Complainant is Allen & Overy LLP, United Kingdom, internally represented.
Respondent is Name Redacted. 1 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 27, 2019. On November 27, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 2, 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 named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on December 4, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on December 9, 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 Respondent of the Complaint, and the proceedings commenced on December 18, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 7, 2020. Respondent did not submit any response. Accordingly, the Center notified the Parties of Respondent’s default on January 8, 2020. The Center appointed Scott R. Austin as the sole panelist in this matter on January 22, 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 Complainant states in its Complaint, and provides evidence in the respective Annexes attached to its Complaint sufficient to support that: 1) “Complainant is a global law firm which was founded in the City of London on January 1, 1930 by George Allen and Thomas Overy” and “[t]hroughout its 89-year history, it has traded consistently under the brand “Allen & Overy” (the “ALLEN & OVERY Mark”); 2) Complainant’s global presence includes “44 offices spanning 31 countries across Europe, America, Asia Pacific, Africa and the Middle East”, and “comprises 5,500 people worldwide, out of which 2,800 are lawyers and 550 are partners”; 3) “Complainant’s primary online presence is via its website “www.allenovery.com”, which was first registered in 1995”, which website “contains information about the Complainant’s practices, lawyers, locations and further expertise.”; 4) Apart from its main website, “www.allenovery.com”, Complainant is also the proprietor of several other domain names, including: 5) “Complainant is the proprietor of approximately 180 registered trade marks across multiple jurisdictions globally. Most of these registered trade marks include the words “Allen” and “Overy” used in this order”, and “are registered (without limitation) in respect of the provision of legal and/or lawyer services in class 42 or 45, as appropriate to the classification system in effect at the time of filing”, including, but not limited to, the following: a) European Union Trade Mark ALLEN & OVERY no. 001500669, filed on February 9, 2000, claiming classes 16, 36 and 42, registered May 22, 2001; b) European Union Trade Mark ALLENOVERY no. 010411189, filed on November 11, 2011, claiming classes 16, 35, 36, 41 and 45, registered March 21, 2012; c) European Union Trade Mark no. 009334211 filed on August 25, 2010, claiming classes 16, 35, 36, 41 and 45, registered February 4, 2011 ; and d) European Union Trade Mark ALLEN & OVERY (EUROPE) no. 009593765 filed on December 13, 2010, claiming classes 16, 35, 36, 41 and 45, registered May 27, 2011. 6) The disputed domain name 1) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights because: a) “The distinctive and prominent elements common to all the [ALLEN & OVERY Marks] are the words “Allen” and “Overy”, relative to which the remaining descriptive terms can be disregarded”; b) “[B]ecause the Complainant is a law firm, and businesses providing legal services are commonly referred to as “firms”, this only increases, rather than decreases, the likelihood of confusion.”; c) “When the words “Allen” and “Overy” are coupled in the order they appear in the Disputed Domain Name, they can have no other meaning for the public than a reference to the Complainant and the [ALLEN & OVERY Mark], especially in conjunction with the descriptor ‘firm’”; 2) Respondent has no rights or legitimate interests in the disputed domain name because: a) Since the disputed domain name resolves to a parking page that advertises the registrar’s own services and contains links to third-party websites offering services in competition with those of Complainant, “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;” b) “Respondent’s identity is at present unknown, but, given the use being made of the Disputed Domain Name, the Complainant is certain that the Respondent is not a licensee of the Complainant, and is in no way authorized to use the [Allen & Overy Mark]”; c) Respondent has used the disputed domain name to send phishing emails seeking to mislead recipients as to the identity of the sender and, Complainant believes, to obtain sensitive personal or commercial information, and “a registrant cannot acquire rights or legitimate interests by the use of a domain name to send phishing emails”; 3) The disputed domain name has been registered and is being used in bad faith because: a) Given the renown and the decades of use by Complainant of the ALLEN & OVERY Mark, “it is clear that the Respondent had knowledge of the Complainant’s rights at the time of registration of the Disputed Domain Name;” b) Respondent’s registration of the disputed domain name with knowledge of Complainant and the ALLEN & OVERY Mark, and in the absence of its own rights or legitimate interests, amounts to registration in bad faith by Respondent; c) “[P]assive holding of a domain name that incorporates a well-known trademark, without obvious legitimate purpose, will be deemed to be bad-faith use pursuant to paragraph 4(a)(iii) of the Policy”; d) Respondent is seeking to profit from an unauthorized association with Complainant by using the disputed domain name to send phishing emails to numerous third parties in the name of a partner of Complainant’s law firm, constituting bad faith registration and use proscribed under paragraph 4(b)(iv) of the Policy; and e) Respondent registered and used the disputed domain name for the creation of a deceptive and illegal email phishing scheme designed to confuse third parties for Respondent’s commercial gain. