WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Clifford Chance LLP v. Jerome Morrin
Case No. D2018-0835
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 Jerome Morrin of Paris, France.
2. The Domain Name and Registrar
The disputed domain name <cliffordchancelaw.com> is registered with OVH (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 13, 2018. On April 13, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 19, 2018, 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. On April 27, 2018, the Center notified the Parties in both English and French that the language of the Registration Agreement for the disputed domain name was French. On the same day, the Complainant requested for English to be the language of the proceeding, to which the Respondent did not reply.
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 May 7, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 27, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 29, 2018.
The Center appointed William A. Van Caenegem as the sole panelist in this matter on June 19, 2018. 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 major law firm resulting from the amalgamation of two pre-existing firms in 1987. The Complainant is a limited liability partnership governed by the laws of the United Kingdom.
The Complainant has registered and uses the trademark CLIFFORD CHANCE in respect of the provision of legal and advisory services in classes 41 and 42 in the UK (No 1578701, registered on August 18, 1995, and 1578702, registered on August 29, 1995), the EU (No 77420, registered on December 9, 1998) and the US (2775904, registered on October 21, 2003). The Complainant's website "www.cliffordchance.com" was registered in 1994.
The disputed domain name was registered on January 15, 2018,and resolves to a website with the text "Site en construction".
5. Parties' Contentions
The Complainant is the registered owner of the CLIFFORD CHANCE trademark in a number of jurisdictions, and has been operating under that name since 1987. The Complainant asserts that it has a strong reputation internationally for providing legal and advisory services. The Complainant maintains that the disputed domain name is identical to its CLIFFORD CHANCE trademark.
The Complainant was alerted by a third party of the fact that the disputed domain name was being used in phishing emails which purported to come from an officer of a third party and referring to a partner of the Complainant in "cc" and in the body of the email. The Complainant put the Respondent on notice and reported fraudulent domain name use to the concerned registrar. Further communications came to the Complainant's attention which purported to come from a third party and alleging that a partner of the Complainant was acting in a matter with which it was not in fact concerned.
The Complainant asserts that there is no use of or demonstrable preparations to use the disputed domain name in connection with any bona fide offerings of goods or services. The Complainant asserts that the Respondent's purpose is to deceive members of the public into thinking that the disputed domain name is connected with the Complainant with a view to making a financial gain and in the process tarnishing the Complainant's trademark.
The Complainant states that the Respondent's purpose was to prevent the Complainant from reflecting its trademark with the word "law" in a domain name – something it would have a bona fide interest in doing itself, as it has registered 170 domain names itself and is engaged in provision of legal services.
The Complainant also points out that the Respondent has intentionally attempted to attract recipients of fraudulent emails to engage with the Respondent, with a view to taking advantage of the resulting confusion for its own financial gain. This all amounts to bad faith use of the disputed domain name. The Respondent was not authorised to use the Complainant's trademark and the disputed domain name was clearly registered as an instrument of fraud, i.e., for the purpose of sending phishing emails. There is no evidence of the disputed domain name being used in any other way, and the Respondent also did not respond to the Complainant's correspondence, another indication of bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Language of proceedings
The Panel notes that the language of registration agreement is French and that the Complainant has requested the language of the proceeding to be English. The Respondent, even though given the opportunity to oppose the Complainant's request, has not replied or otherwise participated in this proceeding. The Panel notes that the phishing emails sent by the Respondent (as further discussed below) were in English which suggests that the Respondent is familiar with English.
In accordance with paragraph 11 of the Rules, the Panel rules that the language of the proceeding is English and the Panel will issue the decision in English.
A. Identical or Confusingly Similar
The disputed domain name is not identical to the CLIFFORD CHANCE trademark of the Complainant. However, it incorporates that trademark in its entirety and as its first, distinctive and most prominent part. The trademark is entirely unmistakable in the disputed domain name. The addition of the term "law" which evokes the services for which the Complainant has acquired a substantial reputation in its trademark CLIFFORD CHANCE, further enhances the risk of confusion between the disputed domain name and the distinctive CLIFFORD CHANCE trademark of the Complainant.
Therefore the Panel holds that the disputed domain name is confusingly similar to the Complainant's CLIFFORD CHANCE trademark.
B. Rights or Legitimate Interests
There is no evidence before the Panel that can support a conclusion that the Respondent has any rights or legitimate interests in the disputed domain name. In fact the evidence provided by the Complainant indicates that the Respondent has used the disputed domain name only for the purpose of phishing. An attempt to obtain an illegitimate financial gain by impersonating or attempting to suggest a legitimate connection with a Complainant in email correspondence is obviously not of a nature to lay the foundations for any legitimate interests or rights. The Respondent has put no evidence before the Panel, and was not authorised in any way by the Complainant to register or use a domain name incorporating its trademark, and nothing indicates that the Respondent is known by the disputed domain name or has any legitimate connection with it.
Therefore the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The only evidence of activity in relation to the disputed domain name is apparent attempts by the Respondent to use it for the purpose of phishing – that is impersonating the Complainant to gain the confidence of unsuspecting Internet users and correspondents. The CLIFFORD CHANCE trademark is well established in the sphere of legal services across multiple jurisdictions and is distinctive in relation to such services. The Respondent could hardly fail to be aware of it, and nothing other than that could explain the Respondent's adoption of the two names concerned, and the addition of the term "law". All this amounts to a deliberate scheme to acquire a domain name for wholly dishonest purposes.
Therefore the Panel holds that the disputed domain name was registered and used in bad faith.
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 <cliffordchancelaw.com> be transferred to the Complainant.
William A. Van Caenegem
Date: July 3, 2018