WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Clifford Chance LLP v. Customer Domain Admin, Nice IT Services Group Inc.

Case No. D2019-2295

1. The Parties

Complainant is Clifford Chance LLP, United Kingdom, internally represented.

Respondent is Customer Domain Admin, Nice IT Services Group Inc., Dominica.

2. The Domain Name and Registrar

The disputed domain name <thecliffordchance.com> is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 20, 2019. On September 20, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 20, 2019, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on September 24, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 14, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 15, 2019.

The Center appointed Stephanie G. Hartung as the sole panelist in this matter on October 17, 2019. 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 an internationally well-known law firm organized under the laws of the United Kingdom with domicile in London. Complainant has evidenced to be the registered owner of numerous trademarks relating to Complainant’s company name “Clifford Chance”, inter alia, the following:

- Word mark CLIFFORD CHANCE, United Kingdom Intellectual Property Office (UKIPO),
registration number: UK00001578701, registration date: August 18, 1995, status: active;
- Word mark CLIFFORD CHANCE, European Union Intellectual Property Office (EUIPO),
registration number: 000077420, registration date: December 9, 1998, status: active;
- Word mark CLIFFORD CHANCE, United States Patent and Trademark Office (USPTO),
registration number: 2775904, registration date: October 21, 2003, status: active.

Complainant, furthermore, has evidenced to own since 1994 the domain name <cliffordchance.com>, which resolves to Complainant’s main website at “www.cliffordchance.com” that is used to promote Complainant’s legal business worldwide.

Respondent, according to the WhoIs information for the disputed domain name, is a company domiciled in Dominica, which registered the disputed domain name on August 13, 2019. By the time of the rendering of this decision, the disputed domain name resolves to Complainant’s official website.

According to documentation provided by Complainant, on August 26, 2019, an email was sent to a third party by using the disputed domain name as an email address and purporting that the email related to a partner in Complainant’s Paris office in an attempt to induce such third party to execute a financial transaction not asked for or otherwise authorized by Complainant.

Complainant requests that the disputed domain name be transferred to Complainant.

5. Parties’ Contentions

A. Complainant

Complainant contends that it has been known under its company name “Clifford Chance” since 1987, after two established law firms had merged, and that its CLIFFORD CHANCE trademark and brand meanwhile has a strong reputation internationally for providing high-quality legal and advisory services.

Complainant submits that the disputed domain name is confusingly similar to Complainant’s CLIFFORD CHANCE trademark as it differs therefrom only by the addition of the word “the”. Moreover, Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed domain name since (1) Respondent used the disputed domain name to send an email which falsely purported to relate to a person employed by Complainant, (2) such phishing email was meant to mislead a third party into making a payment in anticipation of Complainant’s work being completed, and (3) there is no other evidence of any Respondent’s bona fide use of the disputed domain name and Respondent apparently is not commonly known thereunder. Finally, Complainant argues that Respondent registered and is using the disputed domain name in bad faith since (1) the disputed domain name comprises of a minor permutation of Complainant’s well-known CLIFFORD CHANCE trademark, (2) it must be derived from the circumstances of this case that Respondent was clearly aware of Complainant’s CLIFFORD CHANCE trademark when registering and using the disputed domain name, and (3) Respondent’s email of August 26, 2019, falsely relates to a partner in Complainant’s Paris office in an attempt to attract the third party recipient of the email to engage with Respondent, so that the latter make a fraudulent financial gain.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

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

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) that 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.

Respondent’s default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(f) of the Rules provides that if Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute solely based upon the Complaint. Further, the Panel may draw such inferences as are appropriate from Respondent’s failure to submit a Response.

A. Identical or Confusingly Similar

The Panel concludes that the disputed domain name <thecliffordchance.com> is confusingly similar to the CLIFFORD CHANCE trademark in which Complainant has rights.

The disputed domain name incorporates Complainant’s CLIFFORD CHANCE trademark in its entirety. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that the disputed domain name is at least confusingly similar to a registered trademark (see e.g., PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS), WIPO Case No. D2003-0696). Moreover, it has been held in many UDRP decisions and has become a consensus view among UDRP panels (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8), that the addition of another term (whether e.g., descriptive or meaningless) to a trademark in a domain name would not prevent a finding of confusing similarity under the first element of the UDRP. Accordingly, the addition of the definite article “the” does not dispel the confusing similarity arising from the incorporation of Complainant’s CLIFFORD CHANCE trademark in the disputed domain name.

Therefore, Complainant has established the first element under the Policy set forth by paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Panel is further convinced on the basis of Complainant’s undisputed contentions that Respondent has not made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent has made a legitimate noncommercial or fair use thereof without intent for commercial gain.

Respondent obviously has not been authorized to use Complainant’s CLIFFORD CHANCE trademark, either as a domain name or in any other way. Also, there is no reason to believe that Respondent’s name somehow corresponds with the disputed domain name and Respondent does not appear to have any trademark rights associated with the name “Clifford Chance” on its own. Finally, Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair purpose. On the contrary, Respondent used the disputed domain name for fraudulently sending a so-called phishing email in an attempt to induce third parties into making financial transactions to Respondent’s illegal advantage; such use neither qualifies as bona fide nor as legitimate noncommercial or fair within the meaning of the Policy.

Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview 3.0, section 2.1). Given that Respondent has defaulted, it has not met that burden.

Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy.

C. Registered and Used in Bad Faith

The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith.

The circumstances to this case leave no doubt that Respondent was fully aware of Complainant’s rights in the CLIFFORD CHANCE trademark when registering the disputed domain name and that the latter clearly is directed thereto. Moreover, using the disputed domain name for phishing activities by sending an email impersonating a partner in Complainant’s Paris office for fraudulent purposes, namely inducing unauthorized payments to Respondent in order to make financial profits, is a clear indication that Respondent intentionally attempted to attract, for commercial gain, Internet users to its own email communication by creating a likelihood of confusing with Complainant’s CLIFFORD CHANCE trademark as to the source, sponsorship, affiliation or endorsement of Respondent’s fake email. Such circumstances are evidence of registration and use of the disputed domain name in bad faith within the larger meaning of paragraph 4(b)(iv) of the Policy.

In connection with this finding, it also carries weight in the eyes of the Panel, that Respondent obviously failed to accept or pick-up the Written Notice of the Complaint sent to Respondent via courier on September 24, 2019, at the contact information provided in the WhoIs information for the disputed domain name. This fact at least throws a light on Respondent’s behavior, which supports the conclusion of a bad faith registration and use of the disputed domain name.

Therefore, the Panel finds that Complainant has also satisfied the third element under the Policy as set forth by paragraph 4(a)(iii).

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 <thecliffordchance.com> be transferred to Complainant.

Stephanie G. Hartung
Sole Panelist
Date: October 24, 2019