WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sidley Austin LLP v. Contact Privacy Inc. Customer 1244494545 / Ruthie A Sheffield

Case No. D2019-1327

1. The Parties

The Complainant is Sidley Austin LLP, United States of America (“United States”), self-represented.

The Respondent is Contact Privacy Inc. Customer 1244494545, Canada / Ruthie A. Sheffield, United States.

2. The Domain Name and Registrar

The disputed domain name <sidleysaustin.com> (the “Disputed Domain Name”) is registered with Google LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 11, 2019. On June 11, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 12, 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 June 12, 2019, providing the registrant the 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 13, 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 June 17, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 7, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 8, 2019.

The Center appointed Lynda M. Braun as the sole panelist in this matter on July 16, 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 one of the world’s oldest law firms, providing legal services to clients in connection with complex transactional, regulatory, and litigation matters for over 150 years. Originally founded in Chicago, United States, the Complainant currently has approximately 2,000 lawyers with offices in over 20 cities worldwide, including in North America, Europe, and Asia Pacific. In 1967, the Complainant was known as Sidley & Austin; in 2001, it became Sidley Austin Brown & Wood, followed by Sidley Austin in 2006. The Complainant owns United States Registration No. 3,221,189 for SIDLEY AUSTIN, registered with the United States Patent and Trademark Office on March 27, 2007 (the “SIDLEY AUSTIN Mark”).

The Complainant registered the domain name <sidleyaustin.com> in 1999, which resolves to the Complainant’s official website at “www.sidleyaustin.com”. In addition to <sidleyaustin.com>, the Complainant owns domain names consisting of or incorporating its SIDLEY AUSTIN Mark, specifically <sidleyaustin.org> and <sidleyaustin.biz>, both of which resolve to the Complainant’s official website.

The Respondent registered the Disputed Domain Name on May 13, 2019. Following its registration, the Disputed Domain Name resolved to the Complainant’s official website. ¹ As of the writing of this decision, however, the Disputed Domain Name redirects to an error page with no content.

5. Parties’ Contentions

A. Complainant

The following are the Complainant’s contentions:

- the Disputed Domain Name is confusingly similar to the Complainant’s trademark;

- the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name;

- the Disputed Domain Name was registered and is being used in bad faith; and,

- the Complainant seeks the transfer of the Disputed Domain Name from the Respondent in accordance with paragraph 4(i) of the Policy.

B. Respondent

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

6. Discussion and Findings

In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)(i-iii)):

(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(iii) the Disputed Domain Name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark. The Panel concludes that the Disputed Domain Name is confusingly similar to the SIDLEY AUSTIN Mark.

It is uncontroverted that the Complainant has established rights in the SIDLEY AUSTIN Mark based on its years of use as well as its federally registered trademark for the SIDLEY AUSTIN Mark. The general rule is that “registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive”. See CWI, Inc. v. Domain Administrator c/o Dynadot, WIPO Case No. D2015-1734. The Respondent has not rebutted this presumption, and therefore the Panel finds that the Complainant has enforceable rights in the SIDLEY AUSTIN Mark.

The Disputed Domain Name <sidleysaustin.com> consists of a misspelling of the SIDLEY AUSTIN Mark, followed by the generic Top-Level Domain (“gTLD”) “.com”. This misspelling is an example of typosquatting, a situation in which a domain name includes a misspelled registered trademark. Here, the use of an additional “s” does not operate to prevent a finding of confusing similarity between the SIDLEY AUSTIN Mark and the Disputed Domain Name. See, e.g., ALH Group Pty Ltd v. Naveen Mathur, WIPO Case No. D2015-2004 (finding the disputed domain name confusingly similar to the trademark despite the addition of the letter “s”); see also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), at section 1.9, which states that “[a] domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element …”.

Furthermore, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182.

Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant.

B. Rights or Legitimate Interests

Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1.

In this case, the Panel finds that the Complainant has made out a prima facie case. In particular, the Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case and there is no evidence in the record that the Respondent is in any way associated with the Complainant. Furthermore, the Complainant has not authorized, licensed, or otherwise permitted the Respondent to use its trademark. The Respondent does not operate any business under the name “Sidley Austin” nor is the Respondent making a legitimate noncommercial or fair use of the Disputed Domain Name.

Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant.

C. Registered and Used in Bad Faith

The Panel finds that the Disputed Domain Name was registered and is being used in bad faith.

First, the registration of a domain name that is confusingly similar to a trademark by an entity that has no relationship to that mark may be sufficient evidence of opportunistic bad faith. See Ebay Inc. v. Wangming, WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163. Based on the circumstances here, the Respondent registered and has used the Disputed Domain Name in bad faith to target the Complainant’s SIDLEY AUSTIN Mark for commercial gain.

Second, the Respondent knew or should have known of the Complainant’s rights in its SIDLEY AUSTIN Mark when registering the Disputed Domain Name. The Respondent registered the Disputed Domain Name a decade after the Complainant first used and obtained its trademark registration for the SIDLEY AUSTIN Mark. It therefore strains credulity to believe that the Respondent had not known of the Complainant or its SIDLEY AUSTIN Mark when registering the Disputed Domain Name. See Myer Stores Limited v. Mr. David John Singh, WIPO Case No. D2001-0763 (a finding of bad faith may be made where the respondent “knew or should have known” of the registration and/or use of the trademark prior to registering the domain name).

At first, the Respondent registered the Disputed Domain Name to associate itself and its business with that of the Complainant, to profit from its reputation, and thereby to attract Internet users to its own business for commercial gain, all supporting a finding of the Respondent’s bad faith registration and use.

Finally, by later using the Disputed Domain Name passively and having no content on its web page, the Panel concludes that the Respondent has registered and is using the Disputed Domain Name in bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; “The lack of use [of a domain name] by itself does not indicate anything. Nevertheless, the lack of use of a domain name that is not backed up by any trademark and that coincides with a known, well-known or renowned trademark owned by someone else, does not indicate other than bad faith in the sense of paragraph 4(b) of the Policy”. Itaú Unibanco Holding S.A. v. Valdery Dos Santos Decorações ME, WIPO Case No. D2009-1335.

Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant.

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 <sidleysaustin.com> be transferred to the Complainant.

Lynda M. Braun
Sole Panelist
Date: July 23, 2019

¹ In an affidavit submitted with the Complaint, a partner in the Complainant’s law firm declared under penalty of perjury that the Disputed Domain Name resolved to the Complainant’s official website from May 20-24, 2019, but afterwards resolved to an error page with no content.