WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Allen & Overy LLP v. Perfect Privacy, LLC / Anny Guanet

Case No. D2019-2513

1. The Parties

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

The Respondent is Perfect Privacy, LLC, United States of America / Anny Guanet, France.

2. The Domain Name and Registrar

The disputed domain name <mergersandacquisitions-allenovery.com> (the “Disputed Domain Name”) is registered with Network Solutions, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 14, 2019. On October 14, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 16, 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 October 23, 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 October 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 October 28, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 17, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 20, 2019.

The Center appointed Mariya Koval as the sole panelist in this matter on November 27, 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, being founded in 1930, is an international law firm, which is one of the ten largest law firms in the world measured by revenue and is regularly listed as one of the most prestigious and elite law firms in the world. The Complainant has its informal status as a “Magic Circle” law firm, having a significant trading goodwill and reputation in Europe. Currently the Complainant’s presence includes 44 offices spanning 31 countries across Europe, America, Asia Pacific, Africa and the Middle East. It currently comprises 5500 people worldwide, out of which 2800 are lawyers and 550 are partners. This network makes the Complainant one of the largest and most connected law firms in the world, with an unrivalled global reach and local depth.

The Complainant is the owner of numerous registrations for its ALLEN & OVERY Trademark (the “ALLEN & OVERY Trademark” or the “Trademark”) in jurisdictions around the world, among which there are the following ones:

- European Union Trademark Registration No. 001500669 ALLEN & OVERY registered on May 22, 2001 in classes 16, 36, and 42;

- European Union Trademark Registration No. 010411189 ALLENOVERY registered on March 21, 2012 in classes 16, 35, 36, 41, and 45;

- European Union Trademark Registration No. 009334211, ALLEN & OVERY THE WORLD’S MOST ADVANCED LAW FIRM, registered on February 4, 2011, in classes 16, 35, 36, 41, and 45;

- European Union Trademark Registration No. 009593765 “ALLEN & OVERY (EUROPE)” filed on December 13, 2010 in classes 16, 35, 36, 41, and 45.

Since 1995, the Complainant operates the domain name <allenovery.com> for the promotion of its law services. The Complainant is also the proprietor of several other domain names, including <allenandovery.com>, <allenoveryllp.com> and <allenandoveryllp.com> (which have been registered for defensive purposes and all re-direct to the Complainant’s main website). The Complainant has also pages on social media (Facebook and Twitter) and maintains an active profile on LinkedIn.

The Disputed Domain Name <mergersandacquisitions-allenovery.com> was registered on August 1, 2019 and resolves to an inactive website.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that throughout its 89-year history, it has traded consistently under the brand “Allen & Overy” and that over the past year it has worked with some of the world’s leading businesses on transactions that have changed their industries.

The Complainant further asserts that the Disputed Domain Name is confusingly similar to the Trademark in which the Complainant has rights in view of the following:

- the Disputed Domain Name has two components: the phrase “mergers and acquisitions” and the words “Allen” and “Overy”;

- the distinctive and prominent elements of the Disputed Domain Name are the words “Allen” and “Overy”, which are the same distinctive and prominent elements of the Complainant’s Trademark;

- the only difference between the Disputed Domain Name and the Complainant’s Trademark is the omission of the ampersand (“&”);

- the Disputed Domain Name incorporates the distinctive parts, which are the surnames of the Complainant’s law firm founders;

- the Disputed Domain Name also contains the phrase “mergers and acquisitions”, which is a generic term descriptive of very common kinds of commercial activities on which many law firms, including the Complainant’s.

The Complainant also claims that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Respondent is not commonly known by the Disputed Domain Name, is not a licensee of the Complainant, and is not otherwise authorized to use the Complainant’s Trademark or any of the Complainant’s other marks. The Complainant notes that there is currently no website hosted at the Disputed Domain Name, but it is used for sending emails seeking to mislead recipients as to the identity of the sender for, the Complainant believes, the Respondent’s commercial gain. The nature of these emails is such that the Respondent must have been well aware of the Complainant’s business and rights at the time he or she registered the Disputed Domain Name.

The Complainant further contends that its Trademark not only pre-dates the registration date of the Disputed Domain Name, but also enjoys considerable renown in connection with the provision of legal services and legal advice, as shown by the evidence put forward by the Complainant. Given this renown and the nature of the Disputed Domain Name itself, it is clear that the Respondent had knowledge of the Complainant’s business and rights at the time of registration of the Disputed Domain Name and yet deliberately chose to take advantage of those rights. The registration of the Disputed Domain Name in awareness of the Complainant and its Trademark, and in the absence of its own rights or legitimate interests, amounts to registration in bad faith by the Respondent.

