WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Latham & Watkins LLP v. Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf / Sefo Amama, ks worldwide
Case No. D2021-2486
1. The Parties
The Complainant is Latham & Watkins LLP, United States of America (“United States” or “US”), represented by Latham & Watkins LLP, United States.
The Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / Sefo Amama, ks worldwide, United States.
2. The Domain Name and Registrar
The disputed domain name <lathanwatkins.com> 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 30, 2021. On August 2, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 2, 2021, 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, and contact information in the Complaint. The Center sent an email communication to the Complainant on August 3, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint] on August 5, 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 August 5, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 25, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 27, 2021.
The Center appointed William R. Towns as the sole panelist in this matter on September 6, 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 established in Los Angeles, California, United States, in 1934. Since its inception, the Complainant’s firm has expanded to some 29 law offices in 14 countries and consistently is ranked among the best law firms in publications including The American Lawyer. The Complainant for many years has offered its legal services trading under the LATHAM WATKINS, LATHAM & WATKINS, and LW brands and logos, and is the holder of trademark registrations for its LATHAM WATKINS and LATHAM & WATKINS marks issued by the United States Patent & Trademark Office (“USPTO”) including the following:
- LATHAM WATKINS, US Reg. No. 2413795, applied for applied for August 2, 1999, and registered December 19, 2000 (first use and use in commerce 1934);
- LATHAM & WATKINS, US Reg. No. 4986824, applied for August 4, 2010, and registered June 28, 2016 (first use and use in commerce 2008);
- LATHAM & WATKINS, US Reg. No. 4976906, applied for September 23, 2015, and registered June 14, 2016 (first use and use in commerce 1948); and
- LATHAM & WATKINS, US Reg. No. 4968228, applied for September 23, 2015, and registered May 31, 2016 (first use and use in commerce 1934).
The Complainant’s LATHAM & WATKINS and LATHAM WATKINS marks collectively are referred to as the “LATHAM & WATKINS mark” unless otherwise indicated. The Complainant has registered domain names reflecting the Complainant’s LATHAM & WATKINS mark, several of which are used with the Complainant’s websites.
The disputed domain name was registered on October 13, 2020, according to the Registrar’s WhoIs database. The disputed domain name appears to be a slight but deliberate misspelling of the Complainant’s LATHAM & WATKINS mark, with the Respondent replacing the letter “m” in “latham” with the letter “n”, and spelling “lathan”.1 The Respondent has used the disputed domain to impersonate one of the Complainant’s attorneys in an attempted theft of funds, sending an email to the Complainant’s attorney using “@lathanwatkins.com” and including the Complainant’s distinctive LATHAM & WATKINS logo in the signature line. An invoice was attached to the email seeking a wire transfer of USD 58,600.
The Complainant upon discovering the attempted fraud dispatched a cease and desist letter to the Respondent on October 21, 2020. The Respondent replied to the Complainant’s letter by email on October 22, 2020, at which time the Respondent confessed to his attempted fraud. The Respondent however did not acknowledge the Complainant’s demand for transfer of the disputed domain name.
5. Parties’ Contentions
A. Complainant
The Complainant submits that the disputed domain name <lathanwatkins.com> is confusingly similar if not virtually identical to the Complainant’s LATHAM & WATKINS mark. The Complainant emphasizes that the LATHAM & WATKINS mark has been used continuously in commerce since as early as 1934 and is a well-known and famous mark. The Complainant asserts that the Respondent has engaged in typosquatting, deliberately replacing the letter “m” in <lathamwatkins.com> with the letter “n” to create the disputed domain name <lathanwatkins.com> (emphasis added). The Complainant maintains notwithstanding the Respondent’s typosquatting that the LATHAM & WATKINS mark is recognizable in the disputed domain name and accordingly satisfies the first element under the Policy. The Complainant further explains that the ampersand symbol (&) is not available for use in a domain name and thus not significant when determining confusing similarity, citing Latham & Watkins LLP v. Neovert, WIPO Case No. D2007-1205. The Complainant adds that the Top Level Domain (“TLD”) “.com” is disregarded when assessing the confusing similarity of the disputed domain name to the Complainant’s mark.
The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant maintains that the Respondent has not been authorized, licensed, or otherwise granted permission to use the LATHAM & WATKINS mark, or to register a domain name incorporating the Complainant’s famous mark. Further, according to the Complainant, the Respondent has not been commonly known by the disputed domain name, has neither used nor made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, and is not making a legitimate noncommercial or other fair use of the disputed domain name. To the contrary, the Complainant submits that the Respondent has used the disputed domain name in a blatant attempt to impersonate one of the Complainant’s attorneys and defraud one of the Complainant’s clients.
