WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Clifford Chance LLP v. David Brent

Case No. D2019-2126

1. The Parties

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

The Respondent is David Brent, Germany.

2. The Domain Name and Registrar

The disputed domain name <cliffordchancefirms.com> 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 August 30, 2019. On September 2, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 3, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 4, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 5, 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 September 6, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 26, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 27, 2019.

The Center appointed Colin O’Brien as the sole panelist in this matter on October 3, 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, a well-known law firm, has been - through its predecessors and associated entities - known as Clifford Chance since 1987. The Complainant registered and used the <cliffordchance.com> domain name since 1994. The Complainant owns worldwide registrations of the CLIFFORD CHANCE trademark, including United Kingdom trademark registration No. 1578701 registered on August 18, 1995; European Union trademark registration No. 77420 registered on December 9, 1998; United States of America trademark registration No. 2775904 registered on October 21, 2003.

The disputed domain name <cliffordchancefirms.com> was registered on August 20, 2019. According to a review by the Panel on October 14, 2019, the disputed domain name was not in current use for a developed Internet site but rather resolved to the Registrar’s landing page with pay-per-click (“PPC”) links offering legal services competing with the Complainant.

On August 22, 2019, the Complainant sent the Respondent a request via the concerned Registrar’s Contact Request Form. The message read: “Your domain name includes our well known CLIFFORD CHANCE name and trade mark. Please contact me urgently if you believe you have a lawful reason to register and use this name. Failing a satisfactory response we will take further action.”

The Respondent did not respond to the Complaint’s request.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to its well-known CLIFFORD CHANCE trademark; that the Respondent lacks any rights or legitimate interests in the disputed domain name, and that the disputed domain name was registered and has been used in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has demonstrated it owns registered trademark rights in the mark CLIFFORD CHANCE. The addition of the descriptive phrase “firms” is insufficient to avoid confusion. In fact, given that the Complainant is well known for legal advisory services, the descriptive term “firms” is an apt reference to the Complainant’s services. The addition of such term does not change the overall impression of a mark or avoid confusion. See MasterCard International Incorporated v. Eric Hochberger, WIPO Case No. D2006-1050 (finding the addition of the generic term “offers” in the domain name <mastercard-offers.com> is insufficient to avoid confusion).

Accordingly, the disputed domain name is confusingly similar to a mark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Complainant has presented a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name; has not at any time been generally known by the disputed domain name; has not used or made demonstrable preparations to use the disputed domain name and is not making a legitimate noncommercial of fair use of the disputed domain name. The Complainant also submits that the Respondent’s likely intention is to illegitimately deceive the public that the disputed domain name is somehow connected to the Complainant with a view to tarnishing the Complainant’s trademarks.

After a complainant has made a prima facie case, the burden of production shifts to the respondent to present evidence demonstrating rights or legitimate interests in the domain name. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.

Here, the Respondent has provided no evidence of any right or legitimate interest in the disputed domain name. No justification appears from the Respondent’s name, “David Brent,” or from the Respondent’s use on the Internet.

In the absence of any evidence indicating a legitimate reason for registering the disputed domain name, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel finds that the Complainant has satisfied its burden of proof in establishing the Respondent’s bad faith registration and use. Paragraph 4(b)(iv) states that evidence of bad faith may include a respondent’s use of a domain name to intentionally attempt to attract, for commercial gain.

Due to the worldwide renown of the CLIFFORD CHANCE mark, it is inconceivable that the Respondent registered the disputed domain name without knowledge of the Complainant.

Currently, the disputed domain name resolves to the Registrar’s landing page with PPC links offering legal services competing with the Complainant. See section 3.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). However, the Complainant has submitted that an MX (mail exchange) record has been linked to the disputed domain name that could allow the Respondent to send and receive emails. This action infers the Respondent intends to use the disputed domain name to contact people in a manner which would lead the recipients to believe that they are being contacted by the Complainant. In the absence of any evidence or explanation from the Respondent, the Panel finds that the only plausible basis for registering the disputed domain name would be for illegitimate purposes.

Accordingly, the Panel concludes that the Complainant has satisfied paragraph 4(a)(iii) of the Policy.

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 <cliffordchancefirms.com> be transferred to the Complainant.

Colin O’Brien
Sole Panelist
Date: October 14, 2019