About Intellectual Property IP Training IP Outreach IP for… IP and... IP in... Patent & Technology Information Trademark Information Industrial Design Information Geographical Indication Information Plant Variety Information (UPOV) IP Laws, Treaties & Judgements IP Resources IP Reports Patent Protection Trademark Protection Industrial Design Protection Geographical Indication Protection Plant Variety Protection (UPOV) IP Dispute Resolution IP Office Business Solutions Paying for IP Services Negotiation & Decision-Making Development Cooperation Innovation Support Public-Private Partnerships The Organization Working with WIPO Accountability Patents Trademarks Industrial Designs Geographical Indications Copyright Trade Secrets WIPO Academy Workshops & Seminars World IP Day WIPO Magazine Raising Awareness Case Studies & Success Stories IP News WIPO Awards Business Universities Indigenous Peoples Judiciaries Genetic Resources, Traditional Knowledge and Traditional Cultural Expressions Economics Gender Equality Global Health Climate Change Competition Policy Sustainable Development Goals Enforcement Frontier Technologies Mobile Applications Sports Tourism PATENTSCOPE Patent Analytics International Patent Classification ARDI – Research for Innovation ASPI – Specialized Patent Information Global Brand Database Madrid Monitor Article 6ter Express Database Nice Classification Vienna Classification Global Design Database International Designs Bulletin Hague Express Database Locarno Classification Lisbon Express Database Global Brand Database for GIs PLUTO Plant Variety Database GENIE Database WIPO-Administered Treaties WIPO Lex - IP Laws, Treaties & Judgments WIPO Standards IP Statistics WIPO Pearl (Terminology) WIPO Publications Country IP Profiles WIPO Knowledge Center WIPO Technology Trends Global Innovation Index World Intellectual Property Report PCT – The International Patent System ePCT Budapest – The International Microorganism Deposit System Madrid – The International Trademark System eMadrid Article 6ter (armorial bearings, flags, state emblems) Hague – The International Design System eHague Lisbon – The International System of Appellations of Origin and Geographical Indications eLisbon UPOV PRISMA Mediation Arbitration Expert Determination Domain Name Disputes Centralized Access to Search and Examination (CASE) Digital Access Service (DAS) WIPO Pay Current Account at WIPO WIPO Assemblies Standing Committees Calendar of Meetings WIPO Official Documents Development Agenda Technical Assistance IP Training Institutions COVID-19 Support National IP Strategies Policy & Legislative Advice Cooperation Hub Technology and Innovation Support Centers (TISC) Technology Transfer Inventor Assistance Program WIPO GREEN WIPO's Pat-INFORMED Accessible Books Consortium WIPO for Creators WIPO ALERT Member States Observers Director General Activities by Unit External Offices Job Vacancies Procurement Results & Budget Financial Reporting Oversight

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sidley Austin LLP v. Domain Administrator, Fundacion Privacy Services LTD

Case No. D2020-2991

1. The Parties

The Complainant is Sidley Austin LLP, United States of America (“United States”), self-represented.

The Respondent is Domain Administrator, Fundacion Privacy Services LTD, Panama.

2. The Domain Name and Registrar

The disputed domain name <remotesidley.com> is registered with Media Elite Holdings Limited dba Register Matrix (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 11, 2020. On November 11, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 12, 2020, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the 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 November 13, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 3, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 7, 2020.

The Center appointed Andrew F. Christie as the sole panelist in this matter on December 12, 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 one of the oldest law firms in the United States, providing legal services to clients in connection with complex transactional, regulatory, and litigation matters for over 150 years. It is one of the largest United States-based law firms, with approximately 2,000 lawyers and annual revenues of over USD 2 billion. It maintains offices in over 20 cities worldwide, in North America, Europe, and Asia Pacific.

The Complainant’s name has evolved over the last century and a half. The firm was known as Sidley & Austin in 1967, and then as Sidley Austin Brown & Wood commencing in 2001. Since 2006, it has been known as Sidley Austin LLP, and has been commonly known as Sidley. The names Sidley and Sidley Austin are used by a number of affiliated partnerships, including the Complainant, each of which is affiliated with Sidley Austin Holding LLP.

Sidley Austin Holding LLP is the owner of United States Trademark Registration No. 3328229 (registered on November 6, 2007) for the word trademark SIDLEY. Sidley Austin Holding LLP licenses the use of the SIDLEY trademark to its affiliated partnerships, including the Complainant.

The Complainant first registered the domain name <sidley.com> on April 25, 1995. The Complainant owns numerous domain names consisting of or incorporating the SIDLEY trademark, which in turn resolve to the Complainant’s website at “www.sidley.com”.

