WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Latham & Watkins LLP v. Registration Private, Domains By Proxy, LLC / Barbara Jason

Case No. D2021-2238

1. The Parties

The Complainant (the “Complainant”) is Latham & Watkins LLP, United States of America (“United States”), represented by Latham & Watkins LLP, United States.

The Respondent (the “Respondent”) is Registration Private, Domains By Proxy, LLC, United States / Barbara Jason, United States.

2. The Domain Name and Registrar

The disputed domain name <lathamw.com> (the “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 12, 2021. On July 12, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 13, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent, and contact information in the Complaint. The Center sent an email communication to the Complainant on July 15, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint and removed the domain name <lathamwatkins-llp.com> from this proceeding.

The suspension of the proceeding has been requested on July 26, 2021, by the Complainant. The Center notified the suspension of the proceeding on July 27, 2021 until August 26, 2021. The Complainant filed an amended Complaint on August 25, 2021.

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 September 1, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 21, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 22, 2021.

The Center appointed Ellen B Shankman as the sole panelist in this matter on September 30, 2021. 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 with over 2,700 attorneys in twenty-nine offices located in fourteen different countries.

The Complainant claims longstanding common law rights used in commerce at least as early as 1934 in both LATHAM & WATKINS and LATHAM, and provided evidence of multiple trademark registrations for the LATHAM & WATKINS mark, including, inter alia: United States Trademark Registration for LATHAM & WATKINS, No. 2413795 issued on December 19, 2000 and United States Trademark Registration for LATHAM & WATKINS, No. 4986824 issued on June 28, 2016.

The Complainant also has a number of domain names including, inter alia, <lathamwatkins.com> and <lw.com> under which it promotes its legal services.

The Panel also conducted an independent search to determine that the Domain Name currently resolves to an inactive ‘error’ page.

The date of the Domain Name registration is March 22, 2021.

The Complainant provided evidence that the Domain Name has been used to support and send targeted emails seeking payment of money under an apparent ‘phishing’ attempt using names of actual employees of the Complainant. In light of potential identity theft, the Panel has redacted the names of the employees of the Complainant presented in the evidence provided by the Complainant of the targeted phishing activity by the Respondent.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that Latham & Watkins LLP (“Latham”) is one of the world’s top law firms with over 2,700 attorneys in twenty-nine offices located in fourteen different countries. The Complainant is widely known for offering superior legal services to some of the world’s largest corporations in complex matters, and it is routinely ranked among the best law firms in the world in leading legal publications.

Since its founding in Los Angeles, California, in 1934, the Complainant has offered professional legal services under the LATHAM & WATKINS trademark and associated logos and terms. Through extensive use and advertising of the LATHAM & WATKINS and LATHAM trademarks, these marks have developed a very strong reputation among clients and the legal industry as being associated with high quality legal services.

In addition to owning the above-referenced trademark registrations, the Complainant also has established common-law rights to the LATHAM & WATKINS and LATHAM marks through extensive use and promotion of the marks since at least as early as 1934. The Complainant has also registered and owns numerous domain names consisting of or incorporating its LATHAM & WATKINS and LATHAM marks, including, but not limited to, the domain names identified above.

The Domain Name is clearly intended to play on the Complainant’s LATHAM mark. Further, the addition of the letter “w” to the end of the Domain Name makes clear that the Respondent is attempting to trade off of Latham’s well-known LATHAM & WATKINS mark, and is nearly identical to the Complainant’s LATHAM trademark, LATHAM & WATKINS trademark, and <latham.com> domain name in all material respects, thereby leading to a likelihood of confusion. The Complaint alleges that in registering the Domain Name, the Respondent has engaged in “typosquatting”, and the Respondent’s use of the Domain Name will cause clients and others in the legal industry to mistakenly believe that the Domain Name is affiliated with the Complainant.

Further, the Complainant claims that the Respondent has (1) no authorization, license, or permission to use the Complainant’s LATHAM or LATHAM & WATKINS marks or register the Domain Name and no reason for registering domain names that fully incorporates the Complainant’s famous mark; (2) no reason to be commonly known by the Complainant’s famous LATHAM or LATHAM & WATKINS marks; and (3) not made a bona fide offering of goods and services on the website or other fair use of the Domain Name. To the contrary, the Respondent has used at least the Domain Name to impersonate the Complainant and thereafter attempt to defraud one of the Complainant’s clients.

