WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Allen & Overy LLP v. WhoisGuard Protected, WhoisGuard, Inc. / Crystal Scheurecker, Jadestone energy pty

Case No. D2020-0299

1. The Parties

The Complainant is Allen & Overy LLP, United Kingdom, represented internally.

The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Crystal Scheurecker, Jadestone energy pty, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <allen-overyllp.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 February 10, 2020. On February 10, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 February 11, 2020 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 February 14, 2020.

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 February 18, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 9, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 10, 2020.

The Center appointed Cherise Valles as the sole panelist in this matter on March 23, 2020. 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 global law firm founded in London in 1930. It has more than 40 offices in 31 countries across Europe, America, Asia Pacific, Africa and the Middle East. In over 100 countries where the Complainant does not have a presence, it has strong ties with relationship law firms. The Complainant employs 5,400 people worldwide.

The Complainant has worked with some of the world’s leading businesses on transactions that have changed their industries. The Complainant ranks in fifth position in the 2020 Acritas Global Elite Law Firm Brand Index, and is widely (albeit informally) recognized as a member of the group of “Magic Circle” London-headquartered international law firms.

Throughout its 90-year history, the Complainant has traded under the name “Allen & Overy”.

The Complainant owns a number of trademarks in jurisdictions around the world, including the following:

-European Union Trademark No. 001500669 for ALLEN & OVERY, registered on May 22, 2001 in classes 16, 36 and 42;
-European Union Trademark No. 010411189 for ALLENOVERY, registered on March 21, 2012 in classes 16, 35, 36, 41 and 45;
-European Union Trademark No. 009334211 for the ALLEN & OVERY logo, registered on February 4, 2011, in classes 16, 35, 36, 41 and 45; and
-European Union Trademark No. 009593765 for ALLEN & OVERY (EUROPE), registered on May 27, 2011 in classes 16, 35, 36, 41 and 45.

The Complainant’s primary online presence is via its website “www.allenovery.com”, which was first registered in 1995. This website had more than 700,000 unique visitors in the six months prior to August 28, 2019. The Complainant also owns the following domain names, which redirect to the Complainant’s main website: <allenandovery.com>, <allenoveryllp.com> and <allenandoveryllp.com>. The Complainant also has social media pages registered in its name.

The disputed domain name was registered on April 20, 2019. The website to which the disputed domain name resolves is a parking page containing only sponsored links to third-party sites which appear to offer services in competition with those of the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisfied. In particular, the Complainant asserts that:

The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.

- The disputed domain name is confusingly similar to the Complainant’s registered ALLEN & OVERY trademarks.

The Respondent lacks rights or legitimate interests in the disputed domain name.

- The Complainant states that the Respondent should be considered as having no rights or legitimate interests in the disputed domain name. The Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name that included its trademarks.

The disputed domain name has been registered and is being used in bad faith.

- The Complainant asserts that the disputed domain name was registered and is being used in bad faith. The mere fact of registration of a domain name that is confusingly similar or identical to a famous trademark by an entity that has no relationship to that mark is itself evidence of bad faith registration and use.

The Complainant requests the Panel to issue a decision finding that the disputed domain name be transferred to the Complainant, in accordance with paragraph 4(i) of the Policy.

B. Respondent

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

6. Discussion and Findings

The Policy provides specific remedies to trademark owners against registrants of domain names where the owner of the mark (a complainant) establishes each of the following elements:

(i) the domain name is identical or confusingly similar to a trademark in which the complainant has rights;

(ii) the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name was registered and is being used in bad faith.

The Complainant has the burden of proof in establishing each of these elements.

The Respondent has failed to file a Response in this proceeding. The Panel may draw appropriate inferences from the available evidence submitted by the Complainant.

A. Identical or Confusingly Similar

To prove this element, the Complainant must have trademark rights and the disputed domain name must be identical or confusingly similar to the Complainant’s trademark.

The Complainant is the sole and exclusive owner of multiple registrations worldwide for ALLEN & OVERY, ALLENOVERY” and the ALLEN & OVERY logo, as indicated in Section 4 above. A common feature of all of these trademarks is the combination of the terms “allen” and “overy”. The only differences between these words in the Complainant’s registered trademarks and the disputed domain name are the presence in the disputed domain name of a hyphen (either replacing the ampersand in the Complainant’s ALLEN & OVERY trademarks or as a new element separating the distinctive elements “allen” and “overy”) and the letters “llp”.

It has previously been held by a UDRP panel that the replacement of an ampersand with a hyphen does not prevent a finding of confusing similarity. In Allen & Overy LLP v. Can Kulah, WIPO Case No. D2019-1147, the disputed domain name <allen-overy.com> was found to be confusingly similar to the Complainant’s ALLEN & OVERY trademark.

