WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Clifford Chance LLP v. WhoisGuard, Inc. / Ellen Cheung / ons onso / Domain Administrator
Case No. D2019-0050
1. The Parties
The Complainant is Clifford Chance LLP of London, the United Kingdom, represented by Clifford Chance, LLP, the United Kingdom.
The Respondent is WhoisGuard, Inc. of Panama, Panama / Ellen Cheung of Chicago, United States of America (“United States”) / ons onso of New York, United States / Domain Administrator of London, the United Kingdom.
2. The Domain Names and Registrar
The disputed domain names <cliffordcchance.com>, <cliffordchace.com>, and <cllffordchance.com> (the “Domain Names”) are registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 9, 2019. On January 9, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On January 9, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 15, 2019 providing the registrant and contact information disclosed by the Registrar, and requesting the Complainant to submit an amended Complaint adding the Registrar-disclosed registrants as formal Respondents and provide relevant arguments or evidence demonstrating that all named Respondents are the same entity and/or that all Domain Names are under common control; and/or file a separate complaint for any domain name for which it is not possible to demonstrate that all named Respondents are in fact the same entity and/or that all Domain Names are under common control and indicate which domain name will no longer be included in the current Complaint.
The Complainant filed an amended Complaint on January 21, 2019.
The Center verified that the Complaint together with the amended 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 January 24, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 13, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 14, 2019.
The Center appointed Willem J. H. Leppink as the sole panelist in this matter on February 18, 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
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, other countries of the European Union, and the United States. The Complainant has registered the trademark CLIFFORD CHANCE in over 20 jurisdictions around the world, including the United Kingdom trademark with number 1578701, registered on August 18, 1995 and with number 1578702, registered on August 29, 1995; European Union trademark number 77420 registered on December 9, 1998; and United States trademark number 2775904 registered on October 21, 2003 (the “Trade Mark”).
The Complaint is the owner of the domain name <cliffordchance.com>, which was registered in 1994. In addition, the Complainant has registered more than 180 domain names that include the word “clifford" together with the word “chance”.
The Domain Names were registered on May 25, 2018 (<cliffordcchance.com>), November 16, 2018 (<cliffordchace.com>) and December 3, 2018 (<cllffordchance.com>).
The Domain Names <cllffordchance.com> and <cliffordchace.com> were used to send phishing emails from email addresses connected to the Domain Names. The Domain Name <cliffordcchance.com> is inactive.
5. Parties’ Contentions
The following is a summary of the Complainant’s contentions.
The Domain Names are highly similar to the Trade Mark.
The Domain Names were being used in a phishing emails, which purported to come from persons employed by the Complaint. Where an email addresses connected to a disputed domain name is used to mislead vendors of a complainant into paying fraudulent invoices, such use cannot be considered a legitimate noncommercial or fair use of a domain name.
The Respondent used minor permutations of the Trade Mark in an attempt to mislead the Complainant’s clients into paying fraudulent invoices. In response to the email sent from the Domain Names, a client of the Complainant paid a significant sum relating to the fraudulent invoice. The registration of the Domain Names by the Respondent can only be to mislead clients of the Complainant into paying other fraudulent invoices. The Respondent cannot, therefore, be considered to be making a legitimate noncommercial or fair use of the Domain Names.
The Respondent has intentionally attempted to attract the Complainant’s client to engage with the Respondent, by creating a likelihood of confusion with the Trade Mark and the Respondent, in bad faith, with the view to making a fraudulent financial gain.
The Respondent used the Domain Names to send phishing emails. The phishing emails sent by the Respondent are clear evidence that the domains were registered and used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Consolidation of Multiple Respondents under the Policy and Rules
The Complainant has requested consolidation of the Respondents in this case.
Section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) summarizes the consensus view of UDRP panels on the consolidation of multiple respondents, in part, as follows: “Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario.”
The Complainant asserts, among other things, that the Respondents should be treated as one in this proceeding, as the disputed domain names seem to be under common control. The three disputed domain names have been registered via the same Registrar and with the same privacy service; the disputed domain names <cllffordchance.com> and <cliffordchace.com> have the same Internet Protocol (IP) address and have both been used to send phishing emails purporting to come from employees of the Complainant; the three disputed domain names are highly similar as they all target minor permutations of the Complainant’s specific Trade Mark in the legal industry.
The Panel accepts these arguments in favor of consolidation and grants the request to consolidate.
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:
(i) the 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
B. Identical or Confusingly Similar
The Complainant must demonstrate that it has rights in a trademark or service mark and, if so, the domain name must be shown to be identical or confusingly similar to that mark.
The Complainant has shown that it has rights in the Trade Mark.
