The Complainant is Allen & Overy LLP, United Kingdom, represented internally.
The Respondent is Contact Privacy Inc. Customer 0156718042, Canada / Adim Oxiano, AllenOvery Inc., United States of America. 2. The Domain Name and Registrar
The disputed domain name 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 amended 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 Haig Oghigian as the sole panelist in this matter on May 13, 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 administrative Panel finds the following as uncontested facts: - The Complainant is a “Magic Circle” law firm, founded in the City of London in 1930, employing 5,400 people in more than 40 offices in 31 countries across the European Union, United States of America, Asia Pacific, Africa, and the Middle East. In over 100 countries where the Complainant has no presence, it maintains strong ties with domestic law firms. Over the course of its 90-year history, the Complainant was involved in “some of the world’s leading businesses on transactions that have changed their industries”. As a result, the Complainant is known worldwide. - The Complainant is the proprietor of 180 registered trademarks containing words “Allen” and “Overy” in multiple jurisdictions, for example: European Union trademark no. 001500669 ALLEN & OVERY, registered on May 22, 2001, in classes 16, 36 and 42; European Union trademark no. 010411189 ALLENOVERY, registered on March 21, 2012, in classes 16, 35, 36, 41 and 45; European Union trademark 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 no. 009593765 ALLEN & OVERY (EUROPE), registered on May 27, 2011, in classes 16, 35, 36, 41 and 45. - Apart from registered trademark rights, the Complainant has also acquired rights through use in the United Kingdom, the European Union, and around the globe. - The Complainant owns many domain names including words “Allen” and “Overy” alone or combined with other elements, such as: - - - - The Complainant uses these trademarks in association with “legal and/or lawyer services” through its official website: “www.allenovery.com”, first registered in 1995. Numerous UDRP panels have previously ordered that domain names similar to the disputed domain name to be transferred to the Complainant (Allen & Overy LLP v. WhoisGuard Protected, WhoisGuard, Inc. / Name Redacted,WIPO Case No. D2019-2512; Allen & Overy LLP v. Can Kulah,WIPO Case No. D2019-1147; Allen & Overy LLP v. Heins Xendel,WIPO Case No. D2019-2514; Allen & Overy LLP v. zhenjing xin (甄晶鑫),WIPO Case No. 2019-2873; Allen & Overy LLP v. Name Redacted,WIPO Case No. 2019-1148; Allen & Overy LLP v. Contact Privacy Inc. Customer 1244398202 / Andrea Williams,WIPO Case No. 2019-1149; Allen & Overy LLP v. Perfect Privacy, LLC / Anny Guanet,WIPO Case No. 2019-2513; and, Allen & Overy LLP v. Name Redacted,WIPO Case No. D2019-2911). - The Complainant’s registered rights pre-date the registration of the disputed domain name and enjoy significant recognition in the legal services industry. - The disputed domain name The Complainant claims the disputed domain name is confusingly similar to its own ALLEN & OVERY trademarks and ownership rights, as it contains identical letters, the only distinctions being the use of “llp” and the generic Top-Level Domain (“ gTLD”) “.org”, and the absence of the ampersand “&”. The Complainant claims the letters “llp”, which are a descriptive abbreviation used to identify a business as a limited liability partnership, increase the likelihood of confusion with its registered rights. The Complainant also alleges that the use of “.org” is irrelevant for the purposes of determining whether a domain name is identical or similar to a trademark. The absence of the ampersand in the disputed domain name is insignificant. Furthermore, the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant argues that the use of the disputed domain name by the Respondent is in bad faith for the sole purpose of “profiting from any financial or commercial information that could be gained from [a] recipient [of Respondent’s fraudulent email]. The Complainant, therefore, requests the disputed domain name be transferred to the Complainant accordingly. