WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sidley Austin LLP v. Contact Privacy Inc. Customer 0155862446 / Anil Mannick

Case No. D2019-2520

1. The Parties

Complainant is Sidley Austin LLP, United States of America, represented by Rollin A. Ransom, United States of America.

Respondent is Contact Privacy Inc. Customer 0155862446 / Anil Mannick, United Kingdom.1

2. The Domain Name and Registrar

The disputed domain name <sidleylawyers.com> is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 14, 2019. On October 15, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 15, 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 Complainant on October 16, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on October 18, 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 Respondent of the Complaint, and the proceedings commenced on October 24, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 13, 2019. Respondent submitted a Response on November 12, 2019.

The Center appointed Stephanie G. Hartung as the sole panelist in this matter on November 21, 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

Complainant is a company organized under the laws of the United States that belongs to one of the world’s oldest law firms, providing legal services for more than 150 years.

Complainant has submitted evidence that it is the owner of the following registered trademarks with protection for the United States relating to Complainant’s company name known as “Sidley” or “Sidley Austin”, respectively:

- Word mark SIDLEY, United States Patent and Trademark Office (USPTO), registration number: 3,328,229, registration date: November 6, 2007, status: active;

- Word mark SIDLEY AUSTIN, USPTO, registration number: 3,221,189, registration date: March 27, 2007, status: active.

Moreover, Complainant has evidenced to own the domain name <sidley.com> which was registered on April 26, 1995, and which resolves to Complainant’s official website at “www.sidley.com”, promoting Complainant’s legal services worldwide.

Respondent, according to the disclosed WhoIs information for the disputed domain name, is a resident of the United Kingdom and registered the disputed domain name on October 2, 2019. By the time of the rendering of this decision, the disputed domain name does not redirect to any valid content on the Internet; Complainant, however, has demonstrated that at some point before the filing of the Complaint, the disputed domain name resolved to Complainant’s website “www.sidley.com” itself and not to any use by Respondent.

5. Parties’ Contentions

A. Complainant

Complainant submits that the disputed domain name is virtually identical with Complainant’s SIDLEY trademark since Respondent merely added the word “lawyers” to the end of the disputed domain name. Moreover, Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed domain name since (1) there is no evidence that Respondent uses or used the disputed domain name or any name or trademark corresponding to it in connection with a bona fide offering of goods or services (or in any other context), (2) until recently, the disputed domain name resolved to Complainant’s own website, and not to any use by Respondent, and more recently, the disputed domain name has not resolved to any website at all, and (3) Respondent is a web designer and works for Disability Consulting Services as a senior consultant. Finally, Complainant argues that Respondent registered and is using the disputed domain name in bad faith since (1) there is no explanation apparent as to why Respondent shall be entitled to register a domain name confusingly similar to Complainant’s widely known SIDLEY trademark with only a generic term added, and (2) the disputed domain name temporarily resolved to Complainant’s website at “www.sidley.com” though Respondent has no affiliation with Complainant, but apparently in an attempt to confer false legitimacy or authenticity to the disputed domain name, so as to deceive persons as to the true identity of Respondent.

Complainant requests that the disputed domain name be transferred to Complainant.

B. Respondent

Respondent denies to have had knowledge of Complainant’s trade or existing website at the time of registering the disputed domain name. Respondent claims that Complainant’s trademark is SIDLEY AUSTIN and not SIDLEY, so that Complainant’s making use of the domain name <sidley.com> is in itself confusing and that Complainant is attempting to monopolize the domain name registration process at the detriment of another law firm whose principal partner bears the family name Sidley. Moreover, Respondent claims rights or legitimate interests in respect of the disputed domain name since Respondent advises friends and work colleagues on matters related to doing business on the Internet, and “maintains” domain names for these people until such time as they decide to have websites professionally designed thereunder; also, Respondent asserts that he has the right to register the disputed domain name for a third party whose surname is Sidley and is nearing completion of his training to be a lawyer and will be running his own law firm. Finally, Respondent also denies that the disputed domain name was registered in bad faith since (1) the disputed domain name is and never was for sale but has simply been secured for future use, and (2) after receiving the Complaint, Respondent offered the disputed domain name for sale to Complainant in order to close this matter as quickly as possible.

Respondent disagrees to Complainant’s request that the disputed domain name be transferred to Complainant and asks the Panel to issue a finding of Reverse Domain Name Hijacking.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:

(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) That 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 concludes that the disputed domain name <sidleylawyers.com> is confusingly similar to the SIDLEY trademark in which Complainant has rights.

The disputed domain name incorporates Complainant’s SIDLEY trademark in its entirety. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that the disputed domain name is at least confusingly similar to a registered trademark (see e.g., PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS), WIPO Case No. D2003-0696). Moreover, it has been held in many UDRP decisions and has become a consensus view among UDRP panels (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8), that the addition of another term (whether e.g., descriptive or meaningless) to a trademark in a domain name would not prevent a finding of confusing similarity under the first element of the UDRP. Accordingly, the addition of the word “lawyers” (which even refers to Complainant’s core business) does not dispel the confusing similarity arising from the incorporation of Complainant’s SIDLEY trademark in the disputed domain name.

