Allen & Overy LLP v Ewa Dziedzic

WIPO Case No. D2022-4229

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Allen & Overy LLP v. Ewa Dziedzic

Case No. D2022-4229

1. The Parties

The Complainant is Allen & Overy LLP, United Kingdom, represented internally.

The Respondent is Ewa Dziedzic, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <alleenovery.com> (the “Disputed Domain Name”) is registered with Wild West

Domains, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 8,
2022. On November 8, 2022, the Center transmitted by email to the Registrar a request for registrar
verification in connection with the Disputed Domain Name. On November 9, 2022, 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 (Registration Private, Domains by Proxy, LLC)
and contact information in the Complaint. The Center sent an email communication to the Complainant on
November 10, 2022 providing the registrant and contact information disclosed by the Registrar, and inviting
the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on
November 11, 2022.

The Center verified that the Complaint together with the amendment to 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 November 14, 2022. In accordance with the Rules, paragraph 5, the due date for Response was December 4, 2022. The Respondent did not submit any

response. Accordingly, the Center notified the Respondent’s default on December 5, 2022.

The Center appointed Nicholas Weston as the sole panelist in this matter on December 13, 2022. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and

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Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the

Rules, paragraph 7.

4. Factual Background

The Complainant is an international law firm founded in London in 1930 with more than 40 offices and
employs roughly 5,650 people. The Complainant holds a number of registrations for the trademark ALLEN &
OVERY in various jurisdictions including, for example: United States Trademark Registration No. 2743361
for ALLEN & OVERY, registered on July 29, 2003 in classes 16, 36, and 42 and European Union Trade Mark

No. 010411189 for the mark ALLENOVERY registered on March 21, 2012 in classes 35, 36, 41 and 45.

The Complainant owns the domain name <allenandovery.com> which hosts its main website.

The Disputed Domain Name was registered on October 11, 2022, and resolves to an inactive webpage displaying an error message.

5. Parties’ Contentions

A. Complainant

The Complainant cites its European Union Trademark No. 001500669 registered on May 22, 2001 and other registrations internationally for the marks ALLEN & OVERY and ALLENOVERY as prima facie evidence of ownership.

The Complainant submits that its rights in the marks ALLEN & OVERY and ALLENOVERY predate the Domain Name is confusingly similar to its trademarks, because the Disputed Domain Name incorporates in its entirety the ALLENOVERY trademark and that the confusing similarity is not removed by the additional letter “e” or the addition of the generic Top-Level Domain (“gTLD”) “.com”.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the
Disputed Domain Name because it is inactive and resolves to an error message so the Respondent is not
making a bona fide offering of goods or services or a legitimate non-commercial or fair use of the Disputed
Domain Name. The Complainant also states that there is no business or legal relationship between the
Complainant and the Respondent, and that the Respondent is not known by the name “Allen & Overy” or

“Allenovery”.

Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and concealment of the Respondent’s identity and the passive holding constitutes bad faith use.

currently is, in bad faith, contrary to the Policy and Rules and submits that the Respondent registered the
Disputed Domain Name for the purpose of fraudulent phishing to impersonate someone who works for the

B. Respondent

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

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:

(i) that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which

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the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(iii) that the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the marks ALLEN & OVERY and ALLENOVERY in numerous jurisdictions. The propriety of a domain name registration may be questioned by comparing it to a trademark registered in any country (see WIPO

Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section

1.2.1).

Turning to whether the Disputed Domain Name is identical or confusingly similar to the ALLEN & OVERY
trademark, the Panel observes that the Disputed Domain Name comprises: (a) a misspelling of the
Complainant’s trademark ALLEN & OVERY without the conjunction “and” and that has an additional letter
“e”; (b) followed by the gTLD “.com”.

Furthermore, the Disputed Domain name is confusingly similar to the ALLENOVERY trademark but for the additional letter “e”.

It is well established that the gTLD used as technical part of a domain name may be disregarded. The
relevant comparison to be made is with the Second-Level portion of the Disputed Domain Name, specifically:
“alleenovery” (see WIPO Overview 3.0, section 1.11).

It is also well established that in cases where a dominant feature of the relevant mark of a Complainant is, at least, recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing (see WIPO Overview 3.0, section 1.7).

