WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Allen & Overy LLP v. zhenjing xin (甄晶鑫)
Case No. D2019-2873
1. The Parties
The Complainant is Allen & Overy LLP, United Kingdom, internally represented.
The Respondent is zhenjing xin (甄晶鑫), China.
2. The Domain Name and Registrar
The disputed domain name <allennovery.com> (the “Domain Name”) is registered with Xin Net Technology Corp. (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on November 22, 2019. On November 22, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 27, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 28, 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 in English on December 2, 2019.
On November 28, 2019, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On November 29, 2019, the Complainant requested that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
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, in English and Chinese, of the Complaint, and the proceedings commenced on December 9, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 29, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 2, 2020.
The Center appointed Karen Fong as the sole panelist in this matter on January 16, 2020. 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 global law firm which was founded in the City of London on January 1, 1930 by George Allen and Thomas Overy. Currently its 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. In over 100 countries where Allen & Overy does not have a presence, it has strong ties with relationship law firms. The Complainant has worked with some of the world’s leading businesses on industry changing transactions. It has been ranked sixth in the 2018 Acritas Global Elite Law Firm Brand Index and is widely acknowledged and known by its informal status as a “Magic Circle” law firm. As a result of this the Complainant has significant trading goodwill and reputation in Europe and globally in the trading style “Allen & Overy”.
The Complainant is the proprietor of approximately 180 registered trade marks across multiple jurisdictions globally. Most of these registered trade marks include the words “Allen” and “Overy” used in this order. These include the following trade marks:
a. European Union trade mark No. 001500669 ALLEN & OVERY filed on February 9, 2000 and registered on May 22, 2001 in classes 16, 36 and 42; and
b. European Union trade mark No. 010411189 ALLENOVERY filed on November 11, 2011 and registered on March 21, 2012 in classes 16, 35, 36, 41, and 45;
(together, the “Trade Mark”).
The Complainant also owns a number of domain names which comprise the Trade Mark. These include: <allenovery.com>, <allenandovery.com>, <allenoveryllp.com>, and <allenandoveryllp.com>. The Complainant’s primary online presence is via its website “www.allenovery.com”, which was first registered in 1995. The Complainant’s website had more than 700,000 unique visitors in the six months to August 28, 2019.
The Domain Name was registered on October 8, 2019 by the Respondent who appears to be based in China. The Domain Name resolves to a website which contains graphic pornographic imagery and numerous advertising banners (the “Website”).
5. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to the Trade Mark, that the Respondent has no rights or legitimate interests with respect to the Domain Name, and that the Domain Name was registered and is being used in bad faith. The Complainant requests transfer of the Domain Name to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Language of the Proceeding
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the proceeding shall be the language of the registration agreement, subject to the authority of the panel to determine otherwise, having regard to the circumstances of the administrative proceedings. According to the information received from the Registrar, the language of the Registration Agreement for the Domain Name is Chinese.
The Complainant submits that the language of the proceeding should be English for the following reasons:
- The Education First English Proficiency Index 2019 which ranks countries and regions by English skills places Beijing in the ‘moderate proficiency’ band. Speakers with this level of English proficiency can participate in meetings in their area of expertise, understand song lyrics and write professional emails on familiar subjects. As a Chinese Internet user with an awareness of English language websites (given the nature of the Domain Name) based in Beijing, the Respondent will have at least this moderate proficiency with the language and will not be prejudiced by the use of English in this proceeding.
- In 11 UDRP cases in which the Registrar was registrar (therefore with Chinese as the language of the registration agreement) and the disputed domain names linked to pornographic websites, all the complaints were submitted in English and the panels have determined English to be the language of the proceeding as in all those cases, the respondents did not comment on the language of the proceeding. Owing to what is, in the Complainant’s opinion, obvious bad faith in the present case, and the similarity with the cases referred to above, the Complainant believes it likely that the Respondent will not express an opinion on language, or indeed engage with these proceedings in any way, once it is aware of the existence of the complaint against it. It is disproportionate to ask the Complainant to translate everything into Chinese if the Respondent is not going to respond anyway.
