Femwick.com

The timeline behind femwick.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

ARBITRATION AN D MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Fenwick & West LLP v. Evan Beinstock Case No. D2024-3611 1. The Parties The Complainant is Fenwick & West LLP, United States of America, represented by Fenwick & West, LLP, United States of America. The Respondent is Evan Beinstock 1 , United States of America. 2. The Domain Name and Registrar The disputed domain name <femwick.com> is registered with NameSilo, LLC (the “Reg istrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 6, 2024. On September 6, 2024, the Center transmitted by email to the Registrar a request f or registrar verif ication in connection with the disputed domain name. On September 6, 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 (Domain Administrator, See Privacy Guardian.org) and contact information in the Complaint. The Center sent an email communication to the Complainant on September 9, 2024, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Center verif ied that the Complaint satisf ied the f ormal requirements of the Unif orm 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”). 1 While the Complaint identifies “Domain Administrator, See Privacy Guardian.org” as the “Respondent”, the Registrar disclosed “Evan Beinstock” as the underlying registrant. Under paragraph 1 of the Rules, “Respondent” means the holder of a domain-name registration against which a complaint is initiated. Since the Complaint in the present proceeding is initiated against the disputed domain name, and the Registrar has confirmed that Evan Beinstock, is the holder of the registration of the disputed domain name, the Panel accepts that Evan Beinstock is the proper Respondent in this proceeding. The above ruling does not affect the Mutual Jurisdiction under paragraph 3(b)(xii) of the Rules, since the Complainant has agreed to submit, with respect to any challenges that may be made by the Respondent to a decision by the Panel to transfer or cancel the disputed domain name, to the jurisdiction of the courts at the location of the principal office of the Registrar. page 2 In accordance with the Rules, paragraphs 2 and 4, the Center f ormally notif ied the Respondent of the Complaint, and the proceedings commenced on September 23, 2024. In accordance with the Rules, paragraph 5, the due date f or Response was October 13, 2024. The Respondent did not submit any response. Accordingly, the Center notif ied the Respondent’s def ault on October 14, 2024. The Center appointed Dennis A. Foster as the sole panelist in this matter on October 18, 2024. The Panel f inds 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 prominent United States of America (“USA”) law f irm based in Calif ornia with of f ices elsewhere in the USA and abroad. The Complainant engages in numerous areas of legal practice and has been in business since 1972. The domain name <f enwick.com> has been registered to the Complainant since 1999. The Complainant owns a USA federal service mark registration f or the wo rd mark FENWICK: reg istratio n no. 3836798; registration date August 24, 2010; used in commerce since September 30, 2003; Int. Class 45 f or legal services. FENWICK is the short f orm of the Complainant’s business name, whereas the f ull name is Fenwick & West LLP. The Respondent is an individual located in the USA who registered the disputed domain name on August 13, 2024. The Respondent does not use the disputed domain name f or a website, but only f or email communications. 5. Parties’ Contentions A. Complainant -The disputed domain name is confusingly similar to the Complainant’s service mark. An obvious typo or misspelling does not change the conf using similarity. -Unlicensed or unauthorized use of a domain name incorporating the Complainant’s service mark is strong evidence that the Respondent has no rights or legitimate interests in the disputed domain name. -The Respondent also has no rights or legitimate interests in the disputed domain name because it is being used to attempt email f raud. -The Respondent registered the disputed domain name in bad faith because it knew or should have known about the Complainant’s FENWICK service mark prior to registering the disputed domain name. -The Respondent’s activity is a textbook example of registering and using the disputed domain name in bad f aith within the meaning of Policy p arag rap h 4(b )(iv). -The disputed domain name should be transf erred f rom the Respondent to the Complainant. B. Respondent The Respondent did not f ile a response in this proceeding. page 3 6. Discussion and Findings Paragraph 4(a) of the Policy provides that a complainant must demonstrate each of the f ollowing: (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 respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad f aith. Under paragraph 15(a) of the Rules, a Panel shall 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 The Complainant has exhibited proof that it owns the USA federal service mark FENWICK, whose details are set out above in the Factual Background section. As is customary under the Policy, the Panel accepts that this is proof that the Complainant has trademark rights in the name “Fenwick”. