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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Allen & Overy LLP v. Can Kulah

Case No. D2019-1147

1. The Parties

The Complainant is Allen & Overy LLP, United Kingdom, internally represented.

The Respondent is Can Kulah, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <allen-overy.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

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 22, 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. On May 27, 2019, the Center sent a request for clarification to the Complainant. The Complainant submitted a clarification by email to the Center on May 27, 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 18, 2019.

The Center appointed Luca Barbero as the sole panelist in this matter on June 25, 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.

4. Factual Background

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 5,500 people worldwide, out of which 2,800 are lawyers and 550 are partners.

The Complainant’s firm has been ranked in sixth position in the 2018 Acritas Global Elite Law Firm Brand Index and is also known for its informal (but widely acknowledged) status as a “Magic Circle” law firm.

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” used in this order.

With particular reference to this Complaint (but without limitation), the Complainant holds the following trademarks:

a. European Union trademark ALLEN & OVERY no. 001500669 filed on February 9, 2000, claiming classes 16, 36 and 42, registered May 22, 2001;

b. European Union trademark ALLEN & OVERY (EUROPE) no. 009593765 filed on December 13, 2010, claiming classes 16, 35, 36, 41 and 45, registered May 27, 2011;

c. European Union trademark ALLEN & OVERY THE WORLD’S MOST ADVANCED LAW FIRM no. 009334211 filed on August 25, 2010, claiming classes 16, 35, 36, 41 and 45, registered February 4, 2011;

d. European Union trademark ALLENOVERY no. 010411189 filed on November 11, 2011, claiming classes 16, 35, 36, 41 and 45, registered March 21, 2012;

The Complainant is also the owner of the domain name <allenovery.com>, which was first registered in 1995, and has pages on social media (Facebook, Twitter, and LinkedIn).

Apart from its main website, “www.allenovery.com”, the Complainant is also the proprietor of several other domain names, including: <allenandovery.com> and <allenandoveryllp.com>. All of the above domain names have been registered for defensive purposes and all re-direct to the Complainant’s main website.

The disputed domain name was registered May 29, 2018, 18 years after the registration of the first ALLEN & OVERY trademark by the Complainant, and is currently redirecting users to the Complainant’s official website, “www.allenovery.com”.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name <allen-overy.com> is identical to its trademark ALLEN & OVERY in which the Complainant has rights as it reproduces the trademark in its entirety, with the mere difference that the ampersand “&” is substituted by a hyphen.

The Complainant highlights that that the disputed domain name incorporates the distinctive parts (the surnames) of the law firm founders, in the same order in which they are registered and appear on the Trademark.

The Complainant points out that when the terms “Allen” and “Overy” are coupled in this precise order, they can be associated to no entity other that the Complainant. Furthermore, both the Complainant’s registered trademark rights and the Complainant’s use of the registered trademark rights pre-date the registration of the disputed domain name.

With reference to rights or legitimate interests in respect of the disputed domain name, the Complainant states that:

i) The disputed domain name redirects users to the Complainant’s official website. Such use cannot be considered bona fide and in accordance with paragraph 4(c)(iii) of the Policy (PayPal Inc v. Jon Shanks, WIPO Case No. D2014-0888), the Respondent is not making legitimate noncommercial or fair use of the disputed domain name;

ii) The Respondent is not commonly known by the disputed domain name, but must have been well aware of the Complainant’s rights at the time he registered the disputed domain name, as he deliberately took decision to take advantage of these rights;

iii) The Respondent was not authorized to use the Complainant’s marks and is not a licensee of the Complainant.

With reference to the circumstances evidencing bad faith, the Complainant indicates that its registered rights pre-date the registration date of the disputed domain name.

The Complainant also emphasizes that as shown by the evidence provided, the Complainant is clearly well renowned in the legal services field and given the nature of the disputed domain name itself, the Respondent cannot have registered the disputed domain name in good faith.

Furthermore, the Complainant underlines that the use of the disputed domain name to redirect traffic to its own website may cause Internet traffic to redirect to a website that is not that of, or associated with, the Complainant, as well as increasing customer confusion that the disputed domain name is somehow licensed or controlled by the Complainant.

The Complainant also informs the Panel that the Respondent appears to be seeking to profit from an unauthorized association with the mark ALLEN & OVERY, if not acquiring personal details from the Complainant’s clients and attracting hits while possibly obtaining click-through revenue from the diverted traffic.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

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.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has established rights in the trademark ALLEN & OVERY for purposes of standing to file its Complaint under the Policy based on the numerous trademark registrations for ALLEN & OVERY, including the ones cited in section 4 above.

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 the complainant’s trademark and the disputed domain name to assess whether the trademark is recognizable within the disputed domain name (section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

The Panel notes that the disputed domain name reproduces the trademark ALLEN & OVERY in its entirety with the mere difference that a hyphen between the words “ALLEN” and “OVERY” substitutes the ampersand “&”. This does not prevent a finding of confusing similarity.

Moreover, the generic Top-Level Domain “.com” can be disregarded under the first element confusing similarity test, being a standard registration requirement (section 1.11 of the WIPO Overview 3.0).

Therefore, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to a trademark in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

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 quite 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 shows 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.

The Panel finds that the Complainant has made a prima facie case and that the Respondent, by not having submitted a Response, has failed to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy for the following reasons.

According to the evidence on record, there is no relationship between the Complainant and the Respondent and the Complainant has not authorized the Respondent to register or use its trademark or the disputed domain name and there is no evidence that the Respondent might be commonly known by the disputed domain name.

As mentioned above, the Complainant claims that the disputed domain name has been pointed to the Complainant’s website, and it potentially can be used for the acquisition of personal details from the Complainant’s clients, or to attract hits while possibly obtaining click-through revenue from the diverted traffic.

The Panel finds that the Respondent’s use of the disputed domain name to redirect to the Complainant’s website does not amount to 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.

In addition, the Panel notes the nature of the disputed domain name which carries a high risk of implied affiliation with the Complainant (see section 2.5.1 of the WIPO Overview 3.0).

Therefore, the Panel finds that the Complainant has proven the requirement prescribed by paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

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 virtual identity of the disputed domain name with the Complainant’s trademark, the Respondent more likely than not registered the disputed domain name having the Complainant’s trademark in mind and to take advantage of the Complainant’s trademark.

As to the use of the disputed domain name, the Panel notes that the disputed domain name is being redirected to the Complainant’s website, which in these circumstances is evidence of bad faith (see section 3.1.4 of the WIPO Overview 3.0).

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.

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 <allen-overy.com> be transferred to the Complainant.

Luca Barbero
Sole Panelist
Date: July 9, 2019

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