WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Clifford Chance LLP v. Packer Willer
Case No. D2016-0646
1. The Parties
The Complainant is Clifford Chance LLP of London, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), internally represented.
The Respondent is Packer Willer of "New York, Slovakia".1
2. The Domain Name and Registrar
The disputed domain name <cliffordschance.com> (the "Domain Name") is registered with Gransy, s.r.o. d/b/a subreg.cz (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 4, 2016. On April 4, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 6, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
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 the Respondent of the Complaint, and the proceedings commenced on April 18, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 8, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 9, 2016.
The Center appointed Olga Zalomiy as the sole panelist in this matter on May 19, 2016. 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 a global law firm, which owns the trademark CLIFFORD CHANCE for use in connection with, amongst other things, the provision of legal and advisory services in the United Kingdom, the European Union and the United States of America ("United States"). The Complainant has registered the trademark CLIFFORD CHANCE in over 20 jurisdictions around the world, including the United Kingdom trademark numbers 1578701 registered on August 18, 1995 and 1578702 registered on August 29, 1995, European Union Trade Mark number 77420 registered on December 9, 1998; and United States trademark number 2775904 registered on October 21, 2003.
The Complainant's main website is associated with its domain name <cliffordchance.com>, which was registered in 1994. In addition, the Complainant also owns over 240 domain names comprised of the words "Clifford" and "chance".
The Respondent registered the Domain Name on January 14, 2016. As discussed below, the Domain Name has been used in connection with a fraudulent email scheme. There is no evidence before the Panel to suggest that the Domain Name has ever resolved to an active website.
5. Parties' Contentions
A. Complainant
The Complainant claims that the Domain Name is confusingly similar to its CLIFFORD CHANCE trademark. The Complainant alleges that it owns numerous trademark registrations in the CLIFFORD CHANCE trademark. The Complainant argues that the Domain Name is almost identical to the Complainant's CLIFFORD CHANCE trademark. The Complainant claims that its trademark is so well known in respect of legal services around the world that it is inevitable that public will believe that the Domain Name is somehow connected with the Complainant and its legal services.
The Complainant claims that the Respondent has no right or legitimate interests in respect of the Domain Name. The Complainant alleges that there is no evidence of the Respondent's use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services. The Complainant argues that evidence shows the Respondent's misuse of the Domain Name in its impersonation of the Complainant's partners and misrepresentation that it is an official domain name of the Complainant. The Complainant claims that the Respondent is not commonly known by the Domain Name. The Complainant claims that the Respondent is not making a legitimate noncommercial or fair use of the Domain Name. The Complainant argues that the Respondent intends to achieve a commercial gain by misleading and diverting consumers and the Respondent is also tarnishing the CLIFFORD CHANCE trademark.
The Complainant claims that Domain Name was registered and is being used in bad faith. The Complainant claims that it learned that in January and February of 2016 several emails were sent out to third parties asking the recipients to reveal their personal information purportedly necessary to receive large sums of money. The Complainant claims that the emails were sent from an email address associated with the Domain Name, which closely resembled an email of one of the members of the Complainant's firm. According to the Complainant, both the Domain Name and the contents of the email, including the signature block, evidence the Respondent's attempts to represent itself as the Complainant. The Complainant further claims that the emails sent by the Respondent impersonate a member of the Complainant's firm with the use of his name, role and organization. The Complainant alleges that the emails were not authorized by the Complainant but appeared to recipients as if that were the case. The Complainant claims that the emails provide the signature block of the Complainant and include the London registered office address of the Complainant. According to the Complainant, the contact details included for its member with respect to his email address were incorrect and instead linked to the Domain Name. The Complainant claims that the Respondent's use of the Domain Name as well as the impersonation of the Complainant's member (partner) evidences how the Domain Name is being used in bad faith. The Complainant argues that the Domain Name creates a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website to receive a commercial advantage from third parties who are misled by what appears to be the name of a very well-known and reputable law firm.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Pursuant to paragraph 4(a) of the UDRP, to succeed in this proceeding, the Complainant must prove each of the following elements with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
A. Identical or Confusingly Similar
The evidence on file shows that the Complainant owns trademark registrations for the CLIFFORD CHANCE trademark and, as a result, has rights in the CLIFFORD CHANCE trademark.
