ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Hanson Bridgett LLP v. Becki Lawson Case No. D2023-3252 1. The Parties Complainant is Hanson Bridgett LLP, United States of America ("United States"), internally represented. Respondent is Becki Lawson, United States. 2. The Domain Name and Registrar The Disputed Domain Name is registered with Wild West Domains, LLC (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 28, 2023. On July 28, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 31, 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 (Registration Private, Domains By Proxy, LLC) and contact information in the Complaint. The Center sent an email communication to Complainant on August 4, 2023, 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 August 5, 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"). In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 10, 2023. In accordance with the Rules, paragraph 5, the due date for Response was August 30, 2023. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on August 31, 2023. page 2 The Center appointed Purvi Patel Albers as the sole panelist in this matter on September 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 Complainant, founded in 1958, is a regarded law firm headquartered in the United States. Complainant employs over 200 attorneys across the state of California and has offered its legal services to thousands of clients. American Lawyer Magazine recognizes the firm as an AmLaw 200 law firm. Complainant has been using the "Hanson Bridgett" name and HANSON BRIDGETT mark (and close variations) since 1958. Complainant owns the domain name , which it registered in 1997. The domain name is used as Complainant's main website in marketing and advertising of its business offerings. Complainant also uses the domain name as its email root, "@hansonbridgett.com". Complainant owns two design registrations, including United States Registration No. 3,731,869 and United States Registration No. 3,731,870, both registered on December 29, 2009: Respondent registered the Disputed Domain Name on July 20, 2023, and at the time of filing the Complaint, the Disputed Domain Name was inactive. Respondent used the Disputed Domain Name to create a fake email address in order to solicit payment of fraudulent invoices from Complainant's clients. 5. Parties' Contentions A. Complainant Complainant asserts common law rights in the HANSON BRIDGETT mark based on (i) its use since 1958 in relation to legal services, (ii) its status as an AmLaw 200 law firm, (iii) its broad client base, and (iv) multijurisdictional practice. Complainant contends that the Disputed Domain Name is confusingly similar to its mark, as the mere addition of an "s" to the end of the mark is typosquatting. Complainant also asserts that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. Respondent is not known as "Hanson Bridgetts" and does not own trademark rights in the mark. Respondent is not affiliated with Complainant and Complainant has not licensed or permitted Respondent to use the HANSON BRIDGETT mark. Furthermore, Respondent has not used the Disputed Domain Name in connection with a bona fide offering of goods and services, in a noncommercial manner, nor in a manner deemed legitimate fair use. Rather, the Disputed Domain Name has been inactive since it was first registered and a "@hansonbridgetts.com" email address was used to deceive Complainant's clients by sending them fraudulent invoices. Finally, Complainant asserts that the Disputed Domain Name was registered and is being used in bad faith. Respondent registered the Disputed Domain Name in an attempt to deceive third parties through an email phishing scheme, in which Respondent impersonated Complainant. Additionally, no website has been hosted on the Disputed Domain Name. As relief, Complainant requests transfer of the Disputed Domain Name. page 3 B. Respondent Respondent did not reply to Complainant's contentions. 6. Discussion and Findings To succeed in its Complaint, Complainant must establish in accordance with paragraph 4(a) of the Policy: i. the Disputed Domain Name is identical or confusingly similar to a trademark in which Complainant has rights; ii. 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. Respondent did not reply to Complainant's contentions. Yet, the burden remains with Complainant to establish by a balance of probabilities, or a preponderance of the evidence, all elements of paragraph 4(a) of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 4.3 (". a respondent's default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent's default is not necessarily an admission that the complainant's claims are true. panels have been prepared to draw certain inferences in light of the particular facts and circumstances of the case e.g., where a particular conclusion is prima facie obvious, where an explanation by the respondent is called for but is not forthcoming, or where no other plausible conclusion is apparent."); The Vanguard Group, Inc. v. Lorna King, WIPO Case No. D2002-1064 ("The Respondent's default does not automatically result in a decision in favor of the Complainant. The Complainant must still prove each of the three elements required by Policy paragraph 4(a).") A. Identical or Confusingly Similar Complainant has satisfied the first element of paragraph 4(a) of the Policy. The Panel finds that Complainant has established common law rights in HANSON BRIDGETT. To prove ownership in an unregistered trademark, Complainant must show that its mark is a distinctive source identifier for Complainant's goods and/or services. Acquired distinctiveness can be establish through a number of factors, including length of use of the