WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Allen & Overy LLP v. Tunechi Chidi
Case No. D2021-1327
1. The Parties
Complainant is Allen & Overy LLP, United Kingdom, represented by Allen & Overy, United Kingdom.
Respondent is Tunechi Chidi, Nigeria.
2. The Domain Name and Registrar
The disputed domain name <allenouery.com> (the “Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 29, 2021. On April 29, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 30, 2021, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the Domain Name.
The Center verified that the 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 May 3, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 23, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 28, 2021.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on June 3, 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
Complainant is a global law firm founded in London on January 1, 1930, by George Allen and Thomas Overy. Currently its presence includes more than 40 offices spanning countries across Europe, America, Asia Pacific, Africa, and the Middle East, with 5,550 people worldwide, out of which 2,400 are lawyers and 550 are partners. In over 100 countries where Complainant does not have a presence, it has strong ties with relationship law firms. This network makes Complainant one of the largest and most connected law firms in the world. Throughout its 91-year history, Complainant has traded consistently under the brand “Allen & Overy”.
Complainant is the proprietor of approximately 180 registered trademarks across multiple jurisdictions globally. Most of these registered trademarks include the words “allen” and “overy” used in this order. Complainant registered trademarks include the following:
- ALLEN & OVERY, European Union (“EU”) trademark No. 001500669, registered on May 22, 2001, in classes 16, 36 and 42;
- ALLENOVERY, EU trademark No. 010411189, registered on March 21, 2012, in classes 16, 35, 36, 41 and 45;
- ALLEN & OVERY: THE WORLD’S MOST ADVANCED LAW FIRM, EU trademark No. 009334211 registered on February 4, 2011, in classes 16, 35, 36, 41 and 45;
- ALLEN & OVERY (EUROPE), EU trademark No. 009593765, registered on March 27, 2011 in classes 16, 35, 36, 41 and 45;
- ALLEN & OVERY, Nigerian trademark No. RTM 8420, registered on August 28, 2014, in class 45; and
- ALLEN & OVERY, Indian trademark No. 1528038, registered on February 5, 2007, in classes 16, 36 and 42.
These marks are registered in respect of the provision of legal and/or lawyer services in classes 42 or 45, as appropriate. Complainant has provided these services consistently throughout the respective periods of registration and continues to do so.
Complainant’s primary online presence is via its website “www.allenovery.com”, which was registered in 1995. The website contains information about Complainant’s practices, lawyers, locations, and further expertise. In particular, it includes numerous publications providing insight into business and market trends across the firm’s many practice sectors. Complainant also has pages on social media (Facebook, Twitter) and maintains an active profile on LinkedIn. Apart from its main website, Complainant is also the proprietor of several other domain names, including <allenandovery.com>, <allenoveryllp.com>, and <allenandoveryllp.com>, which have been registered for defensive purposes and all re-direct to Complainant’s main website.
Complainant trademark rights have been confirmed in many previous decisions under the Policy, including the following, in all of which the panel ordered that the domain name in question be transferred to Complainant:
Allen & Overy LLP v. WhoisGuard Protected, WhoisGuard, Inc. / Mary Clark, Outpost Inc., WIPO Case No. D2020-1029; Allen & Overy LLP v. WhoisGuard Protected, WhoisGuard, Inc. / Libo Labo., WIPO Case No. D2020-0688; Allen & Overy LLP v. Contact Privacy Inc. Customer 0156718042 / Adim Oxiano, AllenOvery Inc., WIPO Case No. D2020-0791; Allen & Overy LLP v. Contact Privacy Inc. Customer 1246369198 / Sri Hamid, WIPO Case No. D2020-0369; Allen & Overy LLP v. Stephanie Lott, WIPO Case No. D2020-0300; and Allen & Overy LLP v. WhoisGuard Protected, WhoisGuard, Inc. / Crystal Scheurecker, Jadestone energy pty., WIPO Case No. D2020-0299.
Both Complainant’s registered trademark rights and Complainant’s use of them pre-date the registration of the Domain Name.
5. Parties’ Contentions
(i) Identical of confusingly similar
Complainant contends that the Domain Name is confusingly similar to trademarks in which it has rights. Complainant has submitted evidence of its numerous registered trademarks. In addition, as exemplified by its seventh position in the 2021 Acritas Global Elite Law Firm Brand Index, and its informal (but widely acknowledged) status as a “Magic Circle” law firm, Complainant states it has significant trading goodwill and reputation in Europe and globally in the trading style “Allen & Overy”.