The Panel finds that the Domain Name is confusingly similar to the Complainant's CLIFFORD CHANCE trademark. It is well established that "a domain name which contains a common or obvious misspelling of a trademark normally will be found to be confusingly similar to such trademark, where the misspelled trademark remains the dominant or principal component of the domain name".2 Here, the Domain Name consists of the CLIFFORD CHANCE trademark, a letter "s" interposed between the words "Clifford" and "Chance", and the generic Top-Level Domain ("gTLD") ".com". Because the misspelled CLIFFORD CHANCE trademark is the dominant component of the Domain Name and the gTLD ".com" would usually be disregarded under the confusing similarity test, as it is a technical requirement of registration, the Panel considers that the Domain Name is confusingly similar to the Complainant's trademark. 3
Thus, the Panel finds that the first element of the UDRP has been met.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the UDRP, the Respondent may establish that it has rights or legitimate interests in the Domain Name by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent's use of, or demonstrable preparations to use the Domain Name or a name corresponding to the Domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel accepts that there is no evidence of the Respondent's use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services. The evidence on record demonstrates the Respondent's misuse of the Domain Name in its impersonation of the Complainant's partners and misrepresentation that it is an official domain name of the Complainant. The evidence shows that the Respondent is not commonly known by the Domain Name. Further, the Respondent is not making a legitimate noncommercial or fair use of the Domain Name.
The current use of the Domain Name for email addresses impersonating the Complainant does not give rise to any rights or legitimate interests.
The Panel finds that the Complainant made out a prima facie case in respect of the lack of rights or legitimate interest of the Respondent in the Domain Name. Once complainant makes a prima facie case, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name;4 the Respondent has failed to do so, and consequently the Panel finds that in this proceeding the Complainant has satisfied paragraph 4(a)(ii) of the UDRP.
Thus, the Panel finds that the second element of the UDRP has been met.
C. Registered and Used in Bad Faith
Under the third UDRP element, the Complainant is required to prove that the Domain Name was registered and is being used in bad faith.
The evidence on record shows that third-party-disseminated emails requesting recipients to provide the sender with personal information for receipt of large sums were sent from a "[…]@cliffordschance.com" email address. The email address was created using the Domain Name and was very similar to the real email address of one of the Complainant's members (partners), "[…]@cliffordchance.com". The emails represent that they were sent by the Complainant's member and they included the signature block of the Complainant and the London registered office address of the Complainant.
The Panel finds that the present case represents a version of a sophisticated scam "whereby victims report being contacted by email by fraudsters, who typically identify themselves as lawyers or representatives of law firms and claim to be handling confidential or time-sensitive matters. Victims may be pressured by the fraudster to act quickly or secretly in handling the transfer of funds", which has been named "Business E-mail Compromise scam" by the "United States Federal Bureau of Investigation". 5
The circumstances evidencing the registration and use in bad faith prescribed in paragraph 4 of the UDRP are not exhaustive; similar use of disputed domain names through email addresses representing to be sent by the corresponding complainants have been found to constitute bad faith registration and use. See, e.g., Kramer Law Firm, P.A. Attorneys and Counselors at Law v. BOA Online, Mark Heuvel, WIPO Case No. D2016-0387 ("While this scam is not, as Complainant has noted, a 'typical' case of phishing, it is nevertheless clearly a way in which 'Internet fraudsters impersonate a business' – something that the U.S. Federal Trade Commission associates with phishing activities"); and Adams and Remers LLP v. Michael Hallier/Whois Agent, Whois Privacy Protection Service, Inc., WIPO Case No. DME2015-0005 ("It is clearly a use intended to attract, for commercial gain, Internet users to the Complainant's online address thereby creating confusion with the Complainant's mark as to the service being offered at that location. Such use is clearly fraudulent and in bad faith"). Thus, the Panel concludes that the Domain Name was registered and is being used in bad faith.
Therefore, the Panel finds that the third element of the UDRP has been met.
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 <cliffordschance.com> be transferred to the Complainant.
Olga Zalomiy
Sole Panelist
Date: June 1, 2016
1 The Panel being unaware of any such location is of the view that the registrant contact information as displayed in the WhoIs is likely to be inaccurate.
2 See, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.10.
3 See, WIPO Overview 2.0, paragraph 1.2.
4 WIPO Overview 2.0., paragraph 2.1.
5 https://www.ic3.gov/media/2015/150827-1.aspx