The Complainant provided evidence to support the claim that the Respondent interjected into an email chain between the Complainant and one of the Complainant’s clients and directed the client to redirect payment to an unknown Wells Fargo bank account. In this email, the Respondent held itself out as two of the Complainant’s employees in several ways [redacted here for preserving privacy as identified above]. The Respondent also used the employee’s signature block, which contained the entire LATHAM & WATKINS trademark, clearly as a fraud attempt. This, by itself, reveals bad faith. To maintain appearances while attempting to defraud the Complainant’s client, the Respondent even manufactured a second email address to impersonate another of the Complainant’s employees. In fact, the Respondent had actual knowledge of the Complainant’s trademarks, since the Respondent used the entire LATHAM & WATKINS mark in the email in which it impersonated one of the Complainant’s attorneys. Actual or constructive knowledge of the Complainant’s trademark rights supports a finding of bad faith.

To summarize the Complaint, the Complainant is the owner of common law rights in LATHAM and multiple registrations for the trademark LATHAM & WATKINS, in respect of legal services. The Domain Name is confusingly similar to the trademark owned by the Complainant. By registering the Domain Name that comprises the Complainant’s trademark by utilizing the letter “w” in the Complainant’s mark with the word “LATHAM” and the addition of the “.com” generic Top-Level-Domain (“gTLD”) extension, the Respondent has created a domain name that is confusingly similar to the Complainant’s trademark. The addition of these does not prevent a finding of confusing similarity. Therefore, the Domain Name could be considered virtually identical and/or confusingly similar to the Complainant’s trademark. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent has used the Domain Name to conduct a targeted ‘phishing’ scheme, which is evidence of opportunistic bad faith. The Domain Name was registered and is being used in bad faith. Thus, the Respondent’s registration and use of the Domain Name constitutes bad faith registration and use under the Policy, and the Complainant requests transfer of the Domain Name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The burden for the Complainant under paragraph 4(a) of the Policy is to prove:

(i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) that the Domain Name has been registered and used in bad faith

The Complainant must prove in this administrative proceeding that each of the aforementioned three elements is present in order to obtain the transfer of the Domain Name.

In accordance with paragraph 14(a) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint. Since the Respondent did not respond to this Complaint, the facts regarding the use and reputation of the Complainant’s mark are taken from the Complaint and are generally accepted as true in the circumstances of this case.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has satisfactorily proven that it has registered trademark rights for LATHAM & WATKINS and has common-law rights in the standalone term “LATHAM” sufficient for purposes of this proceeding.

Further, the Panel finds that the Domain Name integrates the Complainant’s mark and that the Domain Name is confusingly similar to the Complainant’s trademark. Further, the Panel finds that the use of the letter “w” together with the term “latham” does not change the overall impression of the Domain Name being connected to the trademark of the Complainant. It does not prevent a finding of confusing similarity between the Domain Name and the Complainant’s trademark. See Pfizer Inc. v. Asia Ventures, Inc., WIPO Case No. D2005-0256. See also Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110, stating, “The incorporation of a Complainant’s well-known trademark in the registered Domain Name is considered sufficient to find the Domain Name confusingly similar to the Complainant’s trademark.”

The Panel finds that the choice of “w” after “latham” not only fails to distinguish the Domain Name from the Complainant’s trademarks and registered domain names, but demonstrates that the Respondent was actually targeting the Complainant’s mark in registering the Domain Name. See e.g. Halliburton Energy Servs., Inc. v. Registration Private, Domains by Proxy, LLC / Name Redacted, WIPO Case No. D2015-2094 (“The Disputed Domain Name contains the entirety of Complainant’s mark and simply changes the letter “b” to “d.” [T]his changing does not dispel the confusing similarity of the Disputed Domain Name to Complainant’s mark, but rather demonstrates that Respondent was targeting Complainant’s mark.”).

Accordingly, the Panel finds that the Complainant has satisfied the first requirement that the Domain Name is identical or confusingly similar to the Complainant’s registered trademark, under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Panel is convinced that the Respondent knew about the Complainant in choosing the Domain Name. Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, prior UDRP panels have recognized that this could result in the often-impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name and that it is not related to or affiliated in any way with the Complainant, nor has the Complainant authorized the Respondent to use its trademarks. The Respondent is not known by the Domain Name, does not have permission to use the Complainant’s mark, and is not using the Domain Name for a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Domain Name. The Respondent has also used the Domain Name to support a phishing scheme, almost certainly for the Respondent’s commercial gain, which is not a legitimate noncommercial purpose.

The Panel agrees and finds no legitimate interests by the Respondent in the Domain Name. The Panel’s finding is consistent with other UDRP panels that have categorically held that the use of a domain name for illegal activity (e.g., phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or 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.”); see also, e.g., Wikimedia Foundation, Inc. v. Nanci Nette, Name Management Group, WIPO Case No. D2018-0717 (June 13, 2018) and WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.13.1.

