WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Allen & Overy LLP v. WhoisGuard Protected, WhoisGuard, Inc. / Vee Larry, Alen Overy

Case No. D2020-0789

1. The Parties

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

The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Vee Larry, Alen Overy, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <allenoveryglobal.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 April 1, 2020. On April 3, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 3, 2020, 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 April 3, 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 April 3, 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 April 14, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 4, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 5, 2020.

The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on May 7, 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 City of London law firm founded in 1930. It now has a presence in 31 countries in the European Union, the United States of America, the Asia Pacific region, Africa, and the Middle East, employing in total 5,400 people including 550 partners. It also has strong ties with law firms in 100 countries. The Complainant is ranked 5th in the 2020 Acritas Global Elite Law Firm Brand Index.

The Complainant has approximately 180 registered trademarks, of which the following are representative for the purposes of the present proceeding:

ALLEN & OVERY, European Union Trade Mark, filed February 9, 2000, registered May 25, 2001, registration number 001500669, in classes 16, 36, and 42;

ALLENOVERY, European Union Trade Mark, filed November 11, 2011, registered March 23, 2012, registration number 010411189, in classes 16, 35, 36, 41, and 45;

ALLEN & OVERY THE WORLD’S MOST ADVANCED LAW FIRM, European Union Trade Mark, filed August 25, 2010, registered February 4, 2011, registration number 009334211, in classes 16, 35, 36, 41, and 45;

ALLEN & OVERY (EUROPE), European Union Trade Mark, filed December 13, 2010, registered May 27, 2011, registration number 009593765, in classes 16, 35, 36, 41, and 45.

The Complainant has also used the website “www.allenovery.com” for business since 1995, receiving more than 700,000 unique visitors in the six months to August 28, 2019, and owns the websites “www.allenandovery.com”, “www.allenoveryllp.com”, and “www.allenandoveryllp.com”. The Complainant has presences on Facebook, Twitter, and LinkedIn.

The only background information available about the Respondent is the contact information proffered in order to register the disputed domain name, which was registered on March 11, 2020. The disputed domain name resolved recently to a parking page hosted by the Registrar, displaying link categories relating to business and markets. The disputed domain name has also been used as the basis of an email address in order to send an email that the Complainant alleges had fraudulent intent.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to registered trademarks in which it has rights.

The Complainant submits that the generic Top-Level Domain (“gTLD”) “.com” may be disregarded in the determination of confusing similarity. The words “Allen” and “Overy” are the distinctive and prominent elements of the Complainant’s trademarks. In the disputed domain name, the presence of the same words in the same order constitutes confusing similarity to the Complainant’s trademarks. The additional dictionary word “global” in the disputed domain name is not distinguishing and should not prevent a finding of confusing similarity to the Complainant’s trademarks. Given the Complainant’s international reputation, the additional word “global” could increase the possibility of confusion.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not commonly known by the disputed domain name and has not been authorised to use any of the Complainant’s trademarks. The disputed domain name has been used in two ways that are not bona fide purposes. The website to which it resolves is a parking page with headings of sponsored links to third parties that may be pay-per-click links automatically generated. Furthermore, the disputed domain name has been used by the Respondent to send a phishing email, seemingly associated with the Complainant, seeking to mislead the recipient and thereby to obtain sensitive commercial information with an alleged intent to defraud.

The Complainant contends that the disputed domain name was registered and is being used in bad faith and the Respondent is apparently not making any good faith use of it.

The Complainant says it is considerably renowned in the field of legal services and it is clear from what the Respondent has done that it must have been aware of the Complainant’s rights at the time of registration of the disputed domain name. The disputed domain name does not resolve to an active website and is passively held in circumstances that have generally been found to amount to use in bad faith.

The Complainant reiterates the disputed domain name has been used to send a phishing email to a third party in the name of a partner of the Complainant, and has attached a chain of related emails in evidence. The suspicious email referred to a putative unpaid invoice and originated from an email address composed of the partner’s name and the disputed domain name. The disputed domain name has not been used to provide goods or services in good faith through a website, but instead was registered and is used for the creation of an email address designed to confuse third parties for the Respondent’s commercial gain.

The Complainant has cited a number of previous decisions under the Policy, including eight in which it was the successful complainant, that it considers to be relevant to its Complaint.

The Complainant requests the transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable dispute-resolution provider, in compliance with the Rules, that:

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

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

(iii) your domain name has been registered and is being used in bad faith”.

The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.