Therefore, Complainant has established the first element under the Policy set forth by paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Panel is further convinced on the basis of both Parties’ contentions that Respondent has not made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent has made a legitimate noncommercial or fair use thereof without intent for commercial gain.

Respondent obviously has not been authorized to use Complainant’s SIDLEY trademark, either as a domain name or in any other way. Also, there is no reason to believe that Respondent’s name or indeed its client’s name as such somehow corresponds with the disputed domain name and Respondent does not appear to have any trademark rights associated with the term “Sidley” on his own. Moreover, it is undisputed between the Parties that Respondent at least temporarily directed the disputed domain name to Complainant’s own website at “www.sidley.com” without any authorization granted by Complainant or explanation given by Respondent as to why such doing was e.g., reasonable or justified. Such making use of the disputed domain name obviously neither qualifies as a bona fide offering of goods or services by Respondent nor as legitimate noncommercial or fair within the meaning of paragraph 4(c) of the Policy.

Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in respect of the disputed domain name. Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview 3.0, section 2.1).

In this context, the Panel first notes that directing the disputed domain name to Complainant’s own website at “www.sidley.com” is a clear indication that Respondent was aware of Complainant and its offering of legal services when registering the disputed domain name; at least, Respondent has not offered any explanation as to why he only became aware thereof after the registration had taken place to only then decide to direct the disputed domain name the described way. Also, Respondent has failed to offer any kind of evidence whatsoever that he is indeed acting in the interest of a third party named Sidley who wishes to run a legal business under the disputed domain name soon; in fact, UDRP panels agree that claimed examples of use or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services cannot be merely self-serving, but should be inherently credible and supported by relevant pre-complaint evidence (see WIPO Overview 3.0, section 2.2). Respondent’s claiming to have “maintained” the disputed domain name for a third party named Sidley, and that it never was for sale but has simply been secured for future use, is equally unsupported by any evidence and, thus, unconvincing and not suitable in order to find for any rights or legitimate interests in respect of the disputed domain name on the part of Respondent; UDRP panels have recognized that merely registering a domain name, even one that is comprised of a dictionary word or phrase – and likewise a family name – does not by itself automatically confer rights or legitimate interests on the respondent (see WIPO Overview 3.0, section 2.10).

Against this background, the Panel holds that Respondent has not met the burden of producing relevant evidence to demonstrate rights or legitimate interests in respect of the disputed domain name.

Therefore, Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy.

C. Registered and Used in Bad Faith

The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith. The notion of “bad faith” under the UDRP is a broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark (see WIPO Overview 3.0, section 3.1).

The circumstances to this case – in particular the undisputed fact that the disputed domain name at least temporarily directed to Complainant’s own website at “www.sidley.com” – leave little, if any doubt that Respondent was aware of Complainant’s rights in the SIDLEY trademark and its legal business when registering the disputed domain name and that the latter clearly is directed to the SIDLEY trademark. Also, against the background of this specific use of the disputed domain name, Respondent has failed to provide any evidence or at least conclusive explanation as to why he needed to rely on the name “Sidley” as reflected in the disputed domain name if not to somehow profit from or to take unjustified and, thus, unfair advantage of Complainant’s SIDLEY trademark. Such finding also takes into account that the disputed domain name is a combination of Complainant’s SIDLEY trademark and the term “lawyers” which directly points at Complainant’s core business; moreover, it recognizes that Respondent may not have actively offered the disputed domain name to Complainant for sale, however, actively drew Complainant’s attention to the disputed domain name by redirecting it to Complainant’s website at “www.sidley.com”, thereby inducing Complainant to file its Complaint upon which Respondent – according to his own contentions – offered the disputed domain name for sale. These circumstances taken altogether may not be qualified other than that Respondent has registered and is making use of the disputed domain name in bad faith within the larger meaning of paragraph 4(b) of the Policy.

Therefore, the Panel finds that Complainant has also satisfied the third element under the Policy as set forth by paragraph 4(a)(iii).

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 <sidleylawyers.com> be transferred to Complainant.

Respondent’s request to find for a Reverse Domain Name Hijacking is rejected, as the Complaint obviously was not brought in bad faith.

Stephanie G. Hartung
Sole Panelist
Date: December 5, 2019


1 It is evident from the case file that Contact Privacy Inc. Customer 0155862446 is a privacy protection service and that Anil Mannick, United Kingdom, is the underlying registrant of the disputed domain name. Therefore, unless otherwise indicated, the term “Respondent” is used by the Panel in the case at hand to refer to the latter underlying registrant only.