Complainant states the relevant part of the Domain Name is “allenouery”, while the distinctive and prominent elements of Complainant’s trademarks are the words “allen” and “overy”. The only other feature of Complainant’s marks is the ampersand (“&”), but Complainant observes that in Hunton & Williams v. American Distribution Systems, Inc. et al., WIPO Case No. D2000-0501, the panel found that the ampersand symbol is not used in the creation of domain names, and that the functional equivalent of the ampersand is the word “and” or, as here, the deletion of the sign. Consequently, for determining whether the Domain Name is confusingly similar to Complainant’s marks, the proper comparison is between “allenouery” and “allenovery”. The only difference between the two is the substitution of the letter “u” for the letter “v”.
Complainant contends that a domain name that consists of an obvious or intentional misspelling of a trademark is considered confusingly similar to that mark, and an example of this is the substitution of similar characters, as in this case. In Complainant’s opinion, the misspelling involving the substitution of similar characters in the distinctive and prominent elements of Complainant’s mark is intentional. When the words “allen” and “overy” are coupled in the order they appear (barring this intentional misspelling) in the Domain Name, they can have no other meaning for the public than a reference to Complainant and its marks. The Domain Name is therefore confusingly similar to trademarks in which Complainant has rights.
(ii) Rights or legitimate interests
Complainant contends that Respondent has no rights or legitimate interests in respect of the Domain Name. Respondent is not commonly known by the Domain Name. Complainant has in place internal processes for the registration and management of domain names, and has no record of authorizing the registration of the Domain Name. Complainant is therefore certain that Respondent is neither a licensee of Complainant nor otherwise authorized to use any of Complainant’s marks.
Complainant explains the website to which the Domain Name resolves is a parking page containing only sponsored links to third-party sites. These links carry descriptions such as “Art School”, “Watch Freemovies Online” and “Photography School”, and appear to be automatically generated. Complainant assumes that Respondent receives “pay-per-click” income in consideration for hosting the advertisements. Complainant contends that the combination of words used in the Domain Name, being virtually identical to the distinctive and prominent elements of Complainant’s marks, was deliberately chosen to create an impression of an association with Complainant.
In conclusion, Complainant asserts these circumstances, namely (i) the lack of authorization, (ii) the lack of legitimate use by means of a website, and (iii) the deliberate creation of an impression of association with Complainant, indicate that Respondent has no rights or legitimate interests in the Domain Name.
(iii) Registered and used in bad faith
Complainant asserts that the Domain Name was registered and is being used in bad faith. Respondent does not seem to be making good-faith use of the Domain Name in any way. Complainant’s trademarks not only pre-date the registration date of the Domain Name, but also enjoy considerable renown in connection with the provision of legal services and legal advice, as shown by the evidence put forward by Complainant. Given this renown and what is, in Complainant’s belief, the intentionally confusing similarity between the Domain Name and Complainant’s marks, it is clear that Respondent had knowledge of Complainant and its marks at the time of registration of the Domain Name. Because Respondent has no rights or legitimate interests in the Domain Name, registration therefore amounts to registration in bad faith by Respondent.
Complainant states Respondent does not operate a website under the Domain Name. Complainant argues that passive holding of a domain name that incorporates a well-known trademark, without obvious legitimate purpose, can be deemed bad faith use pursuant to paragraph 4(a)(iii) of the Policy. Complainant contends that the Domain Name was chosen only to create a false impression of an association between Respondent and Complainant, and that it is therefore impossible to conceive of any plausible legitimate use of the Domain Name, whether active or contemplated. Complainant concludes that the Domain Name was registered and is being used in bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
In order to succeed on its Complaint, Complainant must demonstrate that the three elements set forth in paragraph 4(a) of the Policy have been satisfied. These elements are that:
(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) Respondent has registered and is using the Domain Name in bad faith.
A. Identical or Confusingly Similar
Complainant has demonstrated that it has well-established rights in its distinctive ALLEN & OVERY trademarks, both through registration and widespread use over many years in the United Kingdom and around the world.
The standing (or threshold) test for confusing similarity between a trademark and a domain name typically involves a side-by-side comparison of the domain name and the textual components of the relevant mark to assess whether the mark is recognizable within the domain name. See section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Moreover, a domain name that consists of a common, obvious, or intentional misspelling of a trademark is considered by UDRP panels to be confusingly similar to that mark for purposes of the first element. Ibid.