Therefore, the Complainant has satisfied the second requirement that the Respondent has no rights or legitimate interests in the Domain Name, under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel is persuaded that the Respondent has demonstrated a knowledge of and familiarity with the Complainant’s brand. In light of the facts set forth within this Complaint, the Panel finds that it is “not possible to conceive of a plausible situation in which the Respondent would have been unaware of” the Complainant’s brand at the time the Domain Name was registered. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

The Panel agrees with the Complainant’s contention that indeed, the Respondent’s purpose in registering the Domain Name was probably to capitalize on the reputation of the Complainant’s trademark and opportunistic to support illegitimate purposes. See Hoffmann-La Roche Inc. v. Doroven, WIPO Case No. D2010-1196.

A respondent’s use of a complainant’s mark—for said respondent’s commercial benefit—to attract Internet users otherwise seeking said complainant evinces a finding of bad faith is also consistent with the Policy paragraph 4(b)(iv). See WIPO Overview 3.0, section 3.1.4 (“Panels have moreover found the following types of evidence to support a finding that a respondent has registered a domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark: (i) actual confusion, (ii) seeking to cause confusion (including by technical means beyond the domain name itself) for the respondent’s commercial benefit, even if unsuccessful, (iii) the lack of a respondent’s own rights to or legitimate interests in a domain name, (iv) redirecting the domain name to a different respondent-owned website, even where such website contains a disclaimer, (v) redirecting the domain name to the complainant’s (or a competitor’s) website, and (vi) absence of any conceivable good faith use.”). These criteria apply in the present case, which supports the Panel’s finding that the Respondent registered and is using the Domain Name in bad faith.

The Panel is persuaded that the Respondent deliberately registered the Domain Name to create a misleading and fraudulent impression of association and confusion with the Complainant and intended opportunistically to benefit on the goodwill of the Complainant‘s trademarks and to profit from consumer confusion, and to obtain sensitive and valuable data in bad faith. Given the distinctiveness of the Complainant’s trademark and reputation, together with the name used to obtain the Domain Name and the evidence of the email sent imitating the Complainant the Panel agrees with the Complainant’s claims that the Respondent has registered the Domain Name with full knowledge of the Complainant’s trademark and uses it for the purpose of defrauding people based on the likelihood of confusion and imitation of the Complainant and its brand.

Furthermore, the Panel finds that the emails sent utilizing the Domain Name constitutes not only a real risk of but actual phishing scheme, aiming to deceive Internet users to believe they are dealing with the Complainant. See Accor SA v. Domain Admin, C/O ID#10760, Privacy Protection Service INC d/b/a PrivacyProtect.org / Yogesh Bhardwaj, WIPO Case No. D2017-1225. Not only was the Respondent aware of the Complainant, but it specifically used its knowledge to target the Complainant’s clients to seek sensitive information to facilitate fraudulent wire transfers.

The Panel finds that this is a classic example of the unfortunate abusive and opportunistic registration to create confusion that the UDRP is intended to address, and finds that the Respondent is using the Domain Name opportunistically to benefit financially from the Complainant’s trademark, to make targeted fraudulent requests involving personal data and financial transfers, in bad faith use and registration. See Inter IKEA Systems B.V. v. Targetclix / Anh Vo, WIPO Case No. D2011-1087 (“It is not conceivable that Respondent would not have had actual notice of Complainant’s trademark rights at the time of the registration of the Domain Names…. [Therefore] the Domain Names are not one that one could legitimately adopt other than for the purpose of creating an impression of an association with Complainant.”).

The Respondent, at the time of initial filing of the Complaint, had employed a privacy service to hide its identity, which past Panels have held serves as further evidence of bad faith registration and use. See Dr. Ing. H.C. F. Porsche AG v. Domains by Proxy, Inc., WIPO Case No. D2003-0230. See also WIPO Overview 3.0, section 3.6 (“Panels have also viewed a respondent’s use of a privacy or proxy service which is known to block or intentionally delay disclosure of the identity of the actual underlying registrant as an indication of bad faith.”).

Given the evidence of the Complainant’s prior rights in the trademark, the timing of the registration of the Domain Name with apparent full knowledge of the Complainant, and the use of the Domain Name to support fraudulent emails, the Panel finds that the Complainant has satisfied the third requirement that the Respondent has registered and is using the Domain Names in bad faith, under paragraph 4(a)(iii) 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 Domain Name <lathamw.com> be transferred to the Complainant.

Ellen B Shankman
Sole Panelist
Date: October 4, 2021