ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Nelson Mullins Riley & Scarborough LLP v. Name Redacted Case No. D2025-1641 1. The Parties The Complainant is Nelson Mullins Riley & Scarborough LLP, United States of America (“United States”), internally represented. The Respondent is Name Redacted. 1 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 April 23, 2025. On April 24, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 24, 2025, 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 (Undisclosed) and contact information in the Complaint. The Center sent an email communication to the Complainant on April 25, 2025, 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 April 28, 2025. 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 1The Respondent appears to have used the name of a third party when 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Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this decision shall not be published due to the exceptional circumstances of this case.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.
page 2 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 April 29, 2025. In accordance with the Rules, paragraph 5, the due date for Response was May 19, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 20, 2025. The Center appointed Gary Saposnik as the sole panelist in this matter on May 27, 2025. 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 law firm that was founded in 1897, and has grown into a diversified firm of more than 1,000 attorneys, policy advisors, and professionals across 37 offices, serving clients in more than 100 practice areas. Since at least as early as 1987 and 1999, respectively, the Complainant has used the NELSON MULLINS RILEY & SCARBOROUGH and NELSON MULLINS services marks in connection with the marketing, advertising, promotion, and rendering of the Complainant’s legal services. The Complainant is the registrant of the following federal service marks (“NELSON MULLINS Marks”) in the United States: • NELSON MULLINS RILEY & SCARBOROUGH LLP, United States Reg. No. 3757228, registered March 9, 2010, in class 45 for legal services; • NELSON MULLINS, United States Reg. No. 3754391, registered March 2, 2010, in class 45 for legal services; and • NELSON MULLINS (figurative), United States Reg. No. 5361314, registered December 19, 2017, in class 45 for legal services. Additionally, the Complainant operates its firm website at “www.nelsonmullins.com”. The Respondent, located in the United States, registered the disputed domain name on February 9, 2025. Although the disputed domain name does not resolve to an active website, it is being used in furtherance of a business email compromise (“BEC”) attack. 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 NELSON MULLINS Marks in which the Complainant has rights. The disputed domain name consists of a common, obvious, or intentional misspelling of the NELSON MULLINS Marks, as the Respondent has added an additional letter “m” to the beginning of MULLINS and deleted the “s” in MULLINS to create the misleading disputed domain name. UDRP panels have consistently held that a common, obvious, or intentional misspelling of a trademark is considered to be confusingly similar to the relevant mark for purposes of the first element. WIPO Overview 3.0, section 1.9. The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant asserts that: 1) the Respondent is not known by the disputed domain
page 3 name; 2) the Complainant has not authorized the Respondent to use the NELSON MULLINS Marks in any way; 3) the Respondent does not have any connection or affiliation with the Complainant; 4) the Respondent has not made a bona fide use of the disputed domain name nor engaged in any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services; and 5) the Respondent’s use of the disputed domain name is in furtherance of an illegal activity. The Respondent is not commonly known by “Nelson Mullins” or any colorable imitation thereof. The Respondent’s registration of the disputed domain name is confusingly similar to the Complainant’s NELSON MULLINS Marks. UDRP panels have found that domain names that are identical/confusingly similar to a complainant’s trademark carry a high risk of implied affiliation and would not support a finding that a respondent has any rights or legitimate interests in a disputed domain name. WIPO Overview 3.0, section 2.5.1. The Respondent’s registration of the disputed domain name was done intentionally to capitalize on the reputation and goodwill associated with the NELSON MULLINS Marks as evidence by the Respondent’s use of the disputed domain name to facilitate the Respondent’s BEC attack. Furthermore, Panels have held that the use of a domain name for illegal activity, such as phishing attacks or impersonation/passing off, or other types of fraud can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13. Accordingly, the Respondent’s use of the disputed domain name in furtherance of a BEC attack, an illegal activity, can never provide Respondent with any rights or legitimate interests in the disputed domain name for purposes of the Policy. Lastly, the Complainant avers that the disputed domain name was registered and is being used in bad faith. The Respondent registered the disputed domain name which is confusingly similar to the Complainant’s NELSON MULLINS Marks, and subsequently used the disputed domain name in furtherance of a BEC attack. Such use constitutes registration and use of the disputed domain name in bad faith. The Respondent knew of and intentionally chose to register the disputed domain name with the bad faith intent to create confusion through use of the confusingly similar disputed domain name as the Respondent impersonated a firm employee and acted as the employee to perpetuate the previously discussed BEC attack. In addition, the Complainant suspects that the Respondent may have submitted false registrant data when registering the disputed domain name to further obfuscate having their true identity revealed in an attempt to further shield themselves from liability for running the BEC attack. For all of the reasons above, the Respondent’s conduct constitutes bad-faith registration and use of the disputed domain name under the Policy. Furthermore, the Complainant suspects that the individual listed in the disclosed registrant information is potentially the victim of identity theft. The Complainant requests redaction of the registrant’s name from the Decision. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 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
page 4 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. 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 NELSON MULLINS Marks is recognizable within the disputed domain name. The disputed domain name consists of a common, obvious, or intentional misspelling of the NELSON MULLINS Marks, as the Respondent has added an additional letter “m” to the beginning of MULLINS and deleted the “s” in MULLINS to create the disputed domain name. Combined with the other evidence of the use of the disputed domain name, it appears to be an intentional typosquatting of the Complainant’s NELSON MULLINS Marks. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, sections 1.7, and 1.9. 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. The Complainant provided evidence of the Respondent utilizing the disputed domain name in furtherance of a business email compromise (“BEC”) attack and/or phishing scheme, while posing as an employee of the Complainant in attempting to collect funds from the Complainant’s clients. Panels have held that the use of a domain name for illegal activity here, claimed as applicable to this case: phishing, and impersonation/passing off, 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 Respondent registered the disputed domain name many years after the Complainant acquired rights in its NELSON MULLINS Marks. As previously discussed, the
page 5 Registrant appears to have intentionally typosquatted the NELSON MULLINS Marks in an attempt to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s mark. The disputed domain name was also used by the Respondent in furtherance of a BEC attack and phishing scheme by impersonating an employee of the Complainant in emails attempting to collect funds and defraud unsuspecting third parties or clients of the Complainant. In addition, the Complainant suspects that the Respondent may have submitted false registrant data when registering the disputed domain name to further obfuscate having their true identity revealed in an attempt to further shield themselves from liability for running the BEC attack. Although there is no evidence presented of the identity theft, it is likely to have occurred, as the Respondent has also utilized the disputed domain name in the emails passing off as an employee of the Complainant. In an abundance of caution, this Panel has decided that the disclosed Respondent’s name be redacted from the decision. Based on a totality of the circumstances, it is clear that the Respondent targeted the Complainant in registering and using the disputed domain name that is confusingly similar to the Complainant’s NELSON MULLINS Marks. Panels have held that the use of a domain name for illegal activity here, claimed as applicable to this case: phishing and impersonation/passing off, 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. /Gary Saposnik/ Gary Saposnik Sole Panelist Date: June 10, 2025
Full & Egal Universal Law Academy