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. Policy, paragraph 4(a). A. Identical or Confusingly Similar To prove this element, Complainant must have trade or service mark rights and the disputed domain name must be identical or confusingly similar to Complainant’s trade or service mark. Based upon the trademark registrations cited by Complainant, as well as supporting documents submitted as evidence and the decisions of prior UDRP panels, the Panel finds that Complainant has over decades of use established trademark rights in and to its well-known ALLEN & OVERY Mark in connection with the services identified in section 4 above. Complainant contends, inter alia, that the disputed domain name is confusingly similar to its ALLEN & OVERY Mark in which Complainant has rights because when the words “Allen” and “Overy” are coupled in the order they appear in the disputed domain name, they can have no other meaning for the public than a reference to Complainant and the ALLEN & OVERY Mark, especially in conjunction with the descriptor “firm”. Complainant further contends, that because Complainant is a law firm, and businesses providing legal services are commonly referred to as “firms”, this only increases, rather than decreases, the likelihood of confusion. See Clifford Chance LLP v. David Brent,WIPO Case No. D2019-2126 (“given that the Complainant is well known for legal advisory services, the descriptive term ‘firms’ is an apt reference to the Complainant’s services”). For the disputed domain name to be found identical or confusingly similar to the ALLEN & OVERY Mark, the relevant comparison is with the second-level portion “allenoveryfirm” of the disputed domain name, Prior UDRP panels have found that where a disputed domain name incorporates a complainant’s mark in its entirety, adding a descriptive term and a gTLD to the complainant’s mark, does not negate confusing similarity between the disputed domain name and the mark under Policy, paragraph 4(a)(i). See Philip Morris USA Inc v. Contact Privacy Inc. Customer 1242276235 / NICHAPHA PRADABRATTANA,WIPO Case No. D2018-1138 (“panel finds that dictionary word “company”, commonly defined as “a commercial business”, does not alleviate confusing similarity between the Complainant’s trade mark and the disputed domain name Prior UDRP panels have held, however, “the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy”. Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. Essentially, once a disputed domain name is found to incorporate a complainant’s mark in its entirety, analysis of any appended terms on a more complex level, such as likelihood of confusion is unnecessary for a finding of confusing similarity under the first element of the Policy, but may be applied to a finding under the second or third element. See Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662 (the issue in the analysis of the first factor is not whether there is confusion in the trademark infringement sense (an issue more properly considered under the legitimate interest and bad faith factors), but rather whether there is sufficient similarity between the domain name and the trademark to advance to consideration of the second and third factors.) The Panel agrees and notes that section 1.7 of the WIPO Overview 3.0 provides: “It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. The prominent terms of Complainant’s ALLEN & OVERY Mark are readily recognizable as incorporated in their entirety into the disputed domain name here, and for that reason this Panel finds the disputed domain name confusingly similar to the ALLEN & OVERY Mark in which Complainant has established trademark rights. Accordingly, the Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Under this second element of the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to respondent to come forward with appropriate evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate evidence, a complainant is generally deemed to have satisfied the second element, WIPO Overview 3.0, section 2.1. See also, Do the Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624. Respondent here has failed to present any evidence of its rights or legitimate interests in the disputed domain name. The Panel is of opinion that Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Complainant argues that Respondent’s identity is at present unknown, but, given the use being made of the disputed domain name, Complainant is certain that Respondent is not a licensee of the Complainant, and is in no way authorized to use the ALLEN & OVERY Mark. The Panel finds that Respondent has neither any connection with Complainant, nor has Respondent been authorized