A. Identical or Confusingly Similar

On the evidence produced in the form of copies of registration documents, the Panel is satisfied that the Complainant has rights in the registered trademarks ALLEN & OVERY, ALLENOVERY, ALLEN & OVERY THE WORLD’S MOST ADVANCED LAW FIRM, and ALLEN & OVERY (EUROPE). In each of these trademarks the elements ALLEN and OVERY are distinctive and prominent. The disputed domain name is <allenoveryglobal.com>, of which the gTLD “.com” may generally be disregarded in the determination of confusing similarity. In the remainder of the disputed domain name the words “allen”, “overy”, and “global” are clear, “allen” and “overy” being identical to the distinctive elements of the Complainant’s trademarks. The word “global” is a dictionary word that in this instance is found not to be distinguishing. The Panel finds the disputed domain name to be confusingly similar to the Complainant’s trademarks in the terms of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has stated a prima facie case to the effect that the Respondent has no rights or legitimate interests in respect of the disputed domain name, has not been authorised to use any of the Complainant’s trademarks, is not commonly known by the disputed domain name, and that the disputed domain name has been used in ways that are not for a bona fide purpose.

Paragraph 4(c) of the Policy provides for the Respondent to contest the Complainant’s prima facie case under paragraph 4(a)(ii) of the Policy and to establish rights or legitimate interests in a disputed domain name by demonstrating, without limitation:

“(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 has not responded and has not asserted any rights or legitimate interests in respect of the disputed domain name. The Panel cannot find any evidence to suggest that the disputed domain name could fulfil any of the criteria of paragraphs 4(c)(i), (ii) or (iii) of the Policy, notwithstanding the disputed domain name having been registered in the organisation name “Alen Overy”. Accordingly the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name and finds for the Complainant under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

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

(iv) by using the domain name, you have intentionally attempted 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 website or location or of a product or service on your website or location”.

The provisions of paragraph 4(b) of the Policy are without limitation and bad faith may be found otherwise by the Panel.

According to the evidence produced, the disputed domain name has been used in two ways.

First, it has resolved to a parking page prominently headed “allenoveryglobal.com” that displays 10 categories of “related links” under criteria such as “Global Business”, “International Business”, “Global Market”, and “Report”. Having regard to all the evidence it may reasonably be deduced that the disputed domain has been parked whilst not resolving to an active website, and has been populated with links that are usually placed on websites automatically on behalf of advertisers. According to the pay-per-click model, someone following a sponsored link generates a fee, chargeable to the advertiser, which is divided between at least the advertising service provider and the domain name owner, being the Respondent. The Respondent’s earning of fees in this way depends on the attraction of Internet visitors to the website. The phrase on the Respondent’s website “related links”, in the context, may be understood by a visitor to mean the advertising links are related to the heading “allenoveryglobal.com” and therefore related to the Complainant’s trademark.

It may reasonably be expected that a proportion of Internet users seeing the disputed domain name and recognising the Complainant’s trademarks, or seeking the Complainant’s Internet presence and seeing the disputed domain name in, for example, search results, may be confused into thinking, at least initially, it would represent the Complainant, particularly given the Complainant’s global operations. The Complainant has annexed two pages from an item on its own website, dated © 2019, prominently headed “ALLEN & OVERY [/] Global snapshot”. The Respondent is found to have used the disputed domain name to attract Internet users for commercial gain by confusion with the Complainant’s trademarks.

Second, the disputed domain name has evidently been used by the Respondent as the basis of an email address. According to the evidence produced by the Complainant in a chain of emails, an email dated March 26, 2020, bearing the “from” address of an actual Named Person @ the disputed domain name and the subject line “Unpaid invoice #9255072541”, was sent to another firm (address redacted in the Complaint). The text stated “I am a lawyer from Allen & Overy representing a client, chasing an unpaid invoice issued to your firm, I have been advise to contact you on this matter and hoping you can get this settled as soon as possible. Thanks”. The signature block comprised the Named Person, “Senior Associate at Allen & Overy”, the Complainant’s company name, street address, London and a postcode, United Kingdom, then a repeat of the originating email address in active link form, a repeat of the Complainant’s company name, and “Law Firm of the Year M&A”. The recipient of the email had reasons to suspect that the email did not truly originate from the Complainant, to which it reported the matter.

On the evidence, and on the balance of probabilities, the Panel finds the email of March 26, 2020, originating from the disputed domain name, to have been a phishing attempt, relying on confusion with the Complainant’s trademarks with intent to profit from such financial or commercial information as could be gleaned by or on behalf of the Respondent.

The detail, albeit faulty, displayed in the phishing email, together with the interval of only two weeks between registration of the disputed domain name and the date of the phishing email, on balance, renders it implausible that the Respondent was unaware of the Complainant and its global business at the time of registration of the disputed domain name, and had at that time or subsequently researched information about key members of the Complainant company.

On the totality of the evidence, and on the balance of probabilities, the Panel finds that the disputed domain name has been used by the Respondent in bad faith within the meaning of paragraph 4(b)(iv) of the Policy, and was registered for the bad faith purpose for which it has been used. Registration and use of the disputed domain name in bad faith are found in the terms 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 <allenoveryglobal.com> be transferred to the Complainant.

Dr. Clive N.A. Trotman
Sole Panelist
Date: May 21, 2020