Taylor Wessing Limited Liability Partnership v Name Redacted

WIPO Case No. D2023-0970

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Taylor Wessing Limited Liability Partnership v. Name Redacted

Case No. D2023-0970

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 genuine individual associated with the Complainant in the United Kingdom when

2. The Domain Name and Registrar

The disputed domain name <taylorweissingllp.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 March 3, 2023.
On March 3, 2023, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On March 4, 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 (Contact Privacy Inc. Customer 7151571251) and contact
information in the Complaint. The Center sent an email communication to the Complainant on March 7,
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

March 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”).

page 2

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the
Complaint, and the proceedings commenced on March 14, 2023. In accordance with the Rules, paragraph
5, the due date for Response was April 3, 2023. The Respondent did not submit any response. Accordingly,

the Center notified the Respondent’s default on April 4, 2023.

The Center appointed Steven A. Maier as the sole panelist in this matter on April 24, 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 multi-office international law firm operating under the name and trademark TAYLOR
WESSING.

The Complainant is the owner of numerous registrations for the trademark TAYLOR WESSING in various territories. Such registrations include, for example:

- United States of America trademark registration number 2941089 for the word mark TAYLOR WESSING,

registered on April 19, 2005 in International Classes 16, 41 and 42; and

- European Union Trade Mark registration number 002727519 for the word mark TAYLOR WESSING,

registered on March 31, 2004 in numerous International Classes.

The disputed domain name was registered on February 28, 2023.

The disputed domain name does not appear to have resolved to any active website. However the emails from an address “[…]@taylorweissingllp.com”.

5. Parties’ Contentions

A. Complainant

The Complainant states that it operates offices in 17 locations involving 1,100 lawyers. It provides evidence of its history and its operations, having earned combined global revenues in excess of GBP 400 million in 2022. It submits evidence of consistently high rankings in legal directories and other examples of industry recognition. The Complainant claims that its TAYLOR WESSING trademark is both distinctive and famous throughout the world. It states that it operates a principal website at “ and used the domain name <taylorwessing.com> for all emails.

The Complainant submits that the disputed domain name is confusingly similar to its TAYLOR WESSING trademark, as it incorporates that trademark in its entirety, with the insertion of an additional letter “i” in the word “wessing” and the addition of the term “llp” which designates a limited liability partnership.

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It states that its has no relationship with the Respondent and has never authorized it to use its TAYLOR WESSING trademark, that the Respondent has not commonly been known by the disputed domain name and that the Respondent is making neither bona fide commercial use nor legitimate noncommercial or fair use of the disputed domain name.

Instead, the Complainant submits that the Respondent has used the disputed domain name for the purpose
of an attempted email scam. The Complainant exhibits an email from a named individual
“[…]@taylorweissingllp” which was sent to a third party recipient. The email purported to have been sent by

page 3

a genuine individual associated with the Complainant and contained the Complainant’s name and genuine
contact details. The email stated that the sender was following up on an unpaid invoice and had been
advised to contact the recipient in order to get this settled.

The Complainant submits that the disputed domain name was registered and is being used in bad faith. It contends that it is clear from the nature of the disputed domain name and the use to which it has been put that it was registered primarily for the purpose of a fraudulent email scam aimed at eliciting third parties to transfer funds. It submits, in particular, that the Respondent is using the disputed domain name intentionally

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

TAYLOR WESSING trademark.

The Complainant requests the transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are that:

(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.

A. Identical or Confusingly Similar

The Complainant has established that it is the owner of registered trademark rights in the mark TAYLOR WESSING. The disputed domain name fully incorporates that trademark with the insertion of an additional letter “i” in the name “wessing” and the addition of the term “llp”. Neither of these matters prevent the Complainant’s trademark from being recognizable within the disputed domain name and the Panel therefore finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

In the view of the Panel, the Complainant’s submissions set out above give rise to a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. However, the Respondent has failed to file a Response in this proceeding and has not submitted any explanation for its registration and use of the disputed domain name, or evidence of rights or legitimate interests on its part in the disputed domain name, whether in the circumstances contemplated by paragraph 4(c) of the Policy or otherwise. The Panel accepts the Complainant’s evidence that the Respondent has used the disputed domain name for the purpose of a fraudulent email scheme, which cannot give rise to rights or legitimate interests on the part of the Respondent. The Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

The Panel finds the Complainant’s trademark TAYLOR WESSING to be distinctive in nature and widely known in the legal sector. The Respondent has provided no explanation for its choice of the disputed

page 4

domain name and the Panel infers in the circumstances that it registered it in full knowledge of the attaching to that trademark.

The Panel finds the disputed domain name to be inherently deceptive, as having obviously been selected in an attempt to impersonate the Complainant. Moreover, the Complainant has produced evidence of the Respondent’s use of the disputed domain name precisely for that purpose, by sending at least one email to a third party, purporting to be from a genuine individual associated with the Complainant and seeking payment of a supposedly unpaid invoice.

The Panel therefore finds, in particular, that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion between the disputed domain name and the Complainant’s trademark.

The Panel finds in the circumstances that the disputed domain name has been registered and is being 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, <taylorweissingllp.com>, be transferred to the Complainant.

/Steven A. Maier/
Steven A. Maier
Sole Panelist
Date: May 8, 2023

registering the disputed domain name. In light of the potential 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.