The Domain Names differ from the Trade Mark as follows:
The domain name <cllffordchance.com>, replaces the second letter of the Complainant’s Trade Mark (“i”) with an “l”;
The domain name <cliffordcchance.com>, adds the letter “c” between the words “Clifford” and “chance” that comprise the Trade Mark; and
The domain name <cliffordchace.com>, omits the letter “n” from the word “chance” that is contained in the Complainant’s Trade Mark.
It is well established that a domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered to be confusingly similar to the relevant mark for purposes of the first element (see section 1.9 of the WIPO Overview 3.0). The above mentioned typos are, in the view of the panelist, a clear indication of intentional misspelling of the Trade Mark.
In addition, with regard to the suffixes “.com” (which indicates that the Domain Names are registered in the “.com” generic Top-Level Domain “gTLD”), as it was established in many previous UDRP decisions (see A.P. Møller v. Web Society, WIPO Case No. D2000-0135; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Arab Bank for Investment And Foreign Trade (ARBIFT) v. Mr. Kenn Wagenheim / firstname.lastname@example.org, WIPO Case No. D2000-1400; Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447; and Crédit Industriel et Commercial SA v. Name Privacy, WIPO Case No. D2005-0457), it does not generally affect the analysis under the first element of the Policy for the purpose of determining whether a domain name is identical or confusingly similar; indeed, the suffix is a necessary component of the domain name and does not give any distinctiveness.
For all the foregoing reasons, the Panel is satisfied that the first element of the Policy is met.
C. Rights or Legitimate Interests
The Respondent did not reply to the Complainant’s contentions. For that reason, the Panel has taken careful note of the factual assertions that have been made and supported by evidence by the Complainant.
In particular, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has rights or legitimate interests in the Domain Names, such as:
(i) use or preparation to use the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services prior to notice of the dispute; or
(ii) being commonly known by the Domain Names (as an individual, business or other organization) even if the Respondent has not acquired any trademark or service mark rights; or
(iii) making legitimate noncommercial or fair use of the Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence in the case file that the Respondent has any rights or legitimate interests in the Domain Names.
The Respondent does not seem to be affiliated with the Complainant in any way. There is no evidence that “cllffordchance”, “cliffordcchance”, and/or “cliffordchace” is the Respondent’s name or that the Respondent is commonly known as “cllffordchance”, “cliffordcchance”, and/or “cliffordchace”. There is also no evidence that the Respondent is, or has ever been, a licensee of the Complainant or that the Respondent has ever asked, or has ever been permitted in any way by the Complainant to register or use the Complainant’s Trademark, or to apply for or use any domain name incorporating the Trademark.
Furthermore, the use of the Domain Name cannot be considered a bona fide offering of goods or services. In particular, the Respondent did not demonstrate any use or demonstrable preparation to use the Domain Name in connection with a bona fide offering of goods or services. It is also clear that the Respondent is not making any legitimate noncommercial or fair use of the Domain Name.
Moreover, the use of a domain name for illegal activity (e.g., phishing or other types of fraud) can never confer rights or legitimate interests on a respondent (see section 2.13 of WIPO Overview 3.0).
Finally, given the circumstances of this case, the Panel finds that the Respondent’s lack of rights or legitimate interests in the Domain Name may also be inferred by the fact that no response was filed by the Respondent. According to earlier UDRP panels, “non-response is indicative of a lack of interests inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights” (see GA Modefine S.A. and Giorgio Armani S.p.A. v. Yoon-Min Yang, WIPO Case No. D2005-0090; and Pomellato S.p.A. v. Richard Tonetti, WIPO Case No. D2000-0493).
Therefore, based on the evidence, the Panel is satisfied that the second element of the Policy is met.
D. Registered and Used in Bad Faith
The Panel finds that the Domain Names were registered and are being used in bad faith.
In the Panel’s view, there is no other plausible explanation why the Respondent registered the Domain Name, other than the Respondent being aware of the Complainant and the Trade Mark.
The use of a domain name for per se illegitimate activity such as phishing is manifestly considered evidence of bad faith (see section 3.1.4 of WIPO Overview 3.0). The Respondent sent phishing emails from email addresses connected to the Domain Names. See also L’Oréal v. Cimpress Schweiz GmbH, WIPO Case No. DCO2017-0021, in which it was decided that it is “established case law that the use of a disputed domain name for the purpose of defrauding Internet users by the operation of a ‘phishing scheme’ is perhaps the clearest evidence of registration and use of a domain name 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 names, <cliffordcchance.com>, <cliffordchace.com>, and <cllffordchance.com> be transferred to the Complainant.
Willem J. H. Leppink
Date: March 4, 2019