WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sidley Austin LLP v. 石磊 (Shi Lei)

Case No. D2020-3004

1. The Parties

The Complainant is Sidley Austin LLP, United States of America (“United States” or “U.S.”), internally represented.

The Respondent is 石磊 (Shi Lei), China.

2. The Domain Name and Registrar

The disputed domain name <conectsidley.com> is registered with DNSPod, Inc. (the “Registrar”).

3. Procedural History

The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 12, 2020. On November 12, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 13, 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 November 29, 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 in English on December 2, 2020.

On November 29, 2020, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On December 2, 2020, the Complainant submitted a request 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, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 29, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 30, 2020.

The Center appointed Douglas Clark as the sole panelist in this matter on January 28, 2021. 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 well-known international law firm. It has provided legal services for complex transactional, regulatory and litigation matters to clients for over 150 years and has consistently been ranked as one of the top law firms in the world by leading legal publications and is also one of the largest

U.S.-based law firms. It has approximately 2,000 lawyers in offices in over 20 cities worldwide, including North America, Europe and Asia Pacific.

The Complainant was first known as Sidley & Austin starting from 1967, then as Sidley Austin Brown & Wood from 2001. Since the year 2006, the Complainant has been known as Sidley Austin LLP and commonly known as Sidley. The names “Sidley” and “Sidley Austin” have been used by the Complainant, which is affiliated with Sidley Austin Holding LLP, owner of the SIDLEY trade mark. The SIDLEY trade mark is registered with the United States Patent and Trademark Office on November 6, 2007 as Registration No. 3,328,229.

The Complainant first registered the domain name <sidley.com> on April 25, 1995 and operates it as its official website. In addition to the domain name, the Complainant owns numerous domain names that include or incorporate the SIDLEY trade mark, which resolve to the Complainant’s official website at “www.sidley.com”.

The disputed domain name <conectsidley.com> was registered on October 28, 2020. At the date of this decision, the disputed domain name resolves to a parked webpage containing a list of links resolving to unrelated third-party websites.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

(a) The disputed domain name is confusingly similar to its trade mark. The addition of the terms “conect”, and “.com” in the disputed domain name does not eliminate the overall notion that the designation is connected to the trade mark and the likelihood of confusion that the disputed domain name and the trade mark are associated;

(b) The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not affiliated with the Complainant in any way and the Complainant has never granted any authorization or license to use the Complainant’s trade mark. The Respondent is not commonly known by the disputed domain name, and has not made a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. The disputed domain name links to apparent third-party websites; and

(c) The disputed domain name was registered and is being used in bad faith. The mere fact that the Respondent has registered a domain name incorporating the trade mark of a well-known company gives rise to an inference of bad faith. The Respondent also registered the disputed domain name that incorporates the SIDLEY trade mark in its entirety. The Respondent is using the disputed domain name to attract Internet users for commercial gain, creating a likelihood of confusion with the Complainant’s trade mark. The Respondent has engaged in a pattern of conduct in registering domain name incorporating the trade marks of others. The Complainant provided details of 4 cases involving 11 domain names where panels had found the Respondent had registered and used domain names in bad faith.

The Complainant requests the transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

6.1 Preliminary Issues – Language of the Proceeding

According to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative 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 proceeding.

In this case, the language of the Registration Agreement for the disputed domain name is in Chinese. Based on the given evidence, there is no agreement between the Complainant and the Respondent regarding the language of the proceeding. The Complainant has filed its Complaint in English and has requested that English be the language of the proceeding under the following grounds:

a) the disputed domain name is in the English language and wholly incorporates the SIDLEY trade mark;

b) the disputed domain name resolves to third-party destination websites with content in the English language;

c) the Respondent has repeatedly participated in domain name proceedings conducted in English prior to this proceeding;

d) in a prior proceeding involving the Respondent, Asurion, LLC v. Shi Lei, WIPO Case No. D2018-2335, the Respondent has been found to understand the English language as the “Respondent [Shi Lei] had corresponded with the Complainant in English in its response to the Complainant’s cease and desist letters and in its attempt to sell the disputed domain names to the Complainant.”

In accordance with paragraph 11(a) of the Rules, the Panel hereby determines that the language of the proceeding shall be in English after considering the following circumstances:

- the Center has notified the Respondent of the proceeding in both English and Chinese.

- the Respondent has not commented on the language of the proceeding nor has responded to the Complainant in any way.

- the Complainant has provided evidence that the Respondent understands the English language.

Further, this Panel decided in Zappos.com, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191, that a respondent’s failure to respond to a preliminary determination by the Center as to the language of the proceeding “should, in general, be a strong factor to allow the Panel to decide to proceed in favour of the language of the Complaint”.

6.2 Substantive Issues

The Complainant must satisfy all three elements of paragraph 4(a) of the Policy in order to succeed in its action:

(i) the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights;

(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.

A. Identical or Confusingly Similar

The Panel finds that the disputed domain name <conectsidley.com> is confusingly similar to the SIDLEY trade mark in which the Complainant has rights. The disputed domain name incorporates the SIDLEY trade mark in full with the term “conect”. “Conect” is a misspelling of the word “connect”, a descriptive word, and does not detract from a finding of confusing similarity. The generic Top-Level Domain (“gTLD”) “.com” is generally disregarded when considering the first element.

The Panel notes that the Complainant does not rely on any registered trade marks for SIDLEY in China where the Respondent is located. The ownership of a trade mark is generally considered to be a threshold standing issue. The location of the trade mark, its date of registration (or first use) and the goods and/or services for which it is registered, are all irrelevant for the purpose of finding rights in a trade mark under the first element of the UDRP. These factors may however bear on a panel’s further substantive determination under the second and third elements. (See section 1.1.2 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”)).

The Complainant has therefore satisfied the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The Respondent has not asserted any rights or legitimate interests in relation to the disputed domain name.

Section 2.1 of the WIPO Overview 3.0 provides:

“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”

The Complainant has asserted that the Respondent has no business with and is in no way affiliated with the Complainant. The Respondent is not authorized nor licensed to use the SIDLEY trade mark or to apply for registration of the disputed domain name. In addition, the Respondent has not responded to any of the Complainant’s contentions. The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests, which has not been rebutted by the Respondent. Accordingly, the Respondent has no rights or legitimate interests in regard to the disputed domain name.

The Complainant has therefore satisfied the second element under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Sidley is an English language surname. The mere registration of a dictionary word or surname as a domain name or part of a domain name is not, in itself, objectionable. There needs to be some evidence to suggest the Respondent has targeted a trademark owner when registering a domain name.

The disputed domain name resolves to a website with links to legal service providers and, apparently, generates click through revenue. This shows a direct link between legal services for which the Complainant is known and the use of the disputed domain name. It appears to the Panel that the Respondent has registered the disputed domain name to attract Internet users looking for the Complainant to the website for commercial gain in accordance with paragraph 4(b)(iv) of the Policy. The Respondent has also been found in other cases to have registered other domain names in bad faith. On this basis, the Panel finds that the Respondent has engaged in a pattern of conduct of abusive domain name registration as set out in paragraph 4(b)(ii) of the Policy.

Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith.

The Complainant has therefore satisfied the third element under paragraph 4(a) of 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 <conectsidley.com> be transferred to the Complainant.

Douglas Clark
Sole Panelist
Date: February 16, 2021