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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sidley Austin LLP v. Redacted for privacy, Whois Privacy Protection Foundation / Peter Wilson

Case No. D2021-0534

1. The Parties

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

The Respondent is Redacted for privacy, Whois Privacy Protection Foundation, Netherlands / Peter Wilson, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <sidleyaustin-llp.com> (the “Domain Name”) is registered with Hosting Concepts B.V. d/b/a Openprovider (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 20, 2021. On February 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 23, 2021, 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 March 11, 2021 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 16, 2021.

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 March 19, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 8, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 26, 2021.

The Center appointed Jeremy Speres as the sole panelist in this matter on May 6, 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 uncontested facts are as follows. The Complainant, Sidley Austin LLP, is one of the world’s oldest and most widely-known law firms. It has provided legal services in connection with complex transactional, regulatory, and litigation matters for over 150 years, and is consistently ranked as one of the best law firms in the world by leading publications. It maintains offices in North America, Europe, and Asia Pacific.

The Complainant provided evidence of the registration of its SIDLEY AUSTIN trade mark in the United States under registration No. 3,221,189 in 2007. Importantly for the present matter, the Panel has also independently established, using public trade mark search databases, that the Complainant owns registrations for the following mark, all registered in 2006 or 2007, in the United Kingdom (the Respondent’s home territory), Australia, the European Union, Singapore and Switzerland:

logo

UDRP panels may undertake limited factual research into matters of public record. See the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 4.8. Importantly, the mark above features the wording SIDLEY AUSTIN LLP of which the Domain Name is wholly comprised, apart from the minor addition of a hyphen.

The Complainant owns numerous domain names consisting of or incorporating the SIDLEY AUSTIN mark, which in turn resolve to the Complainant’s website at “www.sidley.com”. Two such domain names are <sidleyaustin.com> and <sidleyaustinllp.com>, both of which were registered long before the Domain Name.

The Domain Name was registered on February 2, 2021 by the Respondent, and, as at the filing of the Complaint and the drafting of this decision, did not resolve to an active website.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name was registered and has been used in bad faith, and stands to be transferred to it under the Policy, in terms of the doctrine of passive holding. The Complainant contends that the doctrine should apply given that the Complainant’s mark is well-known and highly distinctive, the Respondent uses a privacy shield, the Domain Name is blatantly similar to the Complainant’s mark, and the Respondent resides near to the Complainant’s largest European office in London.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant’s evidence establishes that the Complainant is well-known under the mark SIDLEY AUSTIN LLP mark, over which the Complainant owns unregistered, common law rights. The Domain Name is identical to that mark. It is well established that minor omissions of punctuation do not sufficiently alter a trade mark to negate a finding of identity (Ruby’s Diner, Inc. v. Joseph W. Popow, WIPO Case No. D2001-0868). This includes the omission of a space and the addition of a hyphen, bearing in mind that a space cannot be represented in a domain name (InfoSpace.com, Inc. v. Tenenbaum Ofer, WIPO Case No. D2000-0075; Virgin Enterprises Limited, VLE Limited v. Randy Couture, WIPO Case No. D2019-0016).

The Complainant has satisfied the standing requirement under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent (WIPO Overview 3.0 at section 2.1). Here, there is a prima facie case which the Respondent has failed to rebut.

The Complainant has adduced evidence showing that its mark is well-known in the Respondent’s territory as well as numerous others. The Domain Name is identical to the Complainant’s well-known mark and the Complainant has certified that the Domain Name is unauthorised by it. There is no evidence that any of the circumstances set out in paragraph 4(c) of the Policy pertain. The Respondent’s name, per the WhoIs data revealed by the Registrar, bears no resemblance to the Complainant’s mark for the purposes of paragraph 4(c)(ii) of the Policy. Without the benefit of a Response, the Panel is not aware from the case file of any trade marks in the name of the Respondent, or of any other circumstances that could give rise to rights or legitimate interests for the Respondent, and therefore assumes there are none or else the Respondent would have put those forward. Furthermore, the Panel has independently checked for any relevant trade marks in the name of the Respondent using the WIPO Global Brand Database and found none. The Panel has independently searched the Internet Archive, which contains no historical evidence of use of the Domain Name.

The Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

UDRP panels have consistently found that the mere registration of a domain name that is identical to a well-known trade mark by an unaffiliated entity can by itself create a presumption of bad faith (WIPO Overview 3.0 at section 3.1.4). That presumption is not rebutted here.

The Domain Name is identical to the Complainant’s well-known trade mark, which was in use and
well-known long in advance of registration of the Domain Name. The Complainant’s rights in its SIDLEY AUSTIN LLP and SIDLEY AUSTIN marks have been recognised and vindicated in two prior UDRP decisions involving domain names that were highly similar to the Domain Name, specifically Sidley Austin LLP v. Domain Administrator, See PrivacyGuardian.org / Bien, Bien Tran, WIPO Case No. D2019-2708 concerning the domain name <sidleyaustinllp.top>; and Sidley Austin LLP v. Contact Privacy Inc. Customer 1244494545 / Ruthie A Sheffield, WIPO Case No. D2019-1327 concerning the domain name <sidleysaustin.com>.

The Domain Name has not been actively used. However, the doctrine of passive holding is clearly applicable in this case. Per the WIPO Overview 3.0 at section 3.3, the totality of circumstances should be considered in applying the doctrine, however, the following factors have been considered relevant: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity, and (iv) the implausibility of any good faith use to which the domain name may be put. All of these factors weigh in the Complainant’s favour in the present case. Noting the composition of the Domain Name, and the file in this proceeding, it is not possible to conceive of any plausible actual or contemplated active use of the Domain Name by the Respondent that would not be illegitimate for the purposes of the Policy (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

The Respondent resides close to the Complainant’s largest European office. This is a further indicator that the Respondent knew of the mark (Boezio 31 S.r.l. v. Siga S.r.l., WIPO Case No. D2001-0267).

A mere Google search for the Domain Name minus the TLD reveals results exclusively relating to the Complainant. The Complainant’s trade mark is well-known and highly specific to the Complainant. As such, the Respondent can be taken to have actually known, or at least should have known, of the existence of the Complainant’s well-known trade mark (WIPO Overview 3.0 at section 3.2.2).

The Respondent has attempted to conceal its identity by using a privacy service. Given the totality of the facts in this case, this is a further indicator of bad faith (WIPO Overview 3.0 at section 3.6).

Under the Rules, paragraph 14(b), a panel may draw inferences from the respondent’s default where a particular conclusion is prima facie obvious, where an explanation is called for but is not forthcoming, or where no other plausible conclusion is apparent WIPO Overview 3.0 at section 4.3).

The Complainant has satisfied paragraph 4(a)(iii) 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 Domain Name <sidleyaustin-llp.com> be transferred to the Complainant.

Jeremy Speres
Sole Panelist
Date: May 19, 2021

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