Taylor Wessing Limited Liability Partnership v Name Redacted

WIPO Case No. D2023-2835

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Taylor Wessing Limited Liability Partnership v. Name Redacted

Case No. D2023-2835

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 <taylorwessinplaw.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 3, 2023. On July 4, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 5, 2023, 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 (Domains By Proxy, LLC) and contact information in the Complaint.
The Center sent an email communication to the Complainant on July 6, 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 July 13, 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 July 14, 2023. In accordance with the Rules, paragraph 5, the due date for Response was August 3, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 4, 2023.

The Center appointed Angelica Lodigiani as the sole panelist in this matter on August 16, 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 major global law firm, with 1,100 lawyers operating internationally. The Complainant has been ranked among the world’s top brands in the legal industry for many years and has won important recognitions in the legal field. In 2022, the Complainant’s global revenues were in excess of GBP 400

million. The Complainant operates under the trademark TAYLOR WESSING since 2002, and the domain
name <taylorwessing.com>, which resolves to the Complainant’s website and is used for all its email

addresses.

The Complainant is the owner of the following trademark registrations:

- TAYLOR WESSING, United States registration No. 2941089, filed on December 4, 2002 and
registered on April 19, 2005, for goods and services in classes 16, 41, and 42;

- TAYLOR WESSING, European Union registration No. 002727519, filed on June 7, 2002 and registered on March 31, 2004, for goods and services in classes 9, 16, 35, 36, 38, 41, and 42.

The disputed domain name was registered on June 25, 2023 and resolves to the Registrar’s parking page
containing sponsored links. Moreover, the Complainant submitted evidence of actual confusion among
Internet users. The disputed domain name was used to exchange communications with alleged

Complainant’s clients to request the payment of unsettled invoices, as explained in more detail below.

5. Parties’ Contentions

A. Complainant

The Complainant maintains that the disputed domain name is confusingly similar to its TAYLOR WESSING trademark as it contains it entirely, with a minor typo, that is the replacement of the last letter “g” in the word “wessing” with a letter “p”, and the addition of the word “law”, which refers to the Complainant’s activity.

The Complainant further maintains that the Respondent lacks rights or legitimate interests in the disputed Complainant’s partners (the same name that the Respondent has used to register the disputed domain name) to request the payment of unpaid invoices for professional services. Such use of the disputed domain name is illegitimate and cannot amount to a bona fide offering of goods or services, or to a legitimate noncommercial or fair use of the disputed domain name.

domain name. The Complainant has no connection whatsoever with the Respondent. The Respondent has
registered the disputed domain name using the name of one of the Complainant’s partners. Furthermore,
the Respondent has used the disputed domain name in an unlawful fraudulent email scam. In particular, the

Lastly, the Complainant maintains that the disputed domain name was registered and has been used in bad faith. Based on any credible assessment of the above circumstances and facts of this case, the disputed domain name was registered primarily for the purpose of using it to target third parties by way of fraudulent

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email scams to elicit the third parties into transferring funds. By impersonating a genuine senior domain name. 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 the public into believing that the disputed domain name is connected with the Respondent and/or by impeding the public to search for the genuine Complainant’s website, due to the confusing similarity with the Complainant and its TAYLOR WESSING trademark.
management employee of the Complainant, the Respondent is intentionally attempting to opportunistically

attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark as it
incorporates it entirely with the only difference that the last letter “g” of the word “wessing” has been replaced
by the letter “p”, and with the addition of the descriptive term “law”. According to section 1.8 of the WIPO
Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “[w]here
the relevant trademark is recognizable within the disputed domain name, the addition of other terms
(whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of
confusing similarity under the first element”. There are no doubts that the Complainant’s trademark is
recognizable within the disputed domain name even with the minor typo above and the addition of the term

“law”.

Therefore, the Panel is satisfied that the first condition under the Policy is met.

B. Rights or Legitimate Interests

The Complainant asserts and the evidence indicates that the Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services. The Respondent is not known by the disputed domain name and is not affiliated with the Complainant, nor has the Complainant authorized the Respondent to register and use the disputed domain name. The Respondent has no website advertising any goods or services of his own. The disputed domain name resolves to a parking page of the Registrar, displaying sponsored links from which the Respondent is probably deriving an income. Moreover, the Respondent has stolen the identity of one of the Complainant’s partners to register the disputed domain name and to send fraudulent emails in order to obtain an undue profit. The use of a disputed domain name for illegal activity can never confer rights or legitimate interests on a respondent (see to that effect section 2.13.1 of the WIPO Overview 3.0).

In light of the above, the Panel is satisfied that the second condition under the Policy has been met.

C. Registered and Used in Bad Faith

The Complainant’s trademark is distinctive and uniquely associated to the Complainant. The disputed domain name consists of the Complainant’s trademark spelt with a typo and the word “law”, which directly refers to the Complainant’s field of activity. In addition, the Respondent used the name of one of the Complainant’s current partners when registering the disputed domain name. It is therefore clear that the Respondent was well aware of the Complainant and of its TAYLOR WESSING trademark when it registered the disputed domain name. The registration of a domain name confusingly similar to a third party’s trademark without rights or legitimate interests amounts to registration in bad faith.

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As far as use in bad faith is concerned, the Respondent is using the disputed domain name to impersonate
one of the Complainant’s partners and to send fraudulent emails soliciting the payment of alleged
outstanding invoices from the Complainant. In addition, the disputed domain name resolves to a parking
page of the Registrar containing sponsored links from which the Respondent is probably deriving an income.
The fact that these links may have been generated automatically by the Registrar of the disputed domain
name cannot by itself prevent a finding of bad faith (see in this respect section 3.5 of the WIPO Overview
3.0).

For all the reasons set forth above, the Panel finds that the Respondent has registered and used the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of disputed domain name.

The Panel is therefore satisfied that also the third and last condition under the Policy is met.

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

Angelica Lodigiani
Angelica Lodigiani
Sole Panelist
Date: August 23, 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.