The Complainant is Allen & Overy LLP, United Kingdom, represented by Allen & Overy LLP, United Kingdom.
The Respondent is Contact Privacy Inc. Customer 1244398202, Canada / Andrea Williams, United States of America.
The disputed domain name <aovery.com> (the “Disputed Domain Name”) is registered with Google LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 17, 2019. On May 17, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 20, 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 the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 21, 2019 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 May 24, 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 the Respondent of the Complaint, and the proceedings commenced on May 28, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 17, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 19, 2019.
The Center appointed Luca Barbero as the sole panelist in this matter on July 1, 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.
The Complainant is a Limited Liability Partnership, registered in the United Kingdom since January 1, 1930, and is authorized and regulated by the Solicitors Regulation Authority of England and Wales (SRA).
This global law firm, founded in the City of London by George Allen and Thomas Overy, includes 44 offices spanning 31 countries across Europe, America, Asia Pacific, Africa and the Middle East, comprising 5500 people worldwide, out of which 2800 are lawyers and 550 are partners.
The Complainant is the owner of approximately 180 registered trademarks across multiple jurisdictions globally. Most of these registered trademarks include the words “Allen” and “Overy” and “A&O” used in this order as well as rights acquired through the use in the United Kingdom, European Union and worldwide.
With particular reference to this Complaint, the Complainant holds the following trademarks:
- European Union trademark registration No. 001500669 for ALLEN & OVERY word mark, filed on February 9, 2000, and registered on May 22, 2001, in classes 16, 36 and 42;
- European Union trademark registration No. 001499433 A&O word mark filed on February 9, 2000, and registered on May 2, 2003 in classes 16, 36 and 42;
- European Union trademark registration No. 009593765 ALLEN & OVERY (EUROPE) word mark filed on December 13, 2010, and registered on May 27, 2011 in classes 16, 35, 36, 41 and 45;
- European Union trademark registration No. 009334211 ALLEN & OVERY The world’s most advanced Law firm figurative mark, filed on August 25, 2010, and registered on February 4, 2011, in classes 16, 35, 36, 41 and 45;
- European Union trademark registration No. 010411189 ALLENOVERY word mark filed on November 11, 2011, and registered on March 21, 2012, in classes 16, 35, 36, 41 and 45;
In 89 years it has traded consistently under the brand “Allen & Overy” as well as being informally known as “A&O” and thus has registered trademark rights in both ALLEN&OVERY and the abbreviation A&O.
The Complainant is also the owner of the domain name <allenovery.com>, which was first registered in 1995, and has pages on social media including Facebook, Twitter and LinkedIn.
Apart from its main website “www.allenovery.com”, the Complainant is also the registrant of several other domain names, including: <allenandovery.com>, <allenoveryllp.com> and <allenandoveryllp.com>.
All the above domain names have been registered for defensive purposes and all re-direct to the Complainant’s main website.
The Disputed Domain Name <aovery.com> was registered April 26, 2019, 19 years after the registration of the first ALLEN & OVERY trademark by the Complainant and is currently being used to solicit payment information from persons seeking the Complainant’s services, by sending phishing by “spoof” emails.
The Complainant highlights that the law firm “Allen & Overy” is one of the leading law firms in the world, operating in 31 countries with 44 offices, and with 5,500 people of which 2,800 are lawyers and 550 partners and that this network, makes Allen & Overy one of the largest and most connected law firms in the world with unrivalled global reach and local depth.
With this in mind and with respect to paragraph 4(c) of the Policy, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. In fact the Disputed Domain Name is currently being used to send emails seeking to mislead recipients as to the identity of the sender for the Respondent’s commercial gain.
The Complainant contends that the Respondent is not commonly known by the Disputed Domain Name and that he or she must have been aware of the Complainant and its rights at the moment of registering the Disputed Domain Name, therefore acting in bad faith.
The Complainant asserts that in registering the Disputed Domain Name, the Respondent deliberately used a combination of the letters “A” and “O” (minus the ampersand) and the word “Overy”, which are the distinctive and prominent elements of its trademark rights.
Furthermore, the Complainant states that the Respondent is not a licensee of the Complainant and is in no way authorized to use the Complainant’s trademarks.
Further evidence that the Respondent registered and was using the Disputed Domain Name in bad faith, is reflected in the fact that the Complainant not only registered the trademark nine years before the registration of the Disputed Domain Name, but was also very well renowned in its legal category, as proven by the evidence put forward by the Complainant.
The Complainant asserts that the Respondent knowingly appeared to be seeking profit from an unauthorized association with the Complainant, attracting hits and possibly obtaining revenue from the diverted traffic, and acquiring personal details of the Complainant’s clients.