In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time and costs.
The Panel accepts the Complainant’s submissions regarding the language of the proceeding. The Respondent has not challenged the Complainant’s request and in fact has failed to file a Response. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner. In this case, the Complainant may be unduly disadvantaged by having to conduct the proceeding in Chinese. The Panel notes that all of the communications from the Center to the Parties were transmitted in both Chinese and English. The Respondent has been provided with the opportunity to participate in the proceeding in Chinese but has chosen not to. In all the circumstances, the Panel determines that English be the language of the proceeding.
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has rights to the Trade Mark.
The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the trade mark and the domain name to determine whether the domain name is confusingly similar to the trade mark. The test involves a side-by-side comparison of the domain name and the textual components of the relevant trade mark to assess whether the mark is recognizable within the domain name.
In this case the Domain Name contains the Complainant’s distinctive Trade Mark in its entirety but for the presence of the letter “n” between “allen” and “overy” and the absence of the ampersand (&). The addition of this extra letter could easily pass unnoticed. Further, as ampersands are not used in domain names, they are either replaced by “and” or deleted when trade marks with an ampersands are registered as domain names. For the purposes of assessing identity or confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) which in this case is “.com”. It is viewed as a standard registration requirement (section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
The Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s 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 has been commonly known by the domain name, even if it has acquired no trade mark 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 trade mark or service mark at issue.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in section 2.1 of the WIPO Overview 3.0 that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with relevant evidence of rights or legitimate interests, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.
The Complainant contends it has not authorised, licensed or otherwise permitted the Respondent to use the Trade Mark in the Domain Name or for any other purpose. The Respondent is not commonly known by the Domain Name. The hosting of pornographic content using a domain name which is confusingly similar to a third party trade mark does not amount to a bona fide offering of goods or services. Further, since there are advertising banners on the Website which likely provides pay-per-click revenue for the Respondent, the Respondent cannot be considered to making noncommercial or fair use of the Domain Name.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not in its response provided any explanation of its rights or legitimate interests in relation to the Domain Name and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
To succeed under the Policy, the Complainant must show that the Domain Name has been registered and used in bad faith.
The Panel is satisfied that the Respondent must have been aware of the Complainant’s trade mark when he/she registered the Domain Name given the renown of the Trade Mark. It is implausible that he/she was unaware of the Complainant when he/she registered the Domain Name.
“Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark.”
The fact that there is a clear absence of rights or legitimate interests coupled with no credible explanation for the Respondent’s choice of the Domain Name are also significant factors to consider (as stated in section 3.2.1 of the WIPO Overview 3.0). The Panel finds that registration is in bad faith.
The Domain Name is also used in bad faith. The Website hosts pornographic content and most likely generates income for the Respondent through advertising banners and pay-per-click links. It is highly likely that Internet users when typing the Domain Name into their browser or finding it through a search engine would have been looking for a site operated by the Complainant rather than the Respondent. The Domain Name is likely to confuse Internet users trying to find the Complainant’s official website. Such confusion will inevitably result due to the incorporation of the Trade Mark as the most prominent element of the Domain Name. Such confusion could also lead to potential tarnishment of the Trade Mark with this unauthorized association with pornography.
The Respondent employs the fame of the Trade Mark to mislead users into visiting the Website instead of the Complainant’s. From the above, the Panel concludes that the Respondent intentionally attempted to attract for commercial gain, by misleading Internet users into believing that the Respondent’s Website is and the services provided on it are those of or authorised or endorsed by the Complainant. The Panel therefore also concludes that the Domain Name was registered and is being used in bad faith under paragraph 4(b)(iv) 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 Domain Name <allennovery.com> be transferred to the Complainant.
Date: February 4, 2020