The disputed domain name was registered on October 26, 2020. The Complainant has provided a screenshot, taken on November 3, 2020, showing that the disputed domain name resolved to a website containing links to various law firms, none of which were the Complainant. As at the date of this decision, the disputed domain name resolved to a website containing an advertorial for “neo-collagen” skin treatment.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to a trademark in which it has rights because: (i) the disputed domain name merely adds the word “remote” to the trademark SIDLEY; and (ii) “remote” is merely a descriptive term.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name because: (i) the Complainant has not given permission to the Respondent to use the disputed domain name, and there is no basis to believe that the Respondent otherwise has rights or legitimate interests in the name; (ii) there is no evidence that the Respondent uses the disputed domain name, or that it uses or has ever used a name or trademark corresponding to the disputed domain name, in connection with a bona fide offering of goods or services; (iii) the SIDLEY trademark is widely-known and uniquely associated with the Complainant, such that any use by the Respondent would necessarily be junior and subordinate to that of the Complainant, and designed solely to cause confusion; and (iv) the Respondent is not making any legitimate noncommercial or fair use of the disputed domain name as the website resolving from it contains no content other than a privacy policy and links to third-party websites relating to, among other items, “remote access”, “remote desktop access”, and “Family Law Attorneys for Men”.

The Complainant contends that the disputed domain name was registered and is being used in bad faith because: (i) the disputed domain name is identical to the Complainant’s widely-known trademark and the Respondent is not affiliated with the Complainant, so bad faith by the Respondent can and should be presumed; (iii) the website resolving from the disputed domain name has links to other legal websites unaffiliated with the Complainant, including to various law firm sites; (iv) it is axiomatic that registration of a domain name confusingly similar or identical to an established trademark, coupled with the direction of consumers to websites associated with services in the same industry, is strong evidence of bad faith registration and use; (v) as the COVID-19 pandemic has dramatically increased the incidence and significance of remote work, the Respondent’s registration of the disputed domain name appears to be an attempt to capitalize on the global health crisis by co-opting a domain name suggesting a remote working environment associated with the Complainant; and (vi) the Respondent’s likely knowledge of the Complainant’s rights, the distinctiveness and the reputation of the Complainant’s trademark, and the use of a privacy shield to hide the registrant’s identity, all support the conclusion that the Respondent has registered and is using the disputed domain name in bad faith.

B. Respondent

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

6. Discussion and Findings

A. Standing to file Complaint

Sidley Austin Holding LLP is the owner of the United States trademark registration for the word trademark SIDLEY. The Complainant provided a sworn Declaration made by a partner of the Complainant, in which it was declared that the Complainant is an affiliate of Sidley Austin Holding LLP and is licensed by Sidley Austin Holding LLP to use the SIDLEY trademark. Section 1.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states that a trademark owner’s affiliate is considered to have rights in a trademark under the Policy for the purposes of standing to file a complaint. The Panel finds that the Complainant has rights in the SIDLEY trademark, and accordingly has standing to file this Complaint.

B. Identical or Confusingly Similar

Once the generic Top-Level Domain (“gTLD”) “.com” is ignored (which is appropriate in this case), the disputed domain name consists of the whole of the registered word trademark SIDLEY preceded by the word “remote”. The trademark SIDLEY is clearly recognizable in the disputed domain name. The addition of the word “remote” does not prevent a finding of confusing similarity of the disputed domain name with the SIDLEY trademark. As provided in section 1.8 of the WIPO Overview 3.0, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.

C. Rights or Legitimate Interests

The Respondent is not a licensee of, or otherwise affiliated with, the Complainant or Sidley Austin Holding LLP, and has not been authorized by the Complainant or Sidley Austin Holding LLP to use the SIDLEY trademark. The Respondent has not provided any evidence that it has been commonly known by, or has made a bona fide use of, the disputed domain name, or that it has, for any other reason, rights or legitimate interests in the disputed domain name. The website to which the disputed domain name resolved contained links to various third-party websites, including to the websites of law firms unrelated to the Complainant. According to the present record, therefore, the disputed domain name is not being used in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. As described above, the Complainant has put forward a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and this has not been rebutted by the Respondent. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

D. Registered and Used in Bad Faith

The disputed domain name was registered many years after the registration of the SIDLEY trademark. The evidence on the record provided by the Complainant with respect to the use of the SIDLEY trademark, combined with the absence of any evidence provided by the Respondent to the contrary, is sufficient to satisfy the Panel that, at the time of registration of the disputed domain name, the Respondent knew of the SIDLEY trademark. Furthermore, the evidence on the record provided by the Complainant indicates that the Respondent has used the disputed domain name to attract, for commercial gain, Internet users to a website by creating confusion in the minds of the public as to an association between the website and the Complainant. Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith.

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 <remotesidley.com> be transferred to the Complainant.

Andrew F. Christie
Sole Panelist
Date: December 26, 2020

https://www3.wipo.int/contact/en/area.jsp?area=arbitration https://www.wipo.int/pressroom/en/ https://www.wipo.int/tools/en/disclaim.html https://www.wipo.int/en/web/privacy-policy/ https://www.wipo.int/en/web/accessibility/ https://www.wipo.int/tools/en/sitemap.html https://www3.wipo.int/newsletters/en/ https://www.wipo.int/en/web/podcasts/ https://www.wipo.int/news/en/