The Complainant maintains that the disputed domain name was registered and has been used in bad faith. The Complainant reiterates that the Respondent has used the disputed domain name to impersonate one of the Complainant’s attorneys in an attempt to fraudulently extract money from one of the Complainant’s clients. The Complainant further submits that the Respondent’s insertion of the letter “m” in place of the letter “n” in the disputed domain name constitutes typosquatting, and is a quintessential example of bad faith.
The Complainant submits that the term “lathanwatkins” has no apparent existence or meaning and is a deliberate misspelling of the Complainant’s LATHAM & WATKINS mark. The Complainant maintains that the Respondent was aware of the Complainant’s rights in the LATHAM & WATKINS mark when registering the disputed domain name, targeting the Complaint with a view to passing off the disputed domain name. The Complainant concludes that the Respondent’s knowing violations of the Complainant’s trademark rights constitutes per se bad faith registration and use of the disputed domain name, citing Six Continents Hotel, Inc. v. Ramada Inn, WIPO Case No. D2003-0658.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trade Marks or service Marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) the 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 domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
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 view is that the burden of production shifts to the respondent to come forward with evidence of a right or legitimate interest in the 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.
B. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the LATHAM & WATKINS mark, in which the Complainant has demonstrated rights through registration and use. In considering identity and confusing similarity, the first element of the Policy serves essentially as a standing requirement.2 The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the complainant’s trademark and the disputed domain name.
The Complainant’s LATHAM & WATKINS and LATHAM WATKINS mark is recognizable in the disputed domain name.3 The first element test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.4 Applying this comparison, the Complainant’s mark clearly is recognizable. The respondent’s substitution in the disputed domain name of a slight but deliberate misspelling substituting the letter “n” for the letter “m” in the Complainant’s LATHAM & WATKINS mark constitutes typosquatting, and does not in any way prevent a finding of the confusing similarity between the disputed domain name and the Complainant’s mark.5 When at least a dominant feature of a relevant trademark is recognizable in the disputed domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.6 See, e.g., National Association for Stock Car Auto Racing, Inc. v. Racing Connection / The Racin’ Connection, Inc., WIPO Case No. D2007-1524.
Top-Level Domains (“TLDs”), in this case “.com”, generally are disregarded in determining identity or confusing similarity under paragraph 4(a)(i) of the Policy, irrespective of any ordinary meaning that might be ascribed to the TLD.7
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden of production shifts to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to use the Complainant’s LATHAM & WATKINS mark. Regardless, the Respondent deliberately registered a domain name confusingly similar to the Complainant’s distinctive and well-known LATHAM & WATKINS mark in order to impersonate one of the Complainant’s attorneys in a fraudulent scheme targeting one of the Complainant’s clients.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the disputed domain names, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has not submitted a formal response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.
It is readily apparent to the Panel that the Respondent was aware of the Complainant and had the Complainant’s LATHAM & WATKINS mark firmly in mind when registering the disputed domain name. The record in this case makes clear beyond cavil that the Respondent engaged in typosquatting, registering and using the disputed domain name to impersonate one of the Complainant’s attorneys in an attempted fraud.
Having regard to the foregoing, the Panel finds that the Respondent has not used or made demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services within the contemplation of paragraph 4(c)(i) of the Policy. Further, and for the reasons discussed above, the Panel holds that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. The Respondent was not authorized to register and use the Complainant’s LATHAM & WATKINS mark, and given the Respondent’s abusive typosquatting and fraudulent conduct (to which he has confessed), under no circumstances may the Respondent claim to have been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. In short, the Panel finds nothing that could even remotely support a claim by the Respondent of rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the Respondents’ documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its 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 the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(b)(iv) of the Policy. The record is convincing that the Respondent had the Complainant LATHAM & WATKINS mark firmly in mind when registering the disputed domain name. The Respondent engaged in typosquatting, opportunistically using the disputed domain name in furtherance of a fraudulent impersonation scam. The Respondent unquestionably acted in bad faith, seeking to exploit and profit from on the Complainant’s trademark rights.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of 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 disputed domain name <lathanwatkins.com> be transferred to the Complainant.
William R. Towns
Sole Panelist
Date: September 20, 2021
1 The ampersand (“&”) character is not available for use in a domain name. See, e.g., Latham & Watkins LLP v. Neovert, WIPO Case No. D2007-1205 (ampersand cannot be included in domain names and is not significant when determining confusing similarity).
2 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.
3 Id. When the relevant trademark is recognizable in the disputed domain name, the domain name normally will be considered confusingly similar to the mark for purposes of paragraph 4(a)(i) of the Policy.
4 Id.
5 See WIPO Overview 3.0, section 1.9 and cases cited therein. 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. See also WIPO Overview 3.0, section 1.8 and cases cited therein. The addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under paragraph 4(a)(i) of the Policy.
6 See WIPO Overview 3.0, section 1.7 and cases cited therein.
7 See WIPO Overview 3.0, section 1.11.2 and cases cited therein.