ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Fieldfisher LLP v. Beasley, Ben Case No. D2023-3268 1. The Parties The Complainant is Fieldfisher LLP, United Kingdom, represented internally. The Respondent is Beasley, Ben, United States of America (the "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 31, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 2, 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 (Wild West Domains, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on August 3, 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 August 7, 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 the 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. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 31, 2023. page 2 The Center appointed Marilena Comanescu as the sole panelist in this matter on September 6, 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, Fieldfisher LLP, is a European law firm headquartered in London, United Kingdom with offices in mainland Europe, the United States, and China, as well as international partner firms. With origins of the law firm tracing back to 1835, the Complainant was renamed to Fieldfisher in 2014, having had "Field Fisher" as part of the law firm's name since 1969. The Complainant provides a wide range of legal services in various sectors, has more than 1,700 employees and 26 offices in 11 countries, and has received numerous recognitions and accolades in its industry. The Complainant owns trademark registrations for FIELDFISHER across various jurisdictions, such as the following: - the United States registration number 4890904 for the word FIELDFISHER, filed on April 8, 2014, and registered on January 26, 2016, covering services in Nice class 45; - the International Trademark registration number 1238145 for the word FIELDFISHER, registered on August 4, 2014, designating, inter alia, the United States and covering services in Nice class 45; and - the European Union trademark registration number 12575511 for the word FIELDFISHER, filed on February 7, 2014, and registered on June 30, 2014, covering goods and services in Nice classes 9, 16, 25, 35, 36, 38, 41, and 45. The Complainant is the owner of the domain name registered on March 9, 2007. The disputed domain name was registered on June 18, 2023, and at the time of filing the Complaint, it resolved to an error page. 5. Parties' Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. Notably, the Complainant contends that the disputed domain name is confusingly similar to its highly distinctive and reputable trademark FIELDFISHER being formed of the mark with the letter "l" in the "field" replaced with an "i"; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the Respondent registered and is using the disputed domain name in bad faith, likely to disrupt the business of the Complainant, and that the Respondent acted with opportunistic bad faith in registering the disputed domain name in order to make an illegitimate use of it. B. Respondent The Respondent did not reply to the Complainant's contentions. page 3 6. Discussion and Findings In view of the absence of a Response, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to the Respondent. Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are met: (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 the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. The Panel will further analyze the potential concurrence of the above circumstances. A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant's trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.7. Based on the available record, the Panel finds the Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The Panel finds the mark is recognizable within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Previous UDRP panels have held that a domain name which consist of a common, obvious, or intentional misspelling of a trademark, here the substitution of a similar-appearing letter, namely the replacement of the letter "l" with an "i" in the word "field", is considered to be confusingly similar to the relevant mark for the purposes of the Policy. WIPO Overview 3.0, section 1.9. Based on the available record, the Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of "proving a negative", requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. page 4 Having reviewed the record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The disputed domain name does not resolve to any active websites and although properly notified in the present proceeding, the Respondent choose to remain silent and has not rebutted the Complainant's prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. Furthermore, the typosquatting nature of the disputed domain name reflects an intent to deceive Internet users expecting to find the Complainant and unaware of the typographical error. Such intent cannot confer rights or legitimate interests upon the Respondent. Based on the available record, the Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular but without limitation, that if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. In the present case, the Panel notes that the disputed domain name was registered in bad faith, with knowledge of the Complainant and its trademark particularly because the Complainant uses in commerce the FIELDFISHER trademark, domain name, and trade name since at least 2014; and, the disputed domain name incorporates the Complainant's distinctive mark with an obvious minor alteration. Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent's registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1. At the time of filing the Complaint, the disputed domain name resolved to an error page. UDRP panels have found that the non-use of a domain name (including a blank or "coming soon" page) would not prevent a finding of bad faith under the doctrine of passive holding. Having reviewed the record, the Panel finds the non-use of the disputed domain name does not prevent a finding of bad faith in the circumstances of this proceeding. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant's mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent's concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the misleading domain name may be put. WIPO Overview 3.0, section 3.3. The Panel notes the distinctiveness and international reputation of the Complainant's trademark; the nature of the disputed domain name, namely the typo of a widely known trademark; the Respondent's failure to provide a response in this procedure; the implausibility of any good faith use to which the typosquatting disputed domain name may be put and finds that, in the circumstances of this case, the passive holding of the disputed domain name does not prevent a finding of bad faith under the Policy. Having reviewed the record, the Panel finds the Respondent's registration and use of the disputed domain name constitutes bad faith under the Policy. Based on the available record, the Panel finds the third element of the Policy has been established. 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 the Complainant. /Marilena Comanescu/ Marilena Comanescu Sole Panelist Date: September 20, 2023
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