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0 ”), section 1.2.1. The disputed domain name dif f ers f rom the Complainant’s service mark only where the Respondent’s disputed domain name has replaced the “n” with an “m”. The Panel f inds that this slight change still leaves the disputed domain name conf usingly similar to the Complainant’s service mark. WIPO Overview 3.0 , section 1.9 notes that “A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark f or purposes of the f irst element.” See also, e.g., Fenwick & West LLP v. Privacy Service Provided by Withheld for Privacy ehf/ Be Fast, WIPO Case No. D2022-0835 ( f inding that the “additional letter ‘i’” in the disputed domain name <fenwiick.com> is an “intentional misspelling of Complainant’s FENWICK trademark” and that the disputed domain is conf usingly similar). The Panel theref ore finds that the Complainant has carried its burden of proof under Policy paragraph 4(a)(i) to show that the disputed domain name is conf usingly similar to the Complainant’s service mark. B. Rights or Legitimate Interests It is well-settled under the Policy that a complainant may have difficulty proving the negative proposition that a respondent has no rights or legitimate interests in a given domain name. For this reason, it is also well-settled that a complainant need only make a prima facie case that a respondent does not have rights or legitimate interests in a given domain name. Thereaf ter, the burden of production shif ts to a respondent to come f orward and show that it does have rights or legitimate interests in the disputed domain name, although the ultimate burden of proof remains on the complainant. WIPO Overview 3.0 , section 2.1. In the present case, the Complainant asserts that the Respondent does not have a license o r o ther authorization to use the Complainant’s FENWICK service mark in the disputed domain name. This constitutes a prima f acie case under the Policy. WIPO Overview 3.0 , section 2.1. The Respondent has not submitted a response in this proceeding, and thus has not come forward to attempt to rebut the Complainant’s prima facie case. The Policy, at paragraph 4(c), posits three ways in which the Respondent may show that he does have rights or legitimate interests in the disputed domain name. For the sake of completeness, and even in the absence of a response from the Respondent, the Panel will examine the record if there is evidence that the Respondent may have rights or legitimate interests in the disputed domain name. First, under Policy paragraph 4(c)(i), the Respondent may have rights or legitimate interests in a disputed domain name if it is using the name to pursue a bona f ide of f ering of goods or services. But here, the page 4 Respondent is using the disputed domain name to impersonate an attorney at the Complainant’s law f irm in order to defraud third parties. This, assuredly, is not a bona fide off ering of goods and services under the Policy. WIPO Overview 3.0, section 2.13.1. See also WIPO Case No. D2022-0835 , supra, (finding no rights or legitimate interests in using a domain name to attempt to “impersonate an attorney at Complainant’s law f irm and def raud Complainant’s client using f raudulent wire transf er instructions.”). Further, under Policy paragraph 4(c)(ii), a Respondent may have rights or legitimate interests in a domain name when it is commonly known by the domain name. Here, however, the Respondent apparently is not commonly known by the disputed domain name or any other name containing Complainant’s FENWICK service mark. Respondent’s Who Is inf ormation makes no mention of the disputed domain name or the Complainant’s FENWICK service mark as being the Respondent’s name or nickname. And f inally, the record does not suggest in any way that the Respondent is using the disputed domain name f o r a legitimate noncommercial or f air use per Policy paragraph 4(c)(iii). The Panel is thus justified in f inding that the Respondent does not have rights or legitimate interests in the disputed domain name per Policy paragraph 4(a)(ii). C. Registered and Used in Bad Faith The Policy lays out f our non-exhaustive ways in which a complainant may show that a respondent has registered and is using a disputed domain name in bad f aith (Policy paragraph 4(b)). In our case under consideration, the evidence shows that the Respondent registered and is using the disputed domain name in bad faith. First, at the time the Respondent registered the disputed domain name, the Respondent was well aware of the Complainant’s FENWICK mark and its use as a short form for the law f irm Fenwick & West LLP. As the Complainant tellingly points out, how else could the Respondent have been prepared to move so rapidly - within a f ew weeks - to impersonate one of the Complainant’s attorneys in contacting one of the Complainant’s client’s billing department? Furthermore, as the Complainant contends, Respondent’s activity here is a “textbook example” of registering and using the disputed domain name in bad f aith within the meaning of paragraph 4(b)(iv) of the Policy, which prohibits using a domain name to “intentionally attempt to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.” The Respondent did not open a website at the disputed domain name, but the disputed domain name allowed the Respondent to mimic the Complainant’s I nternet location in emails. The Respondent proceeded to impersonate one of the Complainant’s attorneys and to solicit contact with the billing department of one of the Complainant’s clients. Most likely, the Respondent planned to solicit payment on bogus invoices for illicit financial gain. P olic y panels consistently have found that “[t]he use of a domain name to send deceptive emails, e.g., to obtain sensitive or conf idential personal inf ormation f rom prospective job applicants, or to solicit payment of f raudulent invoices by the complainant’s actual or prospective customers and employees, constitutes bad f aith on the side of the Respondent.” PharmaZell GmbH v. Fred Bingo, WIPO Case No . D2021-1564 . See also WIPO Overview 3.0 , section 3.4. Given the above, it is clear that t he Respondent has registered and is using the disputed domain name in bad f aith, and that the Complainant has carried its burden of proof under Policy paragraph 4(a)(iii). page 5 7. Decision For the f oregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <femwick.com> be transf erred to the Complainant. /Dennis A. Foster/ Dennis A. Foster Sole Panelist Date: November 1, 2024

Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.