The Complainant is Allen & Overy LLP, United Kingdom, represented by Allen & Overy LLP, United Kingdom.
The Respondent is Olivia, United Kingdom. 2. The Domain Name and Registrar
The disputed domain name, The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 23, 2021. On March 23, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 24, 2021, 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 March 24, 2021 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 March 31, 2021. 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 March 31, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 20, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 21, 2021. The Center appointed Tony Willoughby as the sole panelist in this matter on April 27, 2021. 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. The invitation to the Complainant to file an amended Complaint stemmed from the fact that the Domain Name was registered in the name of a privacy service. In response to the Center’s registrar verification request, the Registrar disclosed the name and address of the entity in whose name the Domain Name is currently registered. The amended Complaint names the underlying registrant as the Respondent. On April 28, 2021, the Panel, noting from certain of the registrant contact information provided by the Registrar in response to the Center’s Registrar verification request that there might have been theft of an innocent third party’s identity, issued the Administrative Procedural Order No. 1. The Administrative Procedural Order notified the Complainant of the situation and invited the Complainant to investigate the matter. The Complainant’s response indicates that the third party was unaware of the apparent use of its name in connection with the Domain Name, and that the contact information of the registrant does not correspond to this third party. The Panel considers that the publication of the decision should not be prejudicial to the third party’s identity, and finds that there is no need to redact the name of the Respondent. 4. Factual Background The Complainant is a global law firm based in the United Kingdom. It is the registered proprietor of numerous trade mark registrations covering the name “Allen & Overy” including by way of example European Union Trade Mark Registration No. 001500669 ALLEN & OVERY (words) registered on May 22, 2001 for various goods and services in classes 16, 36 and 42. The Complainant’s primary online presence is via its website at “www.allenovery.com”. Its domain name, The Domain Name was registered on March 15, 2021, but is not connected to an active website. 5. Parties’ Contentions A. Complainant The Complainant contends that the Domain Name is confusingly similar to its ALLEN & OVERY registered trade mark; that the Respondent has no rights or legitimate interests in respect of the Domain Name; and that the Domain Name has been registered and is being used in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. General According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that: (i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith. B. Identical or Confusingly Similar The Domain Name comprises the Complainant’s ALLEN & OVERY registered trade mark (absent the ampersand sign and spaces between the words) followed by a hyphen and the word “legal”, and concluding with the “.com” generic Top-Level Domain identifier. Section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition explains the test for identity or confusing similarity under the first element of the Policy and includes the following passage: “While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.” The Complainant’s registered trade mark is readily recognizable in the Domain Name. The Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights. C. Rights or Legitimate Interests The Complainant asserts that the Complainant has no affiliation with the Respondent and has given the Respondent no authorization to use its name. The Complainant recites the circumstances set out in paragraph 4(c) of the Policy, any of which if found by the Panel to be present shall demonstrate rights or legitimate interests for the purposes of this element of the Policy, and contends that none of them is applicable. The Complainant refers to the longstanding reputation and goodwill that it has generated in the field of legal services over many decades under and by reference to its name, “Allen & Overy”, a name which for technical reasons it is not possible to replicate precisely in a domain name. The Complainant has overcome the problem by connecting its online website to its domain name, The Panel finds that the Complainant has made out a prima facie case under this element of the Policy; in other words a case calling for an answer from the Respondent. The Respondent has not answered the Complainant’s contentions. The Panel cannot conceive of any lawful use that could be made of the Domain Name by anyone other than the Complainant or a licensee of the Complainant. Thus, the Panel cannot conceive of any basis upon which the Respondent could be said to have rights or legitimate interests in respect of the Domain Name. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. D. Registered and Used in Bad Faith To succeed under this element of the Policy the Complainant must establish to the satisfaction of the Panel not only that the Domain Name has been registered in bad faith, but also that it is being used in bad faith. The Panel’s finding under C above is enough for a finding of registration in bad faith, but it seems that the Domain Name has not yet been put to any active use. That is of no assistance to the Respondent. The Panel is satisfied that the Respondent registered the Domain Name to impersonate the Complainant and therefore for a fraudulent purpose. That the Respondent may not currently be using the Domain Name does not mean that she cannot put her plan into practice at any time. In the view of the Panel the Domain Name, in the hands of the Respondent, constitutes an unjustifiable threat hanging over the head of the Complainant and thus a current and continuing abusive use of the Domain Name. The Panel finds that the Domain Name has been registered and is being used in bad faith within the meaning 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 Domain Name, Tony Willoughby
Sole Panelist
Date: April 30, 2021
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