The Complainant is Allen & Overy LLP, United Kingdom, represented internally.
The Respondent is Heins Xendel, Netherlands. 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 Domain Name. On October 15, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on the same day, 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 Registrar also indicated that the language of the Registration Agreement was French. The Center sent an email communication to the Complainant on October 15, 2019, inviting the Complainant to provide sufficient evidence of an agreement between the Parties for English to be the language of proceeding, a Complaint translated into French, or a request for English to be the language of proceeding. The Complainant filed a request for English to be the language of proceeding on October 16, 2019. No comments were received from the Respondent. 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 October 23, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 12, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 13, 2019. The Center appointed Mathias Lilleengen as the sole panelist in this matter on November 25, 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 global law firm founded in London in 1930 by George Allen and Thomas Overy. Currently its presence includes 44 offices in 31 countries across Europe, America, Asia Pacific, Africa, and the Middle East. It comprises 5,500 people worldwide. Throughout its 89-year history, the Complainant has traded consistently under the brand “Allen & Overy”. The Complainant is the proprietor of approximately 180 registered trademarks globally. Most of these registered trademarks include the words “Allen” and “Overy” used in this order, such as European Union Trade Mark (“EUTM”) ALLEN & OVERY, registration No. 001500669 filed on February 9, 2000, and registered on May 22, 2001; EUTM ALLENOVERY registration No. 010411189 filed on November 11, 2011, and registered on March 21, 2012; and EUTM ALLEN & OVERY THE WORLD’S MOST ADVANCED LAW FIRM registration No. 009334211 filed on August 25, 2010, and registered on February 4, 2011. The Complainant’s primary online presence is at “www.allenovery.com”, first registered in 1995. It also owns “www.allenandovery.com”, “www.allenoveryllp.com” and “www.allenandoveryllp.com”, which have been registered for defensive purposes and redirect to the Complainant’s main website. The Complainant is also present on social media, such as Facebook, Twitter and LinkedIn. The Respondent registered the Domain Name on August 21, 2019. The Domain Name resolves to a parking page by the Registrar. 5. Parties’ Contentions A. Complainant The Complainant requests that English should be the language of the proceedings, not French that is the language of the registration agreement. The operative part of the Respondent’s agreement with the Registrar is a document in English. This indicates that the Respondent is familiar with English. The Respondent is resident in the Netherlands where most people understand English. The Domain Name resolves to a webpage in English. A fraudulent email (referred to as evidence of bad faith), is in English. The Complainant believes that the Respondent is likely to be more familiar with English than French. The Complainant has documented trademark registrations in the Complaint. According to the Complainant, the distinctive and prominent elements of the trademark is “Allen” and “Overy”. The Domian Name is identical to the trademark, except for the letter “e” in the Domain Name replaces the ampersand in the trademark. According to the Complainant, the Domain Name registration is an intentional misspelling and it should be regarded as a clear example of typosquatting. The Complainant argues that the Respondent has not been commonly known by the Domain Name. The Respondent has no history of using the Domain Name in connection with a bona fide offering of goods and services. The Domain Name resolves to a parking page that states only that the Domain Name has been registered and advertises the registrar’s services. It is not clear whether the Respondent receives pay-per-click income in consideration for hosting these advertisements. The Respondent has used the Domain Name to send a fraudulent email to the client of a third-party law firm, seeking to mislead the recipient and divert payment of an invoice to a bank account that presumably belong to the Respondent. This is not bona fide. Finally, the Complainant argues that the Respondent must have had knowledge of the Complainant’s rights at the time of registration of the Domain Name. The Respondent’s use of the Domain Name to assist in attempted fraud, clearly points to bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Language of Proceeding Pursuant to paragraph 11 of the Rules, the Panel decides the language of the proceedings be English, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.5.1. In this case, there is evidence showing that the Respondent can understand English. The “language” of the Domain Name and the content on the webpage, and the fraudulent email in relation to the Domain Name, are all in English. Moreover, there is no indications that the language of the registration agreement (French), would help the Dutch Respondent. The Respondent has been given a fair chance to comment (notices from the Center in English and French), but the Respondent has decided not to reply. B. Identical or Confusingly Similar The Complainant has established rights in the trademark ALLEN & OVERY. The test for confusing similarity involves the comparison between the trademark and the Domain Name. In this case, the Domain Name is identical to the Complainant’s trademark, save the letter “e” in the Domain Name replaces the ampersand in the trademark. For the purposes of assessing confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) “.com”. The Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests The Respondent has no registered trademarks or trade names corresponding to the Domain Name. Nor is there any evidence suggesting that the Respondent has any rights or legitimate interests in the Domain Name. The Complainant has not granted any authorization to the Respondent. The Domain Name resolves to the Registrar’s parking page. The Respondent’s use of the Domain Name to send a fraudulent email to divert payment of an invoice to a bank account, is obviously not bona fide, rather evidence of bad faith. The Panel finds that the Complainant has made out an unrebutted case. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name in accordance with paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith Based on the evidence, it is likely that the Respondent knew of the Complainant’s trademark and its business when the Respondent registered the Domain Name. The Complainant’s trademark rights predate the Domain Name registration. The fact that the Domain Name has been used for an attempt of fraud indicates both bad faith registration and use. In the absence of any explanation from the Respondent, the Panel agrees with the Complainant that this case seems to be a clear example of typosquatting. The Panel concludes that the Domain Name was registered and is being used in bad faith, within the meaning of the 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 Domain Name Mathias Lilleengen
Sole Panelist
Date: November 29, 2019
Full & Egal Universal Law Academy