When compared to Complainant’s ALLEN & OVERY trademark, the Domain Name reflects two minor differences, neither of which avoid a finding of confusing similarity with Complainant’s mark. First, the Domain Name omits the ampersand sign (“&”); however, as a technical matter, this sign cannot be included in a domain name, as they can include only letters, numbers and the hyphen, while special characters such as “&” are not allowed. See Hunton & Williams v. American Distribution Systems, Inc. et al., supra. With the exception of the ampersand, the Panel observes that phrase in the Domain Name (“allenouery”) is virtually identical both to Complainant’s ALLEN & OVERY trademark and to Complainant’s primary domain name, <allenovery.com>, the only difference being the substitution of the letter “u” for the letter “v” in the word “overy”. Given the identical placement order of the words in the Domain Name, and the substitution of the “u” for the “v” in the word “overy” (which also reflects visual similarity), the Panel finds that the Domain Name is confusingly similar to Complainant’s marks. Moreover, the Panel determines it is likely, when these elements are considered along with the other evidence in this case (discussed below), as well as Respondent’s failure to respond to the Complaint, that the Domain Name was registered as an intentional misspelling of Complainant’s ALLEN & OVERY trademark.
Accordingly, the Panel finds that the Domain Name is identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Regarding the second element of the Policy, section 2.1 of the WIPO Overview 3.0, states, “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.”
Here, the Panel determines that Complainant has made out a prima facie case, while Respondent has failed to respond to Complainant’s contentions. The Panel finds that Complainant has not authorized Respondent to use Complainant’s ALLEN & OVERY trademark; that Respondent is not commonly known by the Domain Name; that Respondent has not used the Domain Name for a legitimate noncommercial or fair use, nor used it in connection with a bona fide offering of goods or services. Instead, the Domain Name is used to link to a pay-per-click (“PPC”) landing page. The Panel determines that in this case, where the Domain Name includes an intentional misspelling of Complainant’s distinctive and well-known ALLEN & OVERY mark, and where Respondent has not submitted any Response (where it might have attempted to provide a justification for registering the Domain Name), the linking to the commercial PPC page does not represent a bona fide offering nor give rise to any right or legitimate interest in the Domain Name. See e.g., WIPO Overview, section 2.9 (“panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users”).
As Complainant has indicated, the lack of authorization, the lack of legitimate use of the Domain Name and the deliberate creation of an impression of association with Complainant indicate that Respondent has no rights or legitimate interests in the Domain Name. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Accordingly, the Panel finds that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in respect of the Domain Name, which has not been rebutted by Respondent. The Panel therefore finds that Complainant has established the second element of the Policy in accordance with paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
The third element of paragraph 4(a) of the Policy requires that Complainant demonstrate that Respondent registered and is using the Domain Names in bad faith. WIPO Overview 3.0, section 3.1, states, “bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark”.
Here, the Panel determines that the Domain Name was registered and is being used in bad faith. The Panel finds that Complainant has established that its ALLEN & OVERY trademark is well known, as a result of its numerous registrations and use for over more than 90 years. See Celgene Corporation v. Kerry A. Simpson, WIPO Case No. D2016-0757. There is little doubt that Respondent, when registering the Domain Name, was aware of Complainant and its distinctive marks, and intentionally targeted them, when registering the Domain Name. As discussed above, the Domain Name appears to be an intentional misspelling of Complainant’s trademark and primary domain name at “www.allenovery.com.”
Further, Respondent’s use of the Domain Name does not contradict this analysis. As noted above, the Domain Name links to a PPC landing page, reflecting no legitimate use in the context of this case. As set out in Celgene Corporation v. Kerry A. Simpson, supra, in a case such as this, the Panel may also make negative inferences based on Respondent’s failure to respond to Complainant’s contentions. The use of the Domain Name in this case to draw Internet users to the commercial PPC landing page reflects bad faith use. See Parfums Christian Dior v. Javier Garcia Quintas, WIPO Case No. D2000-0226 (where a domain name is “so obviously connected with such a well-known name and products that its very use by someone with no connection with the products suggests opportunistic bad faith”).
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, <allenouery.com>, be transferred to Complainant.
Christopher S. Gibson
Date: July 7, 2021