WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Allen & Overy LLP v. WhoisGuard Protected, WhoisGuard, Inc. / Libo Labo
Case No. D2020-0688
1. The Parties
The Complainant is Allen & Overy LLP, United Kingdom, internally represented.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Libo Labo, United States of America.
2. The Domain Name and Registrar
The disputed domain name <alleinovery.com> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 23, 2020. On March 23, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 23, 2020, 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 March 27, 2020 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 March 30, 2020.
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 April 1, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 21, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default April 27, 2020.
The Center appointed Knud Wallberg as the sole panelist in this matter on May 11, 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, 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 40 offices spanning 31 countries across Europe, America, Asia Pacific, Africa, and the Middle East. It currently comprises 5,400 people worldwide, out of which 2,300 are lawyers and 550 are partners.
The Complainant is the owner of numerous registrations for its ALLEN & OVERY trademark (the “ALLEN & OVERY Marks”) in jurisdictions around the world, including European Union Trademark Registration No. 001500669 ALLEN & OVERY registered on May 22, 2001 in classes 16, 36, and 42.
Since 1995, the Complainant has operated the domain name <allenovery.com> for the promotion of its law services.
The disputed domain name was registered on March 16, 2020. The disputed domain name does not resolve to an active website, but is used as an email address to conduct a phishing scheme.
5. Parties’ Contentions
The Complainant asserts that the disputed domain name is similar to the trademarks and service marks in which the Complainant has rights.
The distinctive and prominent elements common to all the ALLEN & OVERY Marks are the words “allen” and “overy”. The disputed domain name contains these words with the inclusion of the letter “i” in “allen” to form “allein”. The disputed domain name is thus a clear example of typosquatting.
The Complainant further asserts that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent is not commonly known by the disputed domain name and is neither a licensee of the Complainant nor otherwise authorized to use any of the Complainant’s marks.
The disputed domain name does not at present resolve to a website, but it has been used to send fraudulent phishing emails to one of the Complainant’s clients. 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 the Respondent registered the disputed domain name. The use of the disputed domain name in a fraudulent email scheme is deceptive and confusing and cannot constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Finally, the Complainant asserts that the disputed domain name has been registered and is being used in bad faith.
Given the renown and the decades of use by the Complainant of the ALLEN & OVERY Marks, it is clear that the Respondent had knowledge of the Complainant’s rights at the time of registration of the disputed domain name. The disputed domain name has been used to send a number of phishing emails to one of the Complainant’s clients. These phishing emails interrupt a genuine discussion regarding the bank deposit of millions of dollars pursuant to completion of a particular transaction, and seek to divert the funds to an account held, presumably, by or on behalf of the Respondent. The phishing emails purport to be from an employee of the Complainant and are sent in copy to email addresses imitating those of two other employees of the Complainant. This is deceptive, illegal, and in previous UDRP decisions has been found to be evidence of registration and use in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that a complainant must prove each of the following:
(i) that the 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 domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar (in the sense of the Policy) to the Complainant’s registered ALLEN & OVERY Marks. The disputed domain name incorporates the distinctive elements of these marks in their entirety with the addition of the letter “i” in “allen”. See section 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The generic Top-Level Domain “.com” is a standard registration requirement and as such is typically disregarded under the first element confusing similarity test. See section 1.11.1 of the WIPO Overview 3.0.
The Panel finds that the conditions in paragraph 4(a)(i) of the Policy are therefore fulfilled in relation to the disputed domain name.
B. Rights or Legitimate Interests
It is clear from the facts of the case that the Complainant has not licensed or otherwise permitted the Respondent to use its trademark.
Given the circumstances of this case, and in particular the way that the Respondent is using the disputed domain name (described above and discussed below) the Panel finds 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 not produced, and indeed there is no other evidence of the types of circumstances set out in paragraph 4(c) of the Policy that might give rise to rights or legitimate interests in the disputed domain name on the part of the Respondent in these proceedings.
Consequently, the Panel finds that the conditions in paragraph 4(a)(ii) of the Policy are also fulfilled.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the complainant to prove both registration and use of the disputed domain name in bad faith. Paragraph 4(b) of the Policy provides an example of circumstances, which shall be evidence of registration and use in bad faith:
(i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.
Accordingly, for the Complainant to succeed, the Panel must be satisfied that the disputed domain name has been registered and is being used in bad faith.
Given the circumstances of the case including the evidence on record of the longstanding of use of the Complainant’s trademark, and the distinctive nature of the ALLEN & OVERY Marks, it is inconceivable to the Panel in the current circumstances that the Respondent registered the disputed domain name without prior knowledge of the Complainant and the Complainant’s mark. Further, the Panel finds that the Respondent could not have been unaware of the fact that it chose a domain name which could attract Internet users in a manner that is likely to create confusion for such users.
The Panel therefore finds that the disputed domain name was registered in bad faith.
As to the use of the disputed domain name the Complainant has submitted documentation that clearly evidences that the Respondent is using the disputed domain name for what appears to be a phishing scheme to deceive customers of the Complainant by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s activities. This constitutes bad faith use under the Policy, see section 3.1.4 and 3.4 of the WIPO Overview 3.0.
Noting that the disputed domain name incorporates a registered and widely-known trademark, that no Response has been filed, that the disputed domain name is used for what appears to be a phishing scheme, that there appears to be no conceivable good faith registration and use that could be made by the Respondent of the disputed domain name, and considering all the facts and evidence, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.
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 <alleinovery.com> be transferred to the Complainant.
Date: May 25, 2020