WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Clifford Chance LLP v. Zhao Xing Ming

Case No. DCC2018-0019

1. The Parties

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

The Respondent is Zhao Xing Ming of Huai An, Jiang Su, China, self-represented.

2. The Domain Name and Registrar

The disputed domain name <cliffordchance.cc> is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on November 30, 2018. On December 3, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 4, 2018, 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 December 5, 2018 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 December 10, 2018.

On December 5, 2018, the Center sent an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on December 10, 2018. The Respondent requested that Chinese be the language of the proceeding on December 13, 2018.

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 in English and Chinese of the Complaint, and the proceedings commenced on December 13, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 2, 2019. On December 14, 2018 and December 17, 2018, the Respondent sent two emails in Chinese reiterating that it is not able to understand English.

On December 17, 2018, the Respondent offered to transfer the disputed domain name to the Complainant for free. The Center notified the Parties that if they wish to explore settlement options, the Complainant should submit a request for suspension by December 24, 2018. On December 17, 2018, the Complainant submitted a request for suspension. Therefore, the Center notified the Parties that the proceeding was suspended until January 16, 2019. On January 18, 2019, the Complainant requested to reinstitute the proceeding. The Center notified the Parties that the proceeding was reinstituted and the due date for Response was February 3, 2019. The Respondent did not submit any substantive Response. Accordingly, on February 4, 2019, the Center notified the Parties that it would proceed with panel appointment.

The Center appointed Francine Tan as the sole panelist in this matter on February 7, 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, its predecessors and associated entities have been known as Clifford Chance since 1987 when the law firms Clifford-Turner and Coward Chance merged.

The Complainant has registered and uses the trade mark CLIFFORD CHANCE in respect of, inter alia, legal and advisory services in many jurisdictions around the world including in the United Kingdom (“UK”), the European Union (“EU”), and the United States of America (“U.S.)”. The Complainant has an International trade mark registration for the mark CLIFFORD CHANCE, which includes a designation for China (No. 611881A, registered on November 12, 1993), as well as UK trade mark registrations (No. UK00001578701, registered on August 18, 1995, and No. UK00001578702, registered on August 29, 1995), EU trade mark registration (No. 000077420, registered on December 9, 1998) and U.S. trade mark registration (No. 2775904, registered on October 21, 2003).

The Complainant’s main website is located at “www.cliffordchance.com”. The domain name <cliffordchance.com> was registered on September 9, 1994. The Complainant has, additionally, registered more than 200 domain names comprising the word “clifford” in combination with the word “chance”. The Complainant states that it receives more than 425,000 page views per month on average, the majority of which are accessed by key words using combinations of “clifford” and “chance”.

The disputed domain name was registered on July 12, 2017. The Complainant tendered evidence showing that the disputed domain name resolves to a parking page.

5. Parties’ Contentions

A. Complainant

The disputed domain name is identical to the Complainant’s CLIFFORD CHANCE mark which is well known in respect of legal services around the world. To make matters worse, the legal press and others often shorten “Clifford Chance” to “cc” so that a portion of the relevant public may perceive the disputed domain name to convey “cliffordchance.cliffordchance”.

The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant came to know of the disputed domain name as a result of the Respondent contacting the Complainant by email on September 27, 2018, informing the Complainant that it would put the disputed domain name into the market and the Complainant had the opportunity to purchase it. The Complainant put the Respondent on notice on October 31, 2018 of the Complainant’s rights in the CLIFFORD CHANCE trade mark. On November 1, 2018, the Respondent replied by email, acknowledging that it had infringed the Complainant’s trade mark rights but maintained that the disputed domain name was available for purchase, in the amount of EUR 2,590.

There is no evidence of 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. The Respondent has no legitimate interests in the disputed domain name and the evidence demonstrates that the Respondent’s intention is to illegitimately make a financial gain.

The disputed domain name was registered and is being used by the Respondent in bad faith, in order to prevent the Complainant from reflecting its CLIFFORD CHANCE trade mark in connection with the country code-Top-Level Domain (“ccTLD”) “.cc”. The use of the disputed domain name infringes the Complainant’s rights in the CLIFFORD CHANCE trade mark. Further, the Respondent has requested payment for the disputed domain name from the Complainant in sums substantially above the out-of-pocket expenses for registering domain names. The Respondent’s registration of the disputed domain name has clearly been for the intention to mislead Internet users into assuming that the website belongs to the Complainant or by implying a connection with the Complainant.

B. Respondent

Apart from the emails from the Respondent mentioned in Section 3 hereinabove, the Respondent did not file a formal Response although the Center provided the Respondent with a model Response in Chinese.

6. Discussion and Findings

6.1 Procedural Issue: Language of the Proceeding

The Registration Agreement is in Chinese, but the Complaint was filed in English and the Complainant requested that English be adopted as the language of the proceeding. The basis for the Complainant’s request is that the Respondent has at all times corresponded with the Complainant in English.

The Respondent responded on the issue of the language of the proceeding, claiming that it had not been in contact with the Complainant and that it cannot understand English since it is from China and its native tongue is Chinese.

Paragraph 11 of the Rules stipulates that, unless otherwise agreed by the parties, the language of the proceeding is the language of the registration agreement. Nevertheless, panels have the authority to determine otherwise.

