ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Ropes & Gray LLP v. Raymond Reddington, IT TOWNS HUB Case No. D2024-3045 1. The Parties The Complainant is Ropes & Gray LLP, United States of America (“United States”), internally represented. The Respondent is Raymond Reddington, IT TOWNS HUB, United States. 2. The Domain Name and Registrar The disputed domain name is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 25, 2024. On July 26, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 26, 2024, 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 (Redacted for Privacy) and contact information in the Complaint. The Center sent an email communication to the Complainant on July 29, 2024, 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 1, 2024. 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 6, 2024. In accordance with the Rules, paragraph 5, the due date for Response was August 26, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 27, 2024. The Center appointed Lynda J. Zadra-Symes as the sole panelist in this matter on September 2, 2024. 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.
page 2 4. Factual Background The Complainant was founded in 1965 and has used the name Ropes & Gray for over 150 years in connection with the provision of legal services. The Complainant is an international law firm with 1,500 attorneys and professionals in 14 offices in the United States, Europe, and Asia. The Complainant owns US Trademark Registration No. 2,902,936, registered November 16, 2004, for ROPES & GRAY. The Complainant has an active presence on the Internet. The Complainant’s principal domain name is , registered with Network Solutions, LLC on October 12, 1995. The Complainant’s employees use an email address with this principal domain name. The disputed domain name was registered on May 6, 2024. There is currently no website associated with the disputed domain name. The Complainant submitted evidence that the disputed domain name has been used in connection with emails as part of a fraudulent phishing scheme. 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 the Complainant’s ROPES & GRAY trademark, that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name has been registered and used in bad faith in connection with a fraudulent email phishing scheme. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings In order to succeed in its claim, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests with respect to the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. Paragraph 15(a) of the Rules instructs the Panel to decide a complaint “on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. 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.
page 3 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 disputed domain name incorporates the Complainant’s mark in its entirety with the only differences being the removal of the ampersand, the transposition of a letter (“s”), and the addition of the generic Top-Level Domain (gTLD) “.org.” Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. 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. Although 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 difficult 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 (although the burden of proof always remains on the complainant). 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. Having reviewed the available 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 Respondent 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. There is no relationship or affiliation between the Complainant and the Respondent giving rise to any license, permission or other right by which the Respondent could own or use any domain name incorporating Complainant’s mark. The Respondent has not used or prepared to use the disputed domain name with any bona fide offering of goods or services, has not been commonly known by the disputed domain name, and has not made any noncommercial or fair use of the disputed domain name. There is no website associated with the disputed domain name. The evidence submitted in the Complaint illustrates that the disputed domain name has been used for purposes of a fraudulent email scheme impersonating the Complainant. Panels have held that the use of a domain name for illegal activity such as phishing or other types of fraud can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1. 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 record indicates the Respondent knew of the Complainant’s trademark prior to registration of the disputed domain name. The Respondent’s use of the disputed domain name in fraudulent phishing emails demonstrates a clear intent to mislead or to deceive the Complainant’s current and prospective clients, and/or to tarnish the Complainant’s mark and reputation.
page 4 Panels have held that the use of a domain name for phishing or other types of fraud constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy. The Panel finds that the Complainant has established the third element of the Policy. 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. /Lynda J. Zadra-Symes/ Lynda J. Zadra-Symes Sole Panelist Date: September 16, 2024
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