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, the transfer of the disputed domain name may be ordered if the Complainant demonstrates three elements: (a) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (b) the Respondent has no rights or legitimate interests in respect of the domain name; and (c) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The disputed domain name incorporates the Complainant’s trademark in its entirety. It differs from the Complainant’s trademark only insofar as it incorporates the abbreviation “llp” and the gTLD “.org”, while excluding the ampersand “&”. Pursuant to section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the gTLD “.org” is a standard registration requirement and, as such, is not considered for the purposes of the “confusing similarity test”. Finally, with respect to the ampersand, previous UDRP panels have held that the symbol “is not used in the creation of domain names, and that the functional equivalent of the ampersand is the word ‘and’ or the deletion of the sign” (Hunton & Williams v. American Distribution Systems, Inc. et al., WIPO Case No. D2000-0501; Chadbourne & Parke LLC v. American Distribution Systems, Inc. dba DefaultData.com and Brian Wick, WIPO Case No. D2003-0553). Considering the foregoing decisions, the Panel agrees with the Complainant’s statement that the “proper comparison is between ‘allenoveryllp’ and ‘AllenOvery’”. Bearing that in mind, and applying the principles set forth in section 1.8 of WIPO Overview 3.0, this Panel determines that the disputed domain name is confusingly similar to the Complainant’s ALLEN & OVERY trademark. B. Rights or Legitimate Interests Although the Respondent has used a privacy service to mask its identity, the Complainant affirms it has never authorized nor licensed the Respondent to use the Complainant’s trademark. Despite the Respondent’s use of a privacy service, the Complainant argues that no evidence exists to show that (i) the Respondent’s use of the disputed domain name relates to a “bona fide offering of goods or services”; (ii) the Respondent is commonly known by the disputed domain name; or (iii) the Respondent “is making 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”. Rather, the Respondent only used the disputed domain name to send a phishing email, posing as partner of the Complainant. According to previous UDRP panels, sending phishing emails neither gives rise to rights or legitimate interests (Syngenta Participations AG v. Guillaume Texier, Gobain ltd., WIPO Case No. 2017-1147), nor constitutes a “bona fide offering of goods or services or a legitimate noncommercial or fair use” (Minerva S.A. v. El Yanko, WIPO Case No. D2018-0767). Noting the nature of the disputed domain name, the uniqueness of Complainant’s name, and the fact that the disputed domain name does not have any active website, it negatively reflects on the Respondent’s conduct. The Respondent has not responded to provide any evidence of legitimate use. Accordingly, based on the available record and Policy, paragraph 4(a)(ii), the Panel finds that the Complainant has made out a prima facie case, which has not been rebutted by the Respondent, and that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith The Panel finds that the Complainant has established itself as a reputable legal services provider. Thus, the idea that the Respondent was unaware of the Complainant’s activities and the existence of the trademarks with “Allen” and “Overy” in them, and just happened to register a confusingly similar disputed domain name, is outlandish. Yet another indicator of the Respondent’s bad faith is the email it sent impersonating a partner of the Complainant, inquiring about an unpaid invoice, and urging the recipient to contact him as soon as possible. A previous UDRP panel held that registering a domain name, all while knowing about registered rights of another, coupled with the absence of rights or legitimate interests, amounted to bad faith (Royd Withy King LLP v. Help Tobuy, WIPO Case No. D2019-0624). Finally, creating an email address designed to confuse third parties has likewise been held to indicate bad faith (Brodies LLP v. WhoIs Guard Protected, WhoIsGuard, Inc., / John Kelly, WIPO Case No. D2018-2715). The Panel’s finding of bad faith use, within the meaning of paragraphs 4(a)(iii) and 4(b)(iv) of the Policy, on the part of the Respondent is justified in light of the following: (i) the nature of the disputed domain name; (ii) the distinctiveness and prominence of the ALLEN & OVERY trademarks; (iii) the lack of any apparent or plausible good faith use of the disputed domain name; (iv) the Respondent’s use of the disputed domain name with a fraudulent purpose; (v) the Respondent’s use of a privacy service, in the circumstances of this case; and, (vi) the Respondent’s failure to challenge the Complainant’s contentions. 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 Haig Oghigian
Sole Panelist
Date: May 27, 2020
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