The Panel finds that the additional letter “e” (and, where applicable, the omission of the conjunction “and”)
does not avoid a finding of confusing similarity between the Disputed Domain Name and the Complainant’s
trademark. “A domain name which consists of a common, obvious, or intentional misspelling of a trademark
is considered by panels to be confusingly similar to the relevant mark for purposes of the first element.”

(see WIPO Overview 3.0, section 1.9).

The Panel finds that the Complainant has established paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists the ways that the Respondent may demonstrate rights or legitimate
interests in the Disputed Domain Name. The Policy also places the burden on the Complainant to establish
the absence of the Respondent’s rights or legitimate interests in the Disputed Domain Name. Because of
the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put
forward a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production

then shifts to the Respondent to rebut that prima facie case (see: WIPO Overview 3.0, section 2.1).

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the
Disputed Domain Name because (i) the Disputed Domain Name is inactive and has been used to phish for a
misdirected payment; (ii) the Respondent has not acquired or owned any trademark or service mark rights in
the names “allen&overy” or“allenovery”, and has not been commonly known by the names “allen&overy” or
“allenovery”; and (iii) the Respondent is not making a legitimate noncommercial or fair use of the Disputed
Domain Name without intent for commercial gain to misleadingly divert Internet users or to tarnish the
Complainant’s trademarks.

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The Panel notes the evidence that the Disputed Domain Name in this proceeding is inactive and resolves to legitimate interests.
a page displaying an error message. Furthermore, the Complainant has provided evidence that the
Disputed Domain Name is being used in connection to a fraudulent phishing scheme impersonating a

The Panel is satisfied that the Complainant has put forward a prima facie case that the Respondent lacks rights or legitimate interests. In the absence of a response, this Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

The Panel finds for the Complainant on the second element of the Policy.

C. Registered and Used in Bad Faith

The third element of the Policy requires that the complainant must also demonstrate that the Disputed circumstances to be construed as evidence of both of these conjunctive requirements.

The Panel finds that the evidence in the case shows the Respondent registered and has used the Disputed
Domain Name in bad faith is overwhelming.

On the issue of registration, taking into account the composition of the Disputed Domain Name and the subsequent use of the Disputed Domain Name to enable phishing that sought a payment intended to be directed to the Complainant’s law firm to be misdirected, the Panel is satisfied that the Respondent knew of

Allen &

the Complainant’s trademark ALLEN & OVERY when it registered the Disputed Domain Name (see D2020-0299 (“the Complainant’s trademarks enjoy considerable renown worldwide in connection with the provision of legal services and legal advice”). On any view, the Respondent cannot credibly claim to have been unaware of the mark (see: WIPO Overview 3.0, section 3.2.2).

Overy LLP v. WhoisGuard Protected, WhoisGuard, Inc. / Name Redacted, WIPO Case No. D2019-2512
(“the Complainant’s Trademark has long history and considerable reputation”); Allen & Overy LLP v.

In addition, the gap of several years between registration of the Complainant’s trademark and the Respondent’s registration of the Disputed Domain Name (containing a misspelling of the Complainant’s trademark) is a further indicator of bad faith. (See Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415). In this case, the Complainant’s rights in its trademark predate any rights that could possibly flow from the Respondent’s registration of the Disputed Domain Name by almost 20 years.

WIPO Overview 3.0, section 3.1.4).

On the issue of use, the Complainant’s evidence is that the Disputed Domain Name does not resolve to an panels have held that the use of a domain name for per se illegitimate activity such as phishing is considered to be evidence of bad faith and this Panel accepts that the uncontested evidence of phishing in this case supports a finding of bad faith (see
active website. The evidence also includes evidence of attempted phishing using the Disputed Domain
Name to send emails, it submits “with the intent of fraudulently diverting client funds into a bank account
under the Respondent’s control”. In support of this contention is a copy of an email putatively from a Partner
of the Complainant from the email address in a potentially fraudulent attempt to impersonate the

In the absence of any evidence to the contrary, this Panel accepts the Complainant’s evidence and finds that the Respondent has taken the Complainant’s trademarks ALLEN & OVERY and ALLENOVERY and incorporated a deliberate misspelling of it that adds the letter “e” into the Disputed Domain Name, without the Complainant’s consent or authorization.

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Accordingly, the Panel finds that the Complainant has satisfied the requirements of 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 Disputed Domain Name <alleenovery.com> be transferred to the Complainant.

/Nicholas Weston/
Nicholas Weston
Sole Panelist
Date: December 27, 2022