ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Allen & Overy LLP v. Privacy service provided by Withheld for Privacy ehf / Aline Bailey Case No. D2022-2105 1. The Parties The Complainant is Allen & Overy LLP, United Kingdom, internally represented. The Respondent is Privacy service provided by Withheld for Privacy ehf, Iceland / Aline Bailey, United Kingdom. 2. The Domain Name and Registrar The disputed domain name
is registered with NameCheap, Inc. (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 10, 2022. On June 10, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 10, 2022, 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 June 14, 2022, 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 June 17, 2022. 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 June 20, 2022. In accordance with the Rules, paragraph 5, the due date for Response was July 10, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 11, 2022. page 2 The Center appointed George R. F. Souter as the sole panelist in this matter on July 15, 2022. 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 the City of London in 1930. It currently employs over 2,400 lawyers, and operates 40 offices globally. It is the proprietor of a number of registrations of its ALLEN & OVERY trademark, including the European Union ("EU") Trade Mark registration number 001500669, filed on February 9, 2000, and registered on May 22, 2001. It is also the proprietor of EU Trade Mark registration number 010411189, filed on November 11, 2011, and registered on March 21, 2012, in respect of the trademark ALLENOVERY. The disputed domain name was registered on May 19, 2022, and is currently not resolving to an active website. 5. Parties' Contentions A. Complainant The Complainant alleges that the disputed domain name is confusingly similar to its ALLEN & OVERY trademark. The Complainant alleges that the Respondent lacks rights or legitimate interests in the disputed domain name, in particular that, to the best of the Complainant's knowledge, the Respondent is not generally known by the disputed domain name, and that the Complainant has not granted permission to the Respondent to register or use the disputed domain name. The Complainant alleges that the disputed domain name was registered in bad faith, and is being used in bad faith. B. Respondent The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings The Panel finds that the Complainant has sufficient trademark rights to its ALLEN & OVERY trademark for the purposes of these proceedings. It is well established in prior decisions under the UDRP, with which the Panel agrees, that a generic Top-Level Domain ("gTLD") may generally be disregarded when comparing a trademark with a disputed domain name. The Panel considers the gTLD ".com" to be irrelevant in the circumstances of the present case, and finds that it may be disregarded here. The Complainant's ALLEN & OVERY trademark is clearly recognizable in the disputed domain name, rendering the disputed domain name confusingly similar to the Complainant's trademark, and the mere addition of a letter "s" and, in the circumstances of the present case, the word "global" in the disputed domain name do not detract from this finding. Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in connection with the disputed domain name. page 3 B. Rights or Legitimate Interests It is the consensus view of UDRP panels, with which the Panel agrees, that a prima facie case advanced by the complainant will generally be sufficient for the complainant to be deemed to have satisfied the requirement of paragraph 4(a)(ii) of the Policy, provided the respondent does not come forward with evidence demonstrating rights or legitimate interests in the domain name and the complainant has presented a sufficient prima facie case to succeed under paragraph 4(a)(ii) of the Policy. The Respondent did not advance any claim of rights or legitimate interests in the disputed domain name to rebut this prima facie case. Furthermore, the nature of the disputed domain name, incorporating the Complainant's well-known ALLEN & OVERY trademark, carries a risk of implied affiliation. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 2.5.1. Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy, in connection with the disputed domain name. C. Registered and Used in Bad Faith The Panel is of the view that the finding that a respondent has no rights or legitimate interests in a disputed domain name can lead, in appropriate circumstances, to a finding of registration of a disputed domain name in bad faith. The Panel notes that the disputed domain name was registered long after the Complainant first registered and began using its ALLEN & OVERY trademark. The circumstance of the present case, in which the Panel regards it as self-evident that the Complainant's ALLEN & OVERY trademark was deliberately appropriated in the disputed domain name are such that the Panel concludes that a finding of registration in bad faith is justified, in connection with the disputed domain name and so finds. Although the disputed domain name is not currently being actively used in connection with a website, it is well-established in prior decisions under the Policy, since the decision in Telstra Corporation v Nuclear Marshmallows, WIPO Case No. D2000-0003, that the non-use of a disputed domain name does not preclude a finding of use in bad faith under the doctrine of passive holding. In the circumstances of the present case, where any commencement of use of the disputed domain name would, automatically, entail implied affiliation to the Complainant, the Panel considers that a finding of use in bad faith is clearly justified, and so finds. Accordingly, the Panel finds that the Complainant has satisfied the 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, , be transferred to the Complainant. /George R. F. Souter/ George R. F. Souter Sole Panelist Date: July 29, 2022
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