In addition, the fact that the Respondent does not operate the website under the Disputed Domain Name, can be deemed as an act of bad-faith as it signifies that the Respondent may be deliberately passively withholding the Disputed Domain Name that incorporates a well-known trademark, without obvious legitimate purpose.
The Complainant points out that the Disputed Domain Name is being used by the Respondent to send phishing by “spoof” emails for fraudulent purposes. In doing so, the Respondent contacts the Complainant’s clients or other third parties, claiming to be a senior employee of the Complainant (Name Redacted) and requesting urgent payments of fictitious invoices in his name.
In light of the above, the Complainant requests that the Disputed Domain Name be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the Disputed Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) that the Disputed Domain Name has been registered and is being used in bad faith
It is well accepted that the first element functions primarily as a standing requirement, and that the threshold test for confusing similarity involves a reasoned but relatively straightforward comparison between a complainant’s trademark and the disputed domain names to assess whether the trademark is recognizable within the disputed domain name as per section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Comparing the Disputed Domain Name with the Complainant’s trademarks, the Panel notes that most of the Complainant’s mark is reproduced in the Disputed Domain Name and they both encompass the combination of lettering “A” and “Overy”. Given the Complainant’s rights also with regards to the trademark A&O, confusion could also be caused by the juxtaposition of the letters “a” and “o” in the Disputed Domain Name, also in light of the fact that the omission of the ampersand from A&O is not relevant as it is symbol that cannot be used in domain names.
Furthermore, in comparing the Complainant’s marks to Disputed Domain Name it should be taken into account the well-established principle that the generic Top Level Domain “.com” may be excluded from consideration as being merely functional component of a domain name
In view of the above, the Panel finds that the Complainant has proven that the Disputed Domain Name is confusingly similar to the registered trademarks in which it has established rights as prescribed by paragraph 4(a)(i) of the Policy.
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a 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.”
It is well-established that the burden of proof lies on the complainant. However, satisfying the burden of proving a lack of the respondent’s rights or legitimate interests in respect of the domain name according to paragraph 4(a)(ii) of the Policy is potentially onerous, since proving a negative can be difficult considering such information is often primarily within the knowledge or control of the respondent.
Accordingly, in line with the UDRP precedents, it is sufficient that the Complainant show a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production on the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (see Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003‑0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004‑0110; Banco Itau S.A. v. Laercio Teixeira, WIPO Case No. D2007-0912; Accor v. Eren Atesmen, WIPO Case No. D2009-0701).
In the case at hand, by not submitting a Response, the Respondent has failed to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the Disputed Domain Name.
Moreover, it has been repeatedly stated that when a respondent does not avail himself of its right to respond to a complaint, it can be assumed in appropriate circumstances that the respondent has no rights or legitimate interests in the disputed domain name (Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim, WIPO Case No. D2003-0269).
The Panel notes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademarks. In addition, there is no evidence that the Respondent might be commonly known by the Disputed Domain Name.
In view of the above-described use of the Disputed Domain Name, the Panel finds that the Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademark.
Paragraph 4(a)(iii) of the Policy requires that the Complainant prove that the Disputed Domain Name was registered and is being used by the Respondent in bad faith.
The Panel finds that, in light of the registration and use of the Complainant’s trademark ALLEN & OVERY in connection with the Complainant’s legal services and of the confusing similarity of the Disputed Domain Name with the Complainant’s trademark, and also considering the subsequent use of the Disputed Domain Name, the Respondent certainly registered the Disputed Domain Name having the Complainant’s trademark in mind.
As mentioned above, the Disputed Domain Name has been used by the Respondent to send phishing by “spoof” emails for fraudulent purposes. The Complainant has provided evidence to the Panel of such use of the Disputed Domain Name in connection with the sending of fraudulent emails purportedly being sent from a senior employee of the Complainant and requesting urgent payments of fictitious invoices in his name which certainly amounts to a bad faith use.
As stated in section 3.4 of the WIPO Overview 3.0, “Panels have held that the use of a domain name for purposes other than to host a website may constitute bad faith. Such purposes include sending email, phishing, identity theft, or malware distribution. (…) Many such cases involve the respondent’s use of the domain name to send deceptive emails, e.g., to obtain sensitive or confidential personal information from prospective job applicants, or to solicit payment of fraudulent invoices by the complainant’s actual or prospective customers”.
In view of the circumstances of the case and since the Respondent has failed to file a Response and submit counter-allegations to rebut the Complainant’s contentions, the Panel finds that the Respondent’s registration and use of the Disputed Domain Name amounts to bad faith.
Therefore, the Panel finds that the Complainant has also proven the requirement prescribed by paragraph 4(a)(iii) of the Policy.
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 <aovery.com> be transferred to the Complainant.
Date: July 17, 2019
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