ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Fenwick & West LLP v. Contact Privacy Inc. Customer 7151571251 / EL B, BigSaver LLC Case No. D2022-1544 1. The Parties Complainant is Fenwick & West LLP, United States of America ("United States"), represented internally. Respondent is Contact Privacy Inc. Customer 7151571251, United States / EL B, BigSaver LLC, United States. 2. The Domain Name and Registrar The disputed domain name
(hereinafter the "Disputed Domain Name") is registered with Google LLC (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 28, 2022. On April 29, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 29, 2022, 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 Complainant on May 3, 2022, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on May 4, 2022. 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 Respondent of the Complaint, and the proceedings commenced on May 9, 2022. In accordance with the Rules, paragraph 5, the due date for Response was May 29, 2022. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on June 1, 2022. page 2 The Center appointed Lawrence K. Nodine as the sole panelist in this matter on June 7, 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. 4. Factual Background Complainant is an American law firm that has provided legal services since at least 1972. In recent years, Complainant has been recognized by legal reporters as a leading law firm in the United States, specifically, with respect to its intellectual property and trademark practices. Complainant owns a United States trademark registration for the mark FENWICK (Reg. No. 3,836,798) (Registered August 24, 2010) (the "Mark"). Complainant also owns the domain name (Registered in 1999), and uses the domain name for its company email addresses, used for both internal and external communications. Respondent registered the Disputed Domain Name on October 23, 2021, long after Complainant registered its FENWICK mark. The webpage associated with the Disputed Domain Name previously linked to Complainant's website, "www.fenwick.com"; however now the Disputed Domain Name is inactive. 5. Parties' Contentions A. Complainant Complainant contends that the Disputed Domain Name is confusingly similar to its FENWICK mark, as the Disputed Domain Name incorporates the entirety of the Mark, only containing an intentional misspelling inserting the letter "l" between the letters "c" and "k" in the Mark. Complainant alleges that Respondent also created an email address associated with the Disputed Domain Name to send emails fraudulently purporting to be an attorney associated with Complainant. Next, Complainant states that Respondent has no rights or legitimate interests in the Disputed Domain Name, as Complainant has not authorized Respondent to use the Disputed Domain Name. According to Complainant, Respondent also has been using the Disputed Domain Name to impersonate an attorney at Complainant's law firm to send fraudulent notices alleging trademark infringement. Complainant contends that Respondent registered the Disputed Domain Name to take unfair advantage of the recognition and prominence of Complainant's FENWICK mark. Finally, Complainant alleges that Respondent registered and continues to use the Disputed Domain Name in bad faith. Complainant contends that Respondent's use of the Disputed Domain Name to impersonate an attorney at Complainant's law firm is evidence of Respondent's knowledge of the Mark. In light of Respondent's purported knowledge of Complainant's goodwill in the FENWICK mark, Respondent is not capable of using the Disputed Domain Name for a legitimate purpose. B. Respondent Respondent did not reply to Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Panel finds that Complainant's trademark registration establishes that it has rights in the FENWICK mark. The Panel further finds that the Disputed Domain Name is confusingly similar to Complainant's Mark. page 3 Respondent's addition of a letter - an "l" between the letters "c" and "k"" - is an example of an intentional misspelling of a trademark that results in a domain name that is confusingly similar to the Mark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") at section 1.9; see also, e.g., Actelion Pharmaceuticals, Ltd v. Whois Agent, Whois Privacy Protection Service, Inc / Jean-Paul Clozel, WIPO Case No. D2016-0068 (finding confusingly similar to the ACTELION mark); and Novartis AG v. Whois Agent (651421573), Whois Privacy Protection Service, Inc. / Wis Inc, WIS INC, WIPO Case No. D2021-1521 (finding confusing similar to the COSENTYX mark). B. Rights or Legitimate Interests Complainant has presented a prima facie case for Respondent's lack of rights or legitimate interests in the Disputed Domain Name, which Respondent has not rebutted. Complainant has not authorized Respondent to use its trademark. Respondent also has not answered this Complaint and there is no evidence or reason to suggest Respondent is, in fact, commonly known by the Disputed Domain Name or that Respondent is using the Disputed Domain Name in connection with a bona fide offering of goods or services. Additionally, typosquatting is evidence of a lack of rights or legitimate interests in the Disputed Domain Name, see Redbox Automated Retail, LLC d/b/a Redbox v. Milen Radumilo, WIPO Case No. D2019-1600, and the use of an email account to send emails falsely purporting to be Complainant also does not give rise to rights or legitimate interests in the Disputed Domain Name. Use of a domain name for illegal activity, such as impersonation, can never confer rights or legitimate interests on a respondent. See WIPO Overview 3.0, section 2.13. The Panel finds that Respondent does not have rights or a legitimate interests in the Disputed Domain Name and that Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Panel finds that Respondent registered and used the Disputed Domain Name in bad faith. First, typosquatting, such as the addition of a letter, is evidence that Respondent was aware of and sought to impersonate Complainant when it registered the Disputed Domain Name. See, e.g., Redbox Automated Retail, LLC d/b/a Redbox v. Milen Radumilo, supra. In addition, Respondent explicitly impersonated Complainant through the redirection of the Disputed Domain Name to Complainant's website, "www.fenwick.com", as well as the sending of fraudulent trademark infringement notifications using an email associated with the Disputed Domain Name. Respondent's activation of a mail exchange ("MX") record and use of the associated email address is further evidence of bad faith. Respondent clearly intended that recipients of its emails would not notice the misspelling in the email address and assume that the emails were sent by Complainant. Such conduct amounts to bad faith use of the Disputed Domain Name. See Super Cassettes Industries Private Limited v. Muhammad Irfan, WIPO Case No. D2022-0557. 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, , be transferred to Complainant. /Lawrence K. Nodine/ Lawrence K. Nodine Sole Panelist Date: June 21, 2022
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