and AG Service Company Limited v Brian Cho

WIPO Case No. D2022-3740

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Addleshaw Goddard LLP, Addleshaw Goddard (GCC) LLP, Addleshaw
Goddard (Middle East) LLP, Addleshaw Goddard Service Company Limited,
and AG Service Company Limited v. Brian Cho

Case No. D2022-3740

1. The Parties

The Complainants are Addleshaw Goddard LLP, United Kingdom (the “First Complainant”), Addleshaw Goddard (GCC) LLP, Qatar, Addleshaw Goddard (Middle East) LLP, United Arab Emirates, Addleshaw Goddard Service Company Limited, United Kingdom, and AG Service Company Limited, United Kingdom,

internally represented.

The Respondent is Brian Cho, Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <aglawkorea.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 October 6, 2022. On October 7, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 8, 2022, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which slightly differed from the named Respondent (Brian Sy Cho) and contact information in the Complaint. The Center sent an email communication to the Complainants on October 19, 2022, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainants filed amendments to the Complaint on October 21, 2022, and October 25, 2022.

The Center verified that the Complaint together with the amendment to 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 the Respondent of the
Complaint, and the proceedings commenced on October 26, 2022. In accordance with the Rules,

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paragraph 5, the due date for Response was November 15, 2022. The Respondent did not submit any
response. Accordingly, the Center notified the Respondent’s default on November 16, 2022.

The Center appointed Mathias Lilleengen as the sole panelist in this matter on December 5, 2022. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Rules, paragraph 7.

4. Factual Background

France, Luxembourg, Qatar, the United Arab Emirates, Oman, Singapore, and Hong Kong, China. It operates through the website “ The First Complainant has advised clients in 105 countries and is known informally as “AG”. Several partners and employees in the Middle Eastern,	The First Complainant is an international law firm with offices in the United Kingdom, Ireland, Germany, include “@aglaw.com”.
The Complainants have rights collectively in trademarks and service marks in AGLAW and AG (registration no. T1206855F, registered on September 27, 2013, and registration no. UK00002549886, registered on October 22, 2010, respectively).
The Respondent was employed by the First Complainant between 2014 and 2018 in the First Complainant’s London office.
The Domain Name was registered by the Respondent on October 1, 2019. The Domain Name resolves to webpage in Korean.
The Complainants became aware of the Domain Name around June 13, 2022, when a partner of the firm was contacted by a company who had been given a business card purporting to be from an entity called Addleshaw Goddard Korea LLC. The business card lists the Respondent as “Managing Partner,
Infrastructure & Energy” and provides telephone and email contact details using the Domain Name and an office address for Addleshaw Goddard Korea LLC.
5. Parties’ Contentions
A. Complainants
The Complainants provide evidence of trademark registrations and argue that the addition of a geographical suffix as “korea” does not sufficiently distinguish the Domain Name from the Complainant’s trademark.
The Complainants assert that the Respondent is not authorized to use the Complainants’ trademark. The Respondent cannot establish rights in the Domain Name, as it has not made any use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services. On the
contrary, the Complainants document that the Respondent, previously employed of the First Complainant, has been using the Domain Name holding himself out as being connected with the Complainants.
Based on the fact that the Respondent has been previously employed by the First Complainant, and the use of the Domain Name, is evident that the Respondent has registered the Domain Name in bad faith. The Respondent’s use is also evidence of bad faith use under the Policy. The use of the Domain Name creates a likelihood of confusion, and the Respondent is using the fame of the Complainants’ trademarks for the Respondent’s commercial gain. Finally, the Respondent has failed to reply to the Complainants’ contentions.

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B. Respondent

The Respondent did not reply to the Complainants’ contentions.

6. Discussion and Findings

A. Preliminary Issue: Consolidation of Multiple Complainants

The principles to assess a request to consolidate multiple complainants are set forth in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.1.

Noting the circumstances of the case, the Panel finds that the Complainants have a specific common
grievance against the Respondent, and that it would be equitable and procedurally efficient to permit the
consolidation. The Panel finds that the Complainants have a common legal interest, as the Complainant
Addleshaw Goddard Service Company Limited is the proprietor of the AGLAW and AG trademarks and the
other Complainants belong to the same group of companies. Moreover, considering the composition of the
disputed domain name, the Panel finds that the Complainants are the target of common conduct by the
Respondent which has affected their individual legal interests in a similar fashion. See, for instance, Fulham
Football Club (1987) Limited, Tottenham Hostpur Public Limited, West Ham United Football Club PLC,
Manchester United Limited, The Liverpool Football Club And Athletic Grounds Limited v. Domains by Proxy,
Inc./ Official Tickets Ltd, WIPO Case No. D2009-0331.

Accordingly, the Panel accepts the Complainants’ request to consolidate the present proceedings pursuant to the Rules, paragraph 10(e). The Complainants are hereinafter referred to as the “Complainant.”

B. Identical or Confusingly Similar

The Complainant has established that it has rights in AGLAW and AG. The test for confusing similarity involves a comparison between the trademark and the Domain Name. The Domain Name incorporates the Complainant’s trademark AGLAW, with the addition of the term “korea". The addition does not prevent a finding of confusing similarity between the Domain Name and the trademark.

For the purpose of assessing under paragraph 4(a)(i) of the Policy, the Panel may ignore the generic Top-
Level Domains (“gTLDs”), see WIPO Overview 3.0, section 1.11.1.

The Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

The Complainant has made unrebutted assertions that it has not granted any authorization to the with a bona fide offering. The Respondent’s use of the Domain Name is not bona fide, but clear evidence of bad faith.

Respondent – a former employee of the Complainant – to register the Domain Name containing the
Complainant’s trademark or otherwise make use of the Complainant’s mark. There is no evidence that the
Respondent has registered the Domain Name as a trademark or acquired unregistered trademark rights.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the
Domain Name in accordance with paragraph 4(a)(ii) of the Policy.

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D. Registered and Used in Bad Faith

The Panel finds it evident from the use of the Domain Name that the Respondent – a former employee of the registered the Domain Name.

The Respondent’s use of the Domain Name is indeed evidence of bad faith, as the Respondent is falsely
pretending to be, or to be connected with the Complainant. The Respondent is using the fame of the
Complainant’s trademarks for his own commercial gain, by misleading the public.

For the reasons set out above, the Panel concludes that the Domain Name was registered and is being used in bad faith, within the meaning 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 Domain Name <aglawkorea.com> be transferred to the Complainant AG Service Company Limited.

/Mathias Lilleengen/
Mathias Lilleengen
Sole Panelist
Date: December 19, 2022