Section 4.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“the WIPO Overview 3.0”) states that “Noting the aim of conducting the proceedings with due expedition, paragraph 10 of the UDRP Rules vests a panel with authority to conduct the proceedings in a manner it considers appropriate while ensuring both that the parties are treated with equality, and that each party is given a fair opportunity to present its case.”

In this regard, the WIPO Overview 3.0 goes on to identify certain scenarios as warranting proceeding in a language other than that of the registration agreement. These include “evidence showing that the respondent can understand the language of the complaint”, “the language/script of the domain name particularly where the same as that of the complainant’s mark”, “prior correspondence between the parties” and “other indicia tending to show that it would not be unfair to proceed in a language other than that of the registration agreement”.

The Panel notes that before the proceeding, the Respondent initiated contact with the Complainant and that the language of communication, both times, was in English. The Respondent’s first communication reads: “This domain name will be put into the market, this is your good opportunity to acquire, and have a preferential price. It’s a good tool to explore your market. The .cc domain name is treated as ‘Alternative to .COM’ by famous registrars such as Dynadot and Godaddy, and is already the latest popular suffix. Domain name suffix .CC by Verisign management (.com/.net and other international domain name is also managed by Verisign).”

The Respondent’s second communication by email reads: “Thanks for your email. Sorry we violated your company's trademark rights, and I understand that you said, so this domain could be sold to your company at a low price. Only 2590 EUR. We could transfer the domain name via Sedo.com(Germany) or Escrow.com(USA), and the Transfer will be finished in one week.”

The Respondent appears to be very comfortable with the English language. Furthermore, taking into account the language of the words making up the disputed domain name and the fact that the disputed domain name resolves to a website mainly in English and the Respondent initiated the contact with the Complainant in English, the Panel is persuaded that it would not be unfair to proceed in English in this case.

6.2 Substantive Issues

A. Identical or Confusingly Similar

It is uncontroverted that the Complainant has rights in the CLIFFORD CHANCE trade mark based on its long use and various trade mark registrations, including in China where the Respondent is located. The disputed domain name incorporates the CLIFFORD CHANCE trade mark in its entirety and is followed by the ccTLD “.cc”. It is well established that the ccTLD may be disregarded when assessing whether a domain name in dispute is identical or confusingly similar to a complainant’s trade mark.

The Panel therefore finds that the disputed domain name is identical to the Complainant’s trade mark.

The Complainant has satisfied the first element of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

In the Panel’s view, the Complainant has made a prima facie case against the Respondent. The Complainant did not authorize the Respondent’s use and registration of a domain name incorporating its CLIFFORD CHANCE trade mark and has no relationship with the Respondent. Having done so, the burden of production shifts to the Respondent. However, the Respondent has not produced any evidence of its rights or legitimate interests in the disputed domain name. It is difficult to envisage how the Respondent would have been able to meet this burden in view of the long-established use and reputation of the Complainant’s trade mark in connection with legal services. The Respondent, by acknowledging to the Complainant that it had “violated” the Complainant’s trade mark rights and offering to transfer the disputed domain name for EUR 2,590, has in fact demonstrated that it has no rights or legitimate interests in the disputed domain name.

The Complainant’s evidence shows that the disputed domain name has been used in relation to a parking page pointing to third-party websites. Such use of the disputed domain name containing the well-known trade mark of the Complainant does not give rise to any possibility of finding for the Respondent. Furthermore, the Panel, having visited the Internet site linked to the disputed domain name, has found that the disputed domain name now resolves to a different layout of a parking page showing pay-per-click links to, inter alia, “Law Firm”, “Lawyer”, “Legal Jobs”, “Recruitment” and “Careers”. Additionally, at the top of the page, there is a statement which reads “The domain cliffordchance.cc may be for sale. Click here to inquire about this domain”. This independent research undertaken by the Panel is consistent with the consensus view that such inquiries are appropriate where the panel wishes “to obtain more information about the respondent and the use of the domain name” (see Section 4.5 of the WIPO Overview 3.0).

The circumstances of this case show a blatant disregard and abuse on the part of the Respondent of the Complainant’s rights in its CLIFFORD CHANCE trade mark which the Respondent itself has acknowledged to have “violated”. The use of the disputed domain name to generate profit from pay-per-click links to competitors’ sites or other sites offering related services does not constitute a bona fide offering of goods or services.

The Panel therefore concludes that the Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant has satisfied the second element of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

The primary objective of the Policy is to provide a way for trade mark owners to deal with abusive registrations of domain names where the registrant seeks to take advantage of the fame and reputation of a brand owner’s trade mark. In this case, the choice of the disputed domain name cannot be explained other than as a reference to the Complainant’s trade mark.

In view of the findings made under Section 6.2B hereinabove, the Panel finds that the Respondent was more likely than not well-acquainted with the Complainant’s CLIFFORD CHANCE trade mark and registered or acquired the disputed domain name primarily for the purpose of selling or otherwise transferring the disputed domain name to the Complainant or to a competitor for valuable consideration in excess of documented out-of-pocket costs directly related to the disputed domain name (paragraph 4(b)(i) of the Policy).

In addition, the use of the disputed domain name resolving to a pay-per-click website with commercial links to third parties is further evidence of bad faith use as described under paragraph 4(b)(iv) of the Policy.

The Panel therefore concludes that the disputed domain name has been registered and is being used in bad faith.

The Complainant has satisfied the third element of paragraph 4(a) 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 <cliffordchance.cc> be transferred to the Complainant.

Francine Tan
Sole Panelist
Date: February 8, 2019