WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Clifford Chance LLP v. Mykhailo Loginov, Loginov Enterprises d.o.o
Case No. D2015-0025
1. The Parties
The Complainant is Clifford Chance LLP of London, United Kingdom of Great Britain and Northern Ireland (the “UK”), represented internally.
The Respondent is Mykhailo Loginov, Loginov Enterprises d.o.o. of Belgrade, Serbia.
2. The Domain Name and Registrar
The disputed domain name <cliffordchance.attorney> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 8, 2015. On January 9, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 9, 2015, the Registrar transmitted by email to the Center its verification response confirming:
(a) it is the Registrar for the disputed domain name;
(b) the disputed domain name is registered in the name of the Respondent and the contact details are correct;
(c) the Respondent registered the disputed domain name on October 27, 2014;
(d) the language of the registration agreement is English;
(e) the disputed domain name was registered subject to the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), and the UDRP applies to the disputed domain name.
The Center verified that the Complaint satisfied the formal requirements of the Policy, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 16, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 5, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 6, 2015.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on February 20, 2015. 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 and its predecessors have been operating a law firm under the name Clifford Chance since 1987. Between 1987 and 2000, the business was operated as a partnership under English Law as Clifford Chance. Between 2000 and 2006, the business was carried on through a limited liability partnership under New York law known as Clifford Chance Limited Liability Partnership. In 2006, it converted to a limited liability partnership under UK law registered as Clifford Chance LLP. The goodwill associated with the name Clifford Chance was assigned with the business from each entity to its successor with each of these changes.
The Complaint includes evidence demonstrating that the Complainant is the owner of the trademark CLIFFORD CHANCE in respect of, amongst other things, legal and advisory services in International Classes 41 and 42 registered:
(a) in the UK, Trade Mark Nos 1578701 and 1578702;
(b) as a Community Trademark No. 000077420; and
(c) in the United States of America, Trademark No. 2775904.
The Complainant has a website at “www.cliffordchance.com”, which has been registered and in use since 1994. According to the Complaint, it receives on average 450,000 page views per month, most driven by the key words in combination “clifford chance”. The “visitors” come from more than 50 countries according to the Google Analytics data included in the Complaint.
As noted above, the disputed domain name was registered on October 27, 2014.
The disputed domain name resolves to a website which is a “parked for free” website. It includes a number of obvious pay-per-click (“PPC”) advertisements. In the print out included in the Complaint, many are to law firms or other legal services providers (but not the Complainant). In addition, a browser landing on the home page is met with an invitation to buy the domain name.
5. Discussion and Findings
No response has been filed. The Complaint has been served, however, on the physical and electronic coordinates specified in the WhoIs record (and confirmed as correct by the Registrar) in accordance with paragraph 2(a) of the Rules. Accordingly, the Panel finds that the Complaint has been properly served on the Respondent.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of four registered trademarks referred to in section 4 above. The Panel also accepts that the Complainant is very well known in many legal circles.
On the question of identity or confusing similarity, what is required is simply a comparison and assessment of the disputed domain name itself to the Complainant’s proved trademarks: see for example, Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin, WIPO Case No. D2002-0420. This is different to the question under trademark law which can require an assessment of the nature of the goods or services protected and those for which any impugned use is involved, geographical location or timing. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
Disregarding the Top Level Domain extension, “.attorney”, in accordance with usual practice as a functional requirement of the domain name system, the disputed domain name is identical to the Complainant’s proven trademark CLIFFORD CHANCE. Given the nature of the Complainant’s business, the Top Level Domain, “.attorney”, only increases the potential for confusion and deception.
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is identical with the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which the Respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. UDRP panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
It is plain from the Complaint and the letter of demand the Complainant sent to the Respondent shortly after the disputed domain name was registered that the Complainant has not authorised or licensed the Respondent to register or use the disputed domain name. Nor is the Respondent affiliated with the Complainant.
The disputed domain name is plainly not derived from the Respondent’s name and, so far as the Complainant is aware, the Respondent is not commonly known as “Clifford Chance”. Accordingly, paragraph 4(c)(ii) does not apply.
The Complainant contends that paragraph 4(c)(i) does not apply because the disputed domain name is “parked” and available for sale. In the circumstances of this case, the Panel agrees. In particular, the Panel notes that the PPC links on the website which the disputed domain name resolves to, especially those which are for law firms and legal service providers, none of whom are the Complainant, do not constitute a good faith offer of goods or services under the Policy. The fact that they appear to be placed by the Registrar does not excuse the Respondent who, as its registrant, must bear responsibility for how it allows the disputed domain name to be used.
The Complainant also points out that the parking of the disputed domain name at the website, especially with the invitation requesting offers to buy the domain name is not a legitimate non-commercial or otherwise fair use under the Policy. Consequently, paragraph 4(c)(iii) does not apply.
In these circumstances, the Complainant has established a clear prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not sought to rebut that prima facie case. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also.
C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
The Complainant points out that, on October 9 and 10, 2014 – immediately after domain names in the “.attorney” domain space became available for registration, the Respondent registered over 100 “.lawyer” and “.attorney” domain names using the names of very well known law firms. In addition to <cliffordchance.attorney>, these include <allenovery.attorney, <freshfields.attorney> and <linklaters.attorney>, all major law firms operating in the UK.
This demonstrates that the Respondent had a very high degree of familiarity with the names of law firms. Plainly, the Respondent did not register the names of so many competitors in connection with some law firm or legal services provider that the Respondent was operating or planning to operate. Rather, as the Complainant contends, the only plausible explanation is that the Respondent planned to sell, rent or otherwise transfer the domain names for commercial gain. The “parking” of the disputed domain name with an invitation soliciting potential purchasers supports that conclusion.
Accordingly, the Panel finds that the disputed domain name was registered in bad faith.
As already noted in section 5.B. above, the use made of the disputed domain name constitutes bad faith use under the Policy. Accordingly, the Panel finds that the Complainant has also established the third limb under the Policy.
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 <cliffordchance.attorney> be transferred to the Complainant.
Warwick A. Rothnie
Date: March 5, 2015