The Complainant is Allen & Overy LLP, United Kingdom, represented by Allen & Overy LLP, United Kingdom.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Name Redacted1 . 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 14, 2019. On October 14, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 14, 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 October 15, 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 October 16, 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 November 25, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 14, 2019. The Respondent requested an extension of four days of the deadline to file a response, in accordance with Paragraph 5(b) of the Rules. The due date for Response was therefore extended until November 18, 2019. The Response was filed with the Center on November 18, 2019. The Center appointed Mariya Koval as the sole panelist in this matter on November 27, 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, being founded in 1930, is an international law firm, which is one of the ten largest law firms in the world measured by revenue and is regularly listed as one of the most prestigious and elite law firms in the world. The Complainant has its informal status as a “Magic Circle” law firm, having a significant trading goodwill and reputation in Europe. Currently the Complainant’s presence includes 44 offices spanning 31 countries across Europe, America, Asia Pacific, Africa and the Middle East. It currently comprises 5500 people worldwide, out of which 2800 are lawyers and 550 are partners. This network makes the Complainant one of the largest and most connected law firms in the world, with an unrivalled global reach and local depth. The Complainant is the owner of numerous registrations for its ALLEN & OVERY Trademark (the “ALLEN & OVERY Trademark” or the “Trademark”) in jurisdictions around the world, among which there are the following ones: - European Union Trademark Registration No. 001500669 ALLEN & OVERY registered on May 22, 2001 in classes 16, 36, and 42; - European Union Trademark Registration No. 010411189 ALLENOVERY registered on March 21, 2012 in classes 16, 35, 36, 41, and 45; - European Union Trademark Registration No. 009334211 ALLEN & OVERY THE WORLD’S MOST ADVANCED LAW FIRM, registered on February 4, 2011, in classes 16, 35, 36, 41, and 45; - European Union Trademark Registration No. 009593765 ALLEN & OVERY (EUROPE) registered on May 27, 2011 in classes 16, 35, 36, 41, and 45. Since 1995, the Complainant operates the domain name The Disputed Domain Name The Complainant contends that throughout its 89-year history, it has traded consistently under the brand “Allen & Overy” and that over the past year it has worked with some of the world’s leading businesses on transactions that have changed their industries. The Complainant also contends that the Disputed Domain Name is confusingly similar to the Trademark in which the Complainant has rights in view of the inclusion of the letter “i” in “allen” to form “aillen” in the Disputed Domain Name, that is, in its turn, the addition of a similar-looking letter, is of this general sort and does not change the overall impression created by the Disputed Domain Name; it is a clear example of typosquatting. The Complainant further asserts that the Respondent is not commonly known by the Disputed Domain Name, he is not a licensee of the Complainant, and is not otherwise authorized to use the Complainant’s Trademark. The Complainant also contends that the website to which the Disputed Domain Name resolves is a parking page containing only sponsored links to third-party sites. These links carry descriptions such as “Sexy Girls Nearby” and appear to connect to dating sites. They bear no relation to the Complainant’s business, and any association between them and the Complainant’s business is likely to tarnish the Complainant’s Trademark. In relation to the parking page, the Complainant therefore claims that the Respondent is neither making active use of the Disputed Domain Name in connection with its own bona fide offering of goods or services, nor making fair use of the Disputed Domain Name without intent for commercial gain or to tarnish the Complainant’s Trademark. However, the Respondent has used the Disputed Domain Name in another way: it has been used to send a fraudulent email to one of the Complainant’s clients, seeking to mislead the recipient and divert payment of an invoice to a bank account that presumably belongs to the Respondent. The nature of this email is such that the Respondent must have been well aware of the Complainant’s business and rights at the time he or she registered the Disputed Domain Name. The Complainant further argues that since the Complainant’s Trademark not only pre-dates the registration date of the Disputed Domain Name, but also enjoys considerable renown in connection with the provision of legal services and legal advice, it is clear that the Respondent had knowledge of the Complainant’s rights at the time of registration of the Disputed Domain Name. The Respondent cannot have been unaware of the Complainant's existence and its rights, yet the Respondent deliberately took a decision to take advantage of these rights. The registration of the Disputed Domain Name in awareness of the Complainant and the registered rights, and in the absence of its own rights or legitimate interests, amounts to registration in bad faith by the Respondent. The Complainant also argues that by exploiting the renown of its Trademark, the Respondent appears to be seeking to profit from an unauthorized association with the Complainant. In this respect, the Complainant contends that the registration of the Disputed Domain Name was done in bad faith. This activity manifests in the Disputed Domain Name being used to assist in the attempted perpetration of fraud on a client of the Complainant by using the Disputed Domain Name to send an email purporting to be from an employee of the Complainant and seeking to divert payment of a genuine invoice to a bank account held, presumably, by or on behalf of the Respondent. B. Respondent On November 18, 2019, the Center received a communication from the individual indicated to be the registrant of the Disputed Domain Name, informing the Center that she had no knowledge or information concerning the allegations in the Complaint and that she never registered the Disputed Domain Name. Moreover, she stated that she knew of a previous incident on which her name was used in a fraud attempt, in a similar way as stated in the Complaint. No other person claiming to be the registrant of the Disputed Domain Name filed a response to the Complaint. For the reasons mentioned under section 1, this Panel has decided to redact her name from this decision. 