mark, sales, advertising, public recognition, and consumer surveys. Additional factors, such as a respondent's targeting of a complainant's mark, may also support a claim of common law rights. WIPO Overview 3.0, section 1.3. Complainant submitted evidence of use of the HANSON BRIDGETT mark and variations since 1958; its employment of over 200 attorneys across California; its multi-jurisdictional practice; and its status as an AmLaw 200 law firm, which indicates it is ranked among the top 200 law firms in the United States by gross revenue. The Panel finds this information - combined with Respondent's targeting of the HANSON BRIDGETT mark through a fraudulent phishing scheme to Complainant's clients - sufficient to establish Complainant's unregistered rights in HANSON BRIDGETT (the "Mark"). The Panel also finds that the Disputed Domain Name is confusingly similar to Complainant's Mark. Disregarding ".com" (the generic Top-Level Domain), the Disputed Domain Name is identical to the Mark, save for an "s" added at the end. WIPO Overview 3.0, section 1.11.1. The practice of registering a domain name based on the addition, omission, or substitution of the letters in a mark is referred to as "typosquatting." These common, obvious, or intentional misspellings are considered to be confusingly similar to the relevant mark. Morrison & Foerster LLP v. Vero Nice, Latvec P.C.I, WIPO Case No. D2022-3381 ( found to be confusingly similar to complainant's MORRISON & FOERSTER trademark despite its addition of an "s" to the end of the mark); Edmunds.com, Inc. v. Digi Real Estate Foundation, WIPO Case No. D2006-1043 ( found to be confusingly similar to complainant's EDMUND'S trademark despite an additional "s" at the end of the mark). page 4 Considering Complainant's common law rights in the Mark and the Mark being clearly recognizable in the Disputed Domain Name, the Panel concludes that Complainant has established the first element of the Policy. B. Rights or Legitimate Interests Complainant has satisfied the second element of paragraph 4(a) of the Policy. Complainant established its Mark and registered domain name decades before Respondent registered the Disputed Domain Name. Respondent is not commonly known by the Disputed Domain Name. Instead, according to the WhoIs report, the Respondent is Becki Lawson. Complainant has also not authorized use of its Mark to Respondent. This lack of a relationship between Complainant and Respondent creates a strong presumption that Respondent lacks rights or legitimate interests in the Disputed Domain Name. See, e.g., Pfizer Inc. v. NA, WIPO Case No. D2005-0072. Furthermore, no bona fide use of the Disputed Domain Name has been made since its registration on July 20, 2023. Rather, on the very same day the Disputed Domain Name was registered, emails from "@hansonbridgetts.com" were sent to a client of Complainant to illicit payment for fraudulent invoices while the website at the Disputed Domain Name remained inactive. See, e.g., WIPO Overview 3.0, section 2.13.1. ("Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent."); Morrison & Foerster LLP v. Privacy Service Provided by Withheld for Privacy ehf/Michael Cove, WIPO Case No. D2022-1862 ("Use of a domain name for illegal activity such as impersonation and phishing, can never confer rights or legitimate interests on a respondent."); Kimley-Horn and Associates, Inc. v. Abrahim Hashim, WIPO Case No. DCO2019-0017 ("The use of the domain name for such a fraudulent purpose as phishing, obviously, cannot be held to constitute a bona fide use of the disputed domain name"). Under these circumstances, the Panel determines that Respondent does not have any rights or legitimate interests in respect of the Disputed Domain Name. C. Registered and Used in Bad Faith Finally, Complainant has satisfied the third element of paragraph 4(a) of the Policy. UDRP panels have consistently held that use of a domain name for purposes other than to host a website may constitute bad faith. Such purposes include sending email, phishing, identity theft, or malware distribution. Many such cases involve the respondent's use of the domain name to send deceptive emails, e.g., to solicit payment of fraudulent invoices by the complainant's actual or prospective customers. WIPO Overview 3.0, section 3.4; see also Lewis Silkin LLP v. Jason Sanjoto, WIPO Case No. D2018-2860 (finding bad faith when a disputed domain name resolved to an inactive website and the domain name was used to send fraudulent emails to the complainant's customers in order to solicit payment); Ropes & Gray LLP v. Domain Administrator, c/o DomainsByProxy.com / Account Receivable, WIPO Case No. D2020-0294 (finding bad faith where a respondent used a confusingly similar domain name and a related email address to seek payment from complainant's customers). As Respondent used the Disputed Domain Name to facilitate an email scam on Complainant's clients, the Panel has no doubt that Respondent knew of Complainant's Mark when it registered the Disputed Domain Name and created an associated email address "@hansonbridgetts.com" in order to disrupt Complainant's business. Furthermore, Respondent's typosquatting is considered further evidence of bad faith as it indicates prior knowledge of and the attempt to capitalize off Complainant's Mark. See National Association of Professional Baseball Leagues, Inc., d/b/a Minor League Baseball v. John Zuccarini, WIPO Case No. D2002-1011. Accordingly, the Panel finds the Disputed Domain Name has been registered and is being used in bad faith. page 5 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. /Purvi Patel Albers/ Purvi Patel Albers Sole Panelist Date: September 22, 2023
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