 3, 2023.

The Center appointed William A. Van Caenegem as the sole panelist in this matter on March 8, 2023. 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 global law firm whose services are provided under the trademark TAYLOR WESSING. affiliated with the Complainant. The Taylor Wessing firms operate in 17 locations, with 1,100 lawyers.

The Complainant owns over 15 trademark registrations containing the name TAYLOR WESSING throughout the world. These include United States of America registration number 2941089, and European Union registration number 002727519 for the word mark TAYLOR WESSING, registered on (respectively) April 19, 2005 and November 15, 2022, both covering business management, taxation services and legal services in classes 35, 36 and 42 (among other goods and services).

Taylor Wessing uses the domain name <taylorwessing.com> and uses those terms as an extension for all its email addresses.

The disputed domain name was registered on February 6, 2023, and does not resolve to an active website.

5. Parties’ Contentions

A. Complainant

The Complainant points out that the TAYLOR WESSING brand has been ranked consistently among the world’s top brands in the legal industry for many years and that the Complainant has accordingly established very substantial international rights in the registered trademark TAYLOR WESSING. It says this mark is inherently distinctive and non-descriptive and maintains that it is famous throughout the world. The disputed domain name, the Complainant points out, contains the name Taylor Wessing in its entirety, save for the additional letter “i” inserted after the word “taylor” and before the word “wessing”, and is therefore very similar to its TAYLOR WESSING trademark. The Complainant says that the disputed domain name therefore conveys the meaning that it relates to the services offered by the Complainant. Hence it is clear that the disputed domain name is confusingly similar to the TAYLOR WESSING trademark, the Complainant maintains.

The Complainant further asserts that the Respondent has no rights or legitimate interests in the disputed domain name, and the latter was registered many years after the TAYLOR WESSING mark became established.

The Complainant states that the disputed domain name has on at least one occasion been used in an attempt to perpetrate a fraudulent scam. On February 6, 2023, a company received a fraudulent email from an individual, using the email address “[…]@tayloriwessing.com”, alleging to be a “Debt Collection Litigation Counsel”. The Respondent claimed to represent the Complainant in relation to “chasing an unpaid invoice” issued to the company, and also claimed that they had been advised to contact the company to get the matter “settled as soon as possible”. The Complainant points out that the Respondent used the email

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address “[…]@tayloriwessing.com” to masquerade as the individual, who is a genuine Partner in the Private
Client group for Taylor Wessing in the UK.

The Complainant mentions that it was notified, by way of an email from the Center dated February 8, 2023, that the name of the Registrar-identified registrant is the previously referred to individual. However, the Complainant confirms on behalf of this person, that she has no connection with the Registrar-identified registrant contact details, the Respondent or the attempted fraud described above. The Complainant says that therefore it is obvious that the purported email address was created by the Respondent to trick innocent third parties into believing the Respondent is associated with, or part of, Taylor Wessing Limited Liability Partnership, and defraud them.

The Complainant adds that there is no credible evidence of the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to it in connection with a bona fide offering of goods or services – and no credible legitimate basis on which the Respondent could use the disputed domain name for such purposes. Further, the Complainant says that there is no credible evidence that the Respondent has been – or no credible legitimate basis on which the Respondent could be – commonly known by the disputed domain name, and there is no credible evidence that – or no credible legitimate basis on which - the Respondent is, or could be, making any legitimate non-commercial or fair use of the disputed domain name, especially since it is not actively used by the Respondent in relation to any website.

In terms of use in bad faith, the Complainant says that, as described above, the disputed domain name was registered or acquired primarily for the purpose of using it to target a third party by way of serious, unlawful and fraudulent email scams to elicit the transfer of funds from the third party. Further, by using the disputed domain name and sending fraudulent emails impersonating genuine senior management Taylor Wessing

employees, the Respondent is intentionally attempting to opportunistically attract, for commercial gain,
Internet users by creating a likelihood of confusion with the Complainant’s TAYLOR WESSING mark as to
the source, sponsorship, affiliation, or endorsement of the disputed domain name. The Complainant points
out that the Respondent’s registration, fraudulent use, and any other use, of the disputed domain name will
disrupt the business and image of the Complainant by misleading members of the public into believing that
the disputed domain name is connected with Taylor Wessing, and/or it will otherwise impede members of the
public searching for genuine Taylor Wessing websites, due to the confusing similarity to the Complainant

and its trademark registrations for TAYLOR WESSING.

B. Respondent

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

6. Discussion and Findings

Redacted name

It appears that the Respondent in this proceeding adopted the name of an individual working for the Complainant to falsely identify the registrant, clearly without that individual’s knowledge and consent. This individual’s name was also used in the email address employed by the Respondent to send a fraudulent message purporting to emanate from the Complainant. In the interests of privacy and to prevent wholly unwarranted reputational damage, the Panel has decided to redact the name of the relevant individual from the title and the body of this decision, in line with the previous practice of Panels and in accordance with paragraph 4 (j) of the Policy.

A. Identical or Confusingly Similar

The disputed domain name is almost identical to the TAYLOR WESSING trademark of the Complainant, but not quite. A letter “i”’ has been inserted between the words TAYLOR and WESSING. Therefore, the issue is

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one of confusing similarity, but since the distinctive trademark of the Complainant is immediately and clearly visible and recognizable within the disputed domain name, that issue is resolved in favor of the Complainant. The requirements of paragraph 4(a)(i) of the Policy are clearly met.

Therefore the Panel holds that the disputed domain name is confusingly similar to the TAYLOR WESSING trademark of the Complainant.

B. Rights or Legitimate Interests

The Respondent has not replied to any of the contentions of the Complainant, and has thus not made any case for rights or legitimate interests. The disputed domain name does not resolve to an active website, and the Respondent has not been authorized or licensed to use the TAYLOR WESSING trademark of the Complainant. The Respondent, despite falsely providing the name of a partner of the Taylor Wessing law practice in London as the registrant of the disputed domain name, is not known by the name “Taylor Wessing”, and there is no indication before the Panel that the Respondent has ever used this name in a legitimate manner or properly acquired legal rights in it. The Complainant confirms that the use of its London Partner’s name is false and that she has played no role in the registration or use of the disputed domain name. Moreover, the Complainant has supplied evidence that the disputed domain name has been used by the Respondent to perpetrate fraud by relying on an email address, derived from the disputed domain name, that has the appearance of emanating from the Complainant, but in reality does not. This type of fraudulent activity obviously cannot result in the recognition of any rights or legitimate interests in those who engage in it.

Therefore the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The TAYLOR WESSING trademark was well established at the time of registration of the disputed domain
name, in many jurisdictions. It is a highly distinctive combination of words that nobody is likely to alight upon
by chance, and the careful insertion of the letter “i”’ demonstrates that the Respondent was well aware that
what was being inserted in the disputed domain name was a trademark belonging to a third party. In any
case, the subsequent and almost immediate use of the disputed domain name by way of an attempted fraud
perpetrated by masquerading as a Taylor Wessing partner, clearly demonstrates that the Respondent was
acting in deliberate disregard of the Complainant’s exclusive rights from the start. Impersonating an officer
of the Complainant by using an email address that looks almost identical to a genuine one, so as to trick
unsuspecting email recipients into transferring funds for the fraudster’s benefit, clearly amounts to a bad faith

use of a disputed domain name.

Therefore the Panel holds that the disputed domain name was registered and used in bad faith.

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, <tayloriwessing.com> be transferred to the Complainant.

/William A. Van Caenegem/
William A. Van Caenegem
Sole Panelist
Date: March 22, 2023

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.