6. Discussion and Findings In accordance with the paragraph 4(a) of the Policy, the complainant must prove that each of the following three elements are present: (i) identical or confusingly similar to a trademark or service mark in which a complainant has rights; and (ii) that the respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Panel finds that the Complainant has registered rights in the ALLEN & OVERY Trademark by virtue of various trademark registrations in multiple jurisdictions globally. The Disputed Domain Name reproduces the Complainant’s registered Trademark in its entirety; the only difference is one letter “i”, which has been included between “a” and “l”. The Disputed Domain Name constitutes a typical example of typosquatting. This modification makes virtually no difference to the appearance, or any change to the meaning of the Disputed Domain Name as registered compared to the Complainant's registered Trademark. The Panel finds that inclusion of one additional letter in the Disputed Domain Name in this case is insufficient to distinguish the Disputed Domain Name from the Complainant’s Trademark. A generic Top-Level Domain (gTLD) suffix “.com” may generally be disregarded in the assessment of confusing similarity between the Disputed Domain Name and the Complainant’s Trademark for the purposes of the Policy. Therefore, the Panel finds that the Disputed Domain Name is confusingly similar to the ALLEN & OVERY Trademark, in which the Complainant has rights. Accordingly, the Complainant has satisfied the first element in paragraph 4(a) of the Policy. B. Rights or Legitimate Interests In accordance with section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) while the overall burden of proof in UDRP proceedings is on the Complainant, the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests. If such prima facie case is made, the burden of production shifts to the Respondent to come forward with relevant evidences demonstrating rights or legitimate interests in the Disputed Domain Name. If the Respondent fails to come forward with such relevant evidence, the Complainant is generally deemed to have satisfied the second element. The Panel finds that the Complainant has made out a prima facie case, clearly contending that it has never licensed or authorized the Respondent to use its ALLEN & OVERY Trademark in the Disputed Domain Name or in any other manner. Moreover, the Panel finds that there are no evidence that the Respondent is commonly known by the Disputed Domain Name. Also, there is no evidence that the Respondent is using the Disputed Domain Name to offer bona fide goods and services or making a legitimate noncommercial or fair use of the Disputed Domain Name. On the contrary, the website under the Disputed Domain Name was a parking page containing only sponsored links to third-party sites, apparently connected to dating sites. Moreover, the Respondent sent a fraudulent email to one of the Complainant’s clients, seeking to mislead the recipient and divert payment of an invoice to a bank account that presumably belongs to the Respondent. With respect to the circumstances of this case, the Panel considers that it is more likely that the Respondent registered the Disputed Domain Name with the sole intention of commercial gain by attracting the consumers to its website. In light of the above, the Panel finds that the Respondent has no rights or legitimate interests to use the Disputed Domain Name. Therefore, the second element in paragraph 4(a) of the Policy has been satisfied by the Complainant. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that indicate to bad faith conduct on the part of the respondent, namely: “(i) circumstances indicating that the respondent has registered or has acquired the disputed 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 the respondent’s documented out-of-pocket costs directly related to the disputed domain name; or (ii) the respondent has registered the disputed 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) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s 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 the respondent’s website or location.” The evidences presented before the Panel show that the Complainant’s Trademark has long history and considerable reputation and, accordingly, it is very unlikely that at the time of registering the Disputed Domain Name, reproducing the Complainant’s Trademark in its entirety, the Respondent could not have been unaware of the Complainant’s Trademark. According to section 3.1.4 of the WIPO Overview 3.0 panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. In this case the Disputed Domain Name is confusingly similar to the Complainant’s widely-known Trademark and was obviously registered to attract, for commercial gain, the Internet users to the website under it by creating a likelihood of confusion with the Complainant’s Trademark and business. In the Panel’s opinion, the fact that the Respondent knew about the Complainant’s Trademark at the time of the registration of the Disputed Domain Name is undisputable in view of the Disputed Domain Name is used to attract Internet users who misspell the Complainant’s official website and redirect them to other websites, namely to dating ones. Moreover, the Respondent sent a fraudulent email to one of the Complainant’s clients. Impersonating the Complainant by use of the Complainant’s Trademark in a fraudulent email scam is further evidence of bad faith registration and use. Finally, the Respondent, not participating in these proceedings, has failed to indicate any facts and/or evidences, which would show the fair registration and use of the Disputed Domain Name. In all the circumstances the Panel is satisfied that the Complainant has proved both the bad faith registration and the bad faith use 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 Mariya Koval 1 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”).
Sole Panelist
Date: December 10, 2019
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