or licensed by Complainant to use and register its ALLEN & OVERY Mark or to register any domain name incorporating Complainant’s mark. In fact, the Panel finds based on the evidence submitted in the Annex to the Complaint, that Respondent has without license or authorization from Complainant, falsely registered the disputed domain name under the name of a partner of Complainant’s firm to carry out an illegal and deceptive email phishing scheme, again using the name of that same partner in email correspondence for Respondent’s financial gain. Prior panels under the Policy have found that “[i]n the absence of any license or permission from the Complainant to use its trademark, no actual or contemplated bona fide or legitimate use of the Disputed Domain Name could reasonably be claimed.” See Sportswear Company S.P.A. v. Tang Hong,WIPO Case No. D2014-1875; Chicago Pneumatic Tool Company LLC v. Texas International Property Associates – NA NA,WIPO Case No. D2008-0144; see also Six Continents Hotels, Inc. v. Patrick Ory,WIPO Case No. D2003-0098 (“There is no evidence of any commercial relationship between the Complainant and the Respondent which would entitle the Respondent to the mark. Consequently, the Panel concludes that the Respondent has no rights nor legitimate interests in the Domain Name given there exists no relationship between the Complainant and the Respondent that would give rise to any license, permission or authorization by which the Respondent could own or use the Domain Name.”). Prior UDRP panels have also found that a registrant cannot acquire rights or legitimate interests by the use of a domain name to send phishing emails. See, e.g., Syngenta Participations AG v. Guillaume Texier, Gobain ltd,WIPO Case No. D2017-1147. Since Respondent elected to submit no evidence in these proceedings, there is no evidence from Respondent to the contrary, i.e., that Respondent has been authorized or licensed to use Complainant’s Mark or is commonly known by the disputed domain name. The Panel finds in review of the record and evidence submitted by Complainant that Respondent is not commonly known by the disputed domain name. It is generally regarded as prima facie evidence of no rights or legitimate interests if a complainant shows that the disputed domain name is identical or confusingly similar to the complainant’s trademark, that the respondent is not commonly known by the disputed domain name, and that the complainant has not authorized the respondent to use its mark (or an expression which is confusingly similar to its mark), whether in the disputed domain name or otherwise. See Roust Trading Limited v. AMG LLC,WIPO Case No. D2007-1857; see also Marriott International, Inc. v. Thomas, Burstein and Miller,WIPO Case No. D2000-0610 (no legitimate interest when there is no evidence that respondent is commonly known by the domain name). The Panel has found above that the disputed domain name is confusingly similar to Complainant’s ALLEN & OVERY Mark. The Panel accepts Complainant’s contentions that Respondent is not commonly known by the disputed domain name and that Respondent has never been authorized by Complainant to use Complainant’s ALLEN & OVERY Mark. The Panel is therefore satisfied that Complainant has provided sufficient prima facie evidence that Respondent has no rights or legitimate interests in the disputed domain name. Complainant has submitted evidence in the record to support its contention that because the disputed domain name at the time of filing the Complaint, “resolves to a parking page that advertises the registrar’s own services and contains links to third-party websites offering services in competition with those of the Complainant, 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”. Prior UDRP panels have consistently held that respondents that monetize domain names using pay-per-click (“PPC”) links, targeting the complainant, have not made a bona fide offering of goods or services that would give rise to rights or legitimate interests in a disputed domain name and, therefore, “Respondent is not using the Disputed Domain Name to provide a bona fide offering of goods or services as allowed under Policy. [paragraph] 4(c)(i), nor a legitimate noncommercial or fair use as allowed under Policy, [paragraph] 4(c)(iii).” Section 2.9 of WIPO Overview 3.0 provides: “[P]anels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users.” See, e.g.,Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415(“when the links on the PPC landing page “are based on the trademark value of the domain names, the trend in UDRP decisions is to recognize that such practices generally do constitute abusive cybersquatting.”); Champagne Lanson v. Development Services/MailPlanet.com, Inc., WIPO Case No. D2006-0006 (PPC landing page not legitimate where ads are keyed to the trademark value of the domain name); The Knot, Inv. v. In Knot We Trust LTD, WIPO Case No. D2006-0340; Brink’s Network, Inc. v. Asproductions, WIPO Case No. D2007-0353. The Panel agrees with Complainant and finds that the actions taken by Respondent and links promoted through its website accessed through the disputed domain name do not confer rights or legitimate interests on Respondent. In view of the above, the Panel finds that Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not submitted any argument or evidence to rebut Complainant’s prima facie case. The Panel determines, therefore, that Respondent does not have rights or legitimate interests in the disputed domain name and that Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to 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 registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the disputed domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b). The Panel finds that Respondent has registered the disputed domain name in bad faith for at least the following reasons. Complainant contends that given the renown and the decades of use by Complainant of the ALLEN & OVERY Mark, “it is clear that the Respondent had knowledge of the Complainant’s rights at the time of registration of the Disputed Domain Name” and therefore makes it illogical to believe that Respondent registered the disputed domain name without specifically targeting Complainant and its mark in bad faith. The Panel finds that Respondent’s registration of the disputed domain name with awareness of Complainant and the ALLEN & OVERY Mark, and in the absence of its own rights or legitimate interests, amounts to registration in bad faith by the Respondent. See Royds Withy King LLP v. Help Tobuy,WIPO Case No. D2019-0624. The Panel also finds as one prior UDRP panel did, that where a domain name such as the disputed domain name here is so obviously connected with such a well-known mark and services, its very use by someone with no connection with the services suggests opportunistic bad faith. See Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net,WIPO Case No. D2000-0226. Given that the disputed domain name is so obviously connected with Complainant and Complainant’s established rights in its ALLEN & OVERY Mark through its use of the ALLEN & OVERY Mark for almost 90 years as shown in the evidence submitted by Complainant, the Panel finds that Respondent’s actions suggest “opportunistic bad faith” in violation of the Policy. See Research In Motion Limited v. Dustin Picov,WIPO Case No. D2001-0492. The Panel also finds that Respondent’s use of the disputed domain name is in bad faith. Based on the website to which the disputed domain name resolves, as discussed in detail under Section 6B above, Complainant submits that prior UDRP panels have found bad faith registration and use under Policy paragraph 4(b)(iv) where, as here, a respondent uses a confusingly similar domain name to resolve to a website featuring links to third-party websites that create revenue for Respondent. See WIPO Overview 3.0, section 3.5 (“Particularly with respect to “automatically” generated pay-per-click links, panels have held that a respondent cannot disclaim responsibility for content appearing on the website associated with its domain name (nor would such links ipso facto vest the respondent with rights or legitimate interests). Neither the fact that such links are generated by a third party such as a registrar or auction platform (or their affiliate), nor the fact that the respondent itself may not have directly profited, would by itself prevent a finding of bad faith.”). Moreover, considering that the above use of the website accessed through the disputed domain name is coupled with Respondent’s deceptive and illegal email phishing scheme, using the disputed domain for the creation of an email address designed to confuse third parties to giving up confidential financial and legal information for Respondent’s commercial gain, this Panel finds as prior UDRP panels have found, that this is evidence of registration and use in bad faith. See Brodies LLP v. WhoIs Guard Protected, WhoIsGuard, Inc. / John kelly,WIPO Case No. D2018-2715. In light of the long history of Complainant’s trademarks and Complainant’s significant renown and brand recognition in Europe, where Respondent is located, the Panel finds it is likely that Respondent knew of Complainant’s mark and by incorporating it in its entirety into the disputed domain name, Respondent sought to obtain a commercial benefit by attracting Internet users based on the confusion he created between the disputed domain name and the ALLEN & OVERY Mark. See Western Union Holdings, Inc. v. Manuel Rodriguez,WIPO Case No. D2006-0850. The Panel finds Complainant’s arguments and evidence persuasive and no arguments or evidence submitted by Respondent to the contrary. Considering all the circumstances, the Panel concludes that Respondent has registered and used the disputed domain name in bad faith and Complainant has satisfied 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 Scott R. Austin 1 Respondent appears to have used the name and contact details of a third party when registering the disputed domain name. In light of the potential identity theft, the Panel has redacted Respondent’s name from this Decision. However, the Panel has attached as Annex 1 to this Decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name of Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this decision shall not be published due to the exceptional circumstances of this case. See ASOS plc. v. Name Redacted,WIPO Case No. D2017-1520.
Sole Panelist
Date: February 5, 2020
Full & Egal Universal Law Academy