The Complainant also asserts that by exploiting the renown of the Complainant’s brand and the Trademark, the Respondent appears to be seeking to profit from an unauthorized association with the Complainant. In this respect, the Complainant contends that the registration of the Disputed Domain Name was done in bad faith by analogy with the rationale behind paragraph 4(b)(iv) of the Policy. This activity manifests in the Disputed Domain Name being used to assist in the attempted perpetration of fraud on clients of the Complainant and/or other third parties by using the Disputed Domain Name to send emails purporting to be from a partner of the Complainant, and seeking to engage the recipient in the discussion of a fictitious transaction.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy sets forth the following three elements which have to be met for the Panel by the Complainant:

(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 has been registered and is being used in bad faith.

The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present so as to have the Disputed Domain Name transferred to it, according to paragraph 4(a) of the Policy.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has registered rights in the ALLEN & OVERY Trademark by virtue of various trademark registrations in multiple jurisdictions globally.

The Panel considers it is obvious that the Disputed Domain Name is confusingly similar to the Complainant's Trademark in view of it contains the Complainant’s Trademark in its entirety with addition of the phrase “merger and acquisitions” and a hyphen combining with the generic Top-Level Domain (“gTLD”) “.com”. The Complainant’s Trademark is clearly recognizable in the Disputed Domain Name.

According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8 where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. Thus addition of the words “merger and acquisitions” to the Complainant’s Trademark in the Disputed Domain Name does not influent on finding of confusing similarity between the Disputed Domain Name and the Complainant’s Trademark. The use of hyphen in the Disputed Domain Name is usually irrelevant in a finding of confusing similarity. Also, the gTLD is typically not taken into account for the purposes of determining whether a mark and a domain name are identical or confusing similar under the Policy.

The Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s Trademark for the purposes of the Policy and therefore paragraph 4(a)(i) of the Policy has been established.

B. Rights or Legitimate Interests

According to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:

(i) before any notice to the Respondent of the dispute, his 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) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if he has acquired no trademark or service mark rights; or

(iii) the Respondent is 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.

The Panel is of opinion that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent has neither any connection with the Complainant, nor has been authorized or licensed by the Complainant to use and register its Trademark or to register of any domain name incorporating the Complainant’s Trademark. The Respondent, being the natural person, obviously is not known by the name and ALLEN & OVERY Trademark.

On the date of this decision there is no website hosted at the Disputed Domain Name, however, as evidences (Annex 19) presented by the Complainant show, it is used for sending emails seeking to mislead recipients as to the identity of the sender for the Respondent’s commercial gain. The nature of these emails is such that the Respondent must have been well aware of the Complainant’s business and rights at the time he or she registered the Disputed Domain Name. The Panel considers it is clear that the Respondent is not using the Disputed Domain Name to host a website, but is instead using it for the creation of e-mail addresses designed to confuse the Complainant’s clients and/or third parties (only the owner of a domain name can create e-mail addresses featuring the same domain).

Considering these circumstances, the Panel concludes that the Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services. The Panel also concludes that the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name.

Under circumstances, there is a prima facie case that the Respondent does not have rights or legitimate interests in the Disputed Domain Name.

In view of the above, the Panel finds that the Respondent does not have rights or legitimate interests in the Disputed Domain Name and accordingly the Complainant has satisfied the second element of the Policy.

C. Registered and Used in Bad Faith

Firstly, the Panel finds that the Complainant’s Trademark was registered and used for the first time more than 80 years ago and it has acquired significant notoriety. The Disputed Domain Name was registered on August 1, 2019. Previous UDRP panels have found that “where the reputation of a complainant in a given mark is significant and the mark has strong similarities to the disputed domain name, the likelihood of confusion is such that bad faith may be inferred” (see, e.g., Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909).

The Panel accepts the Complainant’s contention that the Respondent does not operate a website under the Disputed Domain Name. However, in this case, the Panel accepts the Complainant’s evidence that the Disputed Domain Name was used previously to issue deceptive emails as a fraudulent request for a payment of a “capital deposit” from the recipient’s company. Such Respondent’s behavior cannot be considered as good faith.

In the absence of any explanation from the Respondent it can be concluded that the Respondent registered the Disputed Domain Name for fraudulent purposes by creating a likelihood of confusion with the Complainant’s Trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website that constitutes the registration and use in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.

Moreover, the Respondent did not file any response to the Complainant’s contentions and the Center’s Written Notice, and this is further evidence that the Respondent did not have any good intentions when registering the Disputed Domain Name.

Accordingly, the Panel finds that the Complainant has satisfied the third element required under 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 <mergersandacquisitions-allenovery.com> be transferred to the Complainant.

Mariya Koval
Sole Panelist
Date: December 10, 2019