The letters “llp” are a descriptive abbreviation that serves only to identify a business as a limited liability partnership. Many law firms, including the Complainant, are limited liability partnerships and trade as such with “LLP” their names. The inclusion of “llp” in the disputed domain name does not prevent a finding of confusing similarity.

Moreover, the disputed domain name is virtually identical to the domain name <allenoveryllp.com>, which the Complainant owns.

Previous UDRP panels have held that the generic Top-Level Domain (gTLD) “.com” is not to be taken into account when assessing whether a domain name is identical or confusingly similar to a trademark.

In the light of the foregoing, the Panel finds that the disputed domain name <allen-overyllp.com> is confusingly similar to the Complainant’s registered trademark and that paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy enumerates three non-exclusive ways in which a respondent may demonstrate rights or legitimate interests in a domain name (with “you” referring to the respondent):

“[a]ny of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

The Respondent did not submit a Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b).

Previous UDRP panels have established that in order to shift the burden of production to the respondent, it is sufficient for the complainant to make a prima facie showing that the respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not satisfied this burden. In the absence of a Response or assertion that any such right or legitimate interest exists, this must lead to a presumption that the Respondent is unable to show that such a right or legitimate interest exists.

The Complainant advises that there has never been any relationship between the Complainant and the Respondent. The Respondent is not licensed, or otherwise authorized, be it directly or indirectly, to register or use, the Complainant’s trademarks in any manner whatsoever, including in, or as part of, the disputed domain name. The Respondent does not own any valid trademark or trade name rights in the terms “allen & overy” or “allenovery” and to the best of the Complainant’s knowledge, the Respondent is not commonly known by the name “allen & overy” or “allenoveryllp”.

There is no evidence that the Respondent has made demonstrable preparations to use the disputed domain name, nor is there any evidence that the Respondent is using the disputed domain name in connection with a bona fide offering of goods and services. The links on the webpage to which the disputed domain name resolves appear to be directed to websites offering services in competition with those of the Complainant. Although the website states that the links are provided by a third party, and that the domain owner (the Respondent) has no relationship with the advertisers, it is likely that the Respondent receives ‘pay-per-click’ income in consideration for hosting them.

Moreover, the Complainant has provided evidence that the Respondent has used the disputed domain name to send an email seeking to mislead the recipient as to the identity of the sender and likely to obtain sensitive personal or commercial information, as discussed in more detail in section C. Previous UDRP panels have held that a registrant cannot acquire rights or legitimate interests by the use of a domain name to send phishing emails. See, e.g., Syngenta Participations AG v. Guillaume Texier, Gobain ltd, WIPO Case No. D2017-1147.

In light of the foregoing, the Panel finds that the Complainant has established an unrebutted prima facie case and concludes that paragraph 4(a)(ii) of the Policy is satisfied.

C. 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 documented out-of-pocket costs directly related to the domain name;

(ii) the respondent has 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;

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line 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.

It is unlikely that the Respondent did not have had knowledge of the Complainant’s trademarks at the time of registration of the disputed domain name, given that the Complainant’s trademarks pre-date the registration date of the disputed domain name and that the Complainant’s trademarks enjoy considerable renown worldwide in connection with the provision of legal services and legal advice. Previous UDRP panels have held that the registration of a domain name in awareness of a complainant’s registered rights, and in the absence of the respondent’ s own rights or legitimate interests, amounts to registration in bad faith. See e.g., Royd Withy King LLP v. Help Tobuy, WIPO Case No. D2019-0624.

The website under the disputed domain name resolves to a parking page containing only sponsored links to third-party sites which appear to offer services in competition with those of the Complainant.

By exploiting the renown of the Complainant’s brand and its registered trademarks, the Respondent appears to be seeking to profit from an unauthorized association with the Complainant.

The disputed domain name has been also used to send a phishing email to a third party in the name of a former employee of the Complainant, seeking financial information. Only the registrant of a domain name can create email addresses featuring the same domain, and the Panel finds that the Respondent sent the email with the intent of profiting from any financial or commercial information that could be gained from its recipient. The use of the disputed domain name for this purpose suggests that the Respondent registered the disputed domain name in bad faith in order to take predatory advantage of the Complainant’s reputation. Previous UDRP decisions have found such use to be evidence of registration and use in bad faith. See, e.g., Brodies LLP v. WhoIs Guard Protected, WhoIsGuard, Inc. / John Kelly, WIPO Case No. D2018-2715.

Accordingly, the Panel concludes that the Complainant has satisfied its burden of showing bad faith registration and use of the disputed domain name 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 disputed domain name <allen-overyllp.com> be transferred to the Complainant.

Cherise Valles
Sole Panelist
Date: April 3, 2020