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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sidley Austin LLP v. Withheld for Privacy ehf / Carolina Rodrigues, Fundacion Comercio Electronico

Case No. D2021-2366

1. The Parties

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

The Respondent is Withheld for Privacy ehf, Iceland / Carolina Rodrigues, Fundacion Comercio Electronico, Panama.

2. The Domain Name and Registrar

The disputed domain name <sidleyaustinlaw.com> (the “Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 21, 2021. On July 21, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 21, 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 July 26, 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 July 31, 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 August 2, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 22, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 3, 2021.

The Center appointed Ian Lowe as the sole panelist in this matter on September 24, 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 one of the world’s oldest and most widely known law firms. It has provided legal services to clients in connection with complex matters for over 150 years. It is one of the largest United States based law firms, with approximately 2,000 lawyers in over 20 cities worldwide and annual revenues of over 2 billion United States dollars. The Complainant’s name has evolved over the years, but it was known as Sidley & Austin from 1967, Sidley Austin Brown & Wood from 2001, and Sidley Austin LLP from 2006.

The Complainant is the licensee from its affiliate, Sidley Austin Holding LLP, of United States trademark number 3,221,189 SIDLEY AUSTIN registered on March 27, 2007. The Complainant registered the domain name <sidley.com> on April 25, 1995 and operates a website promoting the firm and its services from a website at that domain name. It is also the owner of the domain names <sidleyaustin.com> and <sidleyaustinlawyers.com>, registered on July 23, 1999 and October 9, 2019 respectively, both of which resolve to the “www.sidley.com” website.

The Domain Name was registered on July 2, 2021. It appears presently to resolve to a website blocked by virus protection software. At the time of the filing of the Complaint, it resolved to a webpage comprising a number of links to third party websites relating to “Law Office”, “Legal Attorneys” and “Litigation”. The Respondent Carolina Rodrigues and/or Fundacion Comercio Electronico has been the Respondent in some 180 UDRP complaints in which it was found to have targeted well-known brands, and registered and used domain names in bad faith.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is confusingly similar to its SIDLEY AUSTIN trademark (the “Mark”), that the Respondent has no rights or legitimate interests in respect of the Domain Name, and that the Respondent registered and is using the Domain Name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.

B. Respondent

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

6. Discussion and Findings

For this Complaint to succeed in relation to the Domain Name, the Complainant must prove that:

(i) the Domain Name is identical or confusingly similar to a trademark 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 has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has uncontested rights in the Mark, both as licensee of its affiliate’s trademark registration and as a result of the goodwill and reputation acquired through its use of the Mark over many years. Ignoring the generic Top-Level Domain (“gTLD”) “.com”, the Domain Name comprises the entirety of the SIDLEY AUSTIN with the addition of the word “law”. In the view of the Panel, the addition of this dictionary term does not prevent a finding of confusing similarity between the Domain Name and the Mark. Accordingly, the Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Complainant has made out a strong prima facie case that the Respondent could have no rights or legitimate interests in respect of the Domain Name. The Respondent has used the Domain Name not in connection with a bona fide offering of goods or services, but for a website with links to other webpages featuring pay-per-click links to third party websites offering legal services similar to those provided by the Complainant and related services. There is no suggestion that the Respondent has ever been known by the Domain Name. Section 2.5.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition indicates that engaging in a pattern of registering domain names corresponding to marks held by the complainant or third parties is likely to mitigate against a finding of fair use. In this case, given the nature and notoriety of the Mark, the Panel cannot conceive of a legitimate or fair use to which the Respondent could put the Domain Name. The Respondent has chosen not to respond to the Complaint or to take any steps to counter the prima facie case established by the Complainant. In the circumstances, the Panel finds that the Respondent does not have any rights or legitimate interests in respect of the Domain Name.

C. Registered and Used in Bad Faith

In light of the use to which the Domain Name has been put, and the conjoining of the Mark and the word “law” in the Domain Name, the Panel is in no doubt that the Respondent had the Complainant and its rights in the Mark in mind when it registered the Domain Name. The Respondent has used the Domain Name for pay-per-click links to third party websites. In the Panel’s view, the legitimate inference is that the Respondent undertook such activity with a view to commercial gain, intending to attract Internet users to the webpage to which the Domain Name resolved by creating a likelihood of confusion with the Mark and as to the affiliation or endorsement of that webpage. Accordingly, the Panel considers that this amounts to paradigm bad faith registration and use for the purposes 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 <sidleyaustinlaw.com> be transferred to the Complainant.

Ian Lowe
Sole Panelist
Date: October 7, 2021

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