WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Allen & Overy LLP v. Name Redacted

Case No. D2019-1148

1. The Parties

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

The Respondent is Name Redacted¹ .

2. The Domain Name and Registrar

The disputed domain name <allenovery-lawfirm.com> (the “Disputed Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 17, 2019. On May 17, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 20, 2019, 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 May 21, 2019 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 May 24, 2019.

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 May 27, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 16, 2019. The Respondent did not submit any formal response.

The Center appointed Luca Barbero as the sole panelist in this matter on July 1, 2019. 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 Limited Liability Partnership, registered in the United Kingdom since January 1, 1930, and is authorized and regulated by the Solicitors Regulation Authority of England and Wales (SRA).

This global law firm, founded in the City of London by George Allen and Thomas Overy, includes 44 offices spanning 31 countries across Europe, America, Asia Pacific, Africa and the Middle East, comprising 5500 people worldwide, out of which 2800 are lawyers and 550 are partners.

The Complainant is the owner of approximately 180 registered trademarks across multiple jurisdictions globally. Most of these registered trademarks include the words “Allen” and “Overy” used in this order. With particular reference to this Complaint (but without limitation), the Complainant holds the following trademarks:

- European Union trademark registration No. 001500669 for ALLEN & OVERY word mark, filed on February 9, 2000 and registered on May 22, 2001, in classes 16, 36 and 42;
- European Union trademark registration No. 009593765 ALLEN & OVERY (EUROPE) word mark filed on December 13, 2010 and registered on May 27, 2011 in classes 16, 35, 36, 41 and 45;
- European Union trademark registration No. 009334211 ALLEN & OVERY THE WORLD’S MOST ADVANCED LAW FIRM figurative mark, filed on August 25, 2010 and registered on February 4, 2011, in classes 16, 35, 36, 41 and 45;
- European Union trademark registration No. 010411189 ALLENOVERY word mark filed on November 11, 2011 and registered on March 21, 2012, in classes 16, 35, 36, 41 and 45;

In 89 years, it has traded consistently under the brand “Allen & Overy” and thus has registered trademark rights in “ALLEN & OVERY” as well as rights acquired through use in the United Kingdom, the European Union and worldwide.

The Complainant is also the owner of the domain name <allenovery.com>, which was first registered in 1995, and has pages on social media (Facebook, Twitter and LinkedIn). Apart from its main website “www.allenovery.com”, the Complainant is also the registrant of several other domain names, including: <allenandovery.com>, <allenoveryllp.com> and <allenandoveryllp.com>.

All the above domain names have been registered for defensive purposes and all re-direct to the Complainant’s main website.

The Disputed Domain Name <allenovery-lawfirm.com> was registered October 10, 2018, eighteeen years after the registration of the first ALLEN & OVERY trademark by the Complainant and is currently being used to solicit payment information from persons seeking the Complainant’s services, by sending phishing by “spoof” emails.

5. Parties’ Contentions

A. Complainant

The Complainant highlights that the law firm “Allen & Overy” is one of the leading law firms in the world, operating in 31 countries with 44 offices, and with 5500 people of which 2800 are lawyers and 550 partners and that this network, makes Allen & Overy one of the largest and most connected law firms in the world with unrivalled global reach and local depth.

The Complainant points out that the Disputed Domain Name is confusingly similar to the trademark in which the Complainant has rights and that, like the trademark, it incorporates the surnames of the law firm founders in their entirety and in the same order, which can have no other connotation to the public than that of referring to the Complainant.

The Complainant asserts that in registering the Disputed Domain Name, the Respondent deliberately used a combination of the words “Allen” and “Overy” (minus the ampersand), which are the distinctive and prominent elements of its trademark rights and the descriptive words “law firm”.

With this in mind and with respect to paragraph 4(c) of the Policy, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. In fact, the Disputed Domain Name is currently being used to send emails seeking to mislead recipients as to the identity of the sender for the Respondent’s commercial gain.

Furthermore, the Complainant states that the Respondent is not a licensee of the Complainant and is in no way authorized to use the Complainant’s trademarks.

The Complainant also contends that the Respondent is not commonly known by the Disputed Domain Name and that he or she, registered the Disputed Domain Name using the Complainant’s address and a name and email address based on the name of a partner the Complainant with the intent to hide his or her true identity.

According to the Complainant, this fake impersonation proves that he or she must have been aware of the Complainant and its rights at the moment of registering the Disputed Domain Name, therefore acting in bad faith.

The Complainant therefore asserts that the Respondent knowingly registered the Disputed Domain Name order to mislead Internet users whilst apparently seeking profit from an unauthorized association with the Complainant and also acquiring personal details of the Complainant’s clients.

In addition, the fact that the Respondent does not operate the website under the Disputed Domain Name, can be deemed as an act of bad-faith as it signifies that the Respondent may be deliberately passively holding the domain name that incorporates a well-known trademark, without obvious legitimate purpose.

The Complainant points out that the Disputed Domain Name is being used by the Respondent to send phishing by “spoof” emails for fraudulent purposes, soliciting credit card information from persons seeking the Complainant’s services. In doing so, the Respondent contacts the Complainant’s clients or other third parties, claiming to be another partner of the Complainant and requesting urgent payments of fictitious invoices in his name.

In light of the above, the Complainant requests that the Disputed Domain Name be transferred to the Complainant.

B. Respondent

On May 31, 2019, the Center received a communication from the individual indicated to be the registrant of the Disputed Domain Name, informing the Center that she is indeed a partner of the law firm Allen & Overy LLP, that the telephone number and the email address indicated in the WhoIs are entirely unknown to her and that she was not aware of this registration.

No other person claiming to be the registrant of the Disputed Domain Name filed a response to the Complaint.

6. Discussion and Findings

According to 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.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the Disputed 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 Disputed Domain Name; and

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

The Panel finds that the Complainant has established rights over the trademark ALLEN & OVERY based on the trademark registrations cited under section 4 above and the related trademark certificates duly submitted as annexes to the Complaint.

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement, and that the threshold test for confusing similarity involves a reasoned but relatively straightforward comparison between a complainant’s trademark and the Disputed Domain Names to assess whether the trademark is recognizable within the Disputed Domain Name (as per section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

The Panel finds that the Complainant’s trademark ALLEN & OVERY and the Disputed Domain Name <allenovery-lawfirm.com> are certainly confusingly similar since the deletion of the ampersand “&” and the addition of the descriptive term “law firm” are not sufficient to eliminate confusion. The addition of “law firm” describes the services that Complainant provides in connection with its ALLEN&OVERY mark (see along these lines Fry’s Electronics, Inc v. Whois ID Theft Protection, WIPO Case No. D2006-1435). As also stated in Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441, where the domain name <reutersnews.com> was considered confusingly similar to complainant’s trademark REUTERS where the term “news” is indicative of the complainant’s business of providing news services.

Therefore, the Panel finds that the Complainant has proven that the Disputed Domain Name is confusingly similar to a trademark in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant must show that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:

“(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.”

It is well-established that the burden of proof lies on the Complainant. However, satisfying the burden of proving a lack of the Respondent’s rights or legitimate interests in respect of the Disputed Domain Name according to paragraph 4(a)(ii) of the Policy is potentially onerous, since proving a negative can be difficult considering such information is often primarily within the knowledge or control of the Respondent.

Accordingly, in line with the UDRP precedents, it is sufficient that the Complainant show a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name in order to shift the burden of production on the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the Disputed Domain Name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (see, i.e., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Banco Itau S.A. v. Laercio Teixeira, WIPO Case No. D2007-0912; Accor v. Eren Atesmen, WIPO Case No. D2009-0701).

The Panel finds that the Complainant has made a prima facie case and that the Respondent, by not having submitted a Response even though has probably received the communication via email to the address indicated in the WhoIs, has failed to demonstrate rights or legitimate interests in the Disputed Domain Name in accordance with paragraph 4(c) of the Policy for the following reasons.

The Panel notes that in the present case, there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademarks.

In view of the above-described use of the Disputed Domain Name, the Panel finds that the Respondent is certainly not using the Disputed Domain Name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademark.

Therefore, the Panel finds that the Complainant has proven the requirement prescribed by paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires that the Complainant prove that the Disputed Domain Name was registered and is being used by the Respondent in bad faith.

With reference to the bad faith at the time of registration, the Panel finds that, in light of the registration and use of the Complainant’s trademark ALLEN & OVERY in connection with the Complainant’s legal services and of the confusingly similarity of the Disputed Domain Name with the Complainant’s trademark and also considering the fact that as registrant data the Respondent used the name of a partner of the Complainant, the Respondent certainly registered the Disputed Domain Name in bad faith having the Complainant’s trademark in mind.

As to the use in bad faith, the Panel notes that the Disputed Domain Name has been used by the Respondent to send phishing emails for fraudulent purposes. The Complainant has provided evidence of such use enclosing copy of a deceitful email purportedly being sent from another partner of the Complainant and requesting urgent payments of fictitious invoices in his name.

According to section 3.4 of the WIPO Overview 3.0 “Panels have held that the use of a domain name for purposes other than to host a website may constitute bad faith. Such purposes include sending email, phishing, identity theft, or malware distribution. (…) Many such cases involve the respondent’s use of the domain name to send deceptive emails, e.g., to obtain sensitive or confidential personal information from prospective job applicants, or to solicit payment of fraudulent invoices by the complainant’s actual or prospective customers”.

Therefore, the Panel finds that the Complainant has also proven the requirement prescribed by 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, <allenovery-lawfirm.com> be transferred to the Complainant.

Luca Barbero
Sole Panelist
Date: July 19, 2019

¹ The Panel decided to redact the name of the named Respondent, adopting the criterion of the panel in Banco Bradesco S.A. v. FAST-12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788 (“The Panel has decided that no purpose is to be served by including the named Respondent in this decision, and has therefore redacted its name from the caption and body of this decision. The Panel has, however, attached as Annex 1 to this Decision an instruction to the Registrars regarding transfer of the Disputed Domain Names that includes the named Respondent, and has authorized the Center to transmit Annex 1 to the Registrars as part of the order in this proceeding. However, the Panel has further directed the Center, pursuant to paragraph 4(j) of the Policy and paragraph 16(b) of the Rules, that Annex 1 to this Decision shall not be published except under exceptional circumstances”).