WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Clifford Chance LLP v. James Bond (Domain Holder - c326030)

Case No. DRO2011-0011

1. The Parties

The Complainant is Clifford Chance LLP of London, United Kingdom, represented by Clifford Chance Badea SCA, Romania.

The Respondent is James Bond (Domain Holder - c326030) of Manchester, United Kingdom of Great Britain and Northern Ireland (“United Kingdom” or “UK”).

2. The Domain Name and Registrar

The disputed domain name <cliffordchance.ro> is registered with RNC.ro.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 22, 2011. On September 22, 2011, the Center transmitted by email to RNC.ro a request for registrar verification in connection with the disputed domain name. On September 23, 2011, RNC.ro transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On September 30, 2011, the Center sent an email communication to the Parties regarding the language of the proceedings. On the same date, the Complainant requested that English be the language of the proceedings. The Respondent did not submit any comment related to the language of the proceedings.

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(a) and 4(a), the Center formally notified the Respondent of the Complaint in English and Romanian, and the proceedings commenced on October 7, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 27, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 31, 2011.

The Center appointed Beatrice Onica Jarka as the sole panelist in this matter on November 14, 2011. 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.

Referring to the language of these proceedings, the Panel notes that the disputed domain name was registered, according to information provided by RNC.ro in March 2001. At this time, and consistent with this Panel’s similar factual findings in prior cases (see: Inter-IKEA Systems B.V. v. SC Agis International Sport S.R.L.,WIPO Case No. DRO2006-0001, DaimlerChrysler Corporation v. Web4COMM SRL ROMANIA, WIPO Case No. DRO2006-0003, Prelatura Del Opus Dei, Region de España v. Sebastian Koga, WIPO Case No. DRO2006-0006) it appears that the registration agreement was available both in English and Romanian and the registrant did not have the option of choosing between the two languages.

Moreover, considering

- the request for the language proceedings made by the Complainant to be English

- that neither the Complainant nor the Respondent are Romanian,

- the place of the Respondent seems to be Manchester, United Kingdom, while its technical contact is situated in New York, United States of America (“US”),

- the Respondent did not object to the use of English as the language of these proceedings, the Panel determines, in accordance with the Complainant’s request and paragraph 11(a) of the Rules, that the language of these administrative proceedings shall be the English language.

4. Factual Background

The Complainant is a law firm based in London, United Kingdom and was created from the merger of two city law firms Clifford-Turner and Coward Chance in 1987. Since that time, the firm has traded under the professional name and mark CLIFFORD CHANCE in respect of which it is the proprietor of several trademark registrations, including:

- Community Trade Mark CLIFFORD CHANCE (registration number: 77420) in respect of goods and services in classes 16, 35, 41 and 42. The application date for this trade mark is April 1, 1996.

- Romanian registered trade mark CLIFFORD CHANCE (registration number: 078777) in respect of goods and services in classes 9, 16, 35, 41 and 42. The application date for this trade mark is June 19, 2006.

The association Clifford Chance with Badea, Georgescu & Asociatii located in Romania was formalized under the name Clifford Chance Badea on June 1, 2011.

The disputed domain name was registered in March 2001.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

- It is the holder of several CLIFFORD CHANCE trademark registrations dating back from 1996.

- It has developed common law passing off rights in the CLIFFORD CHANCE marks, by virtue of the substantial reputation it has acquired in this brand through long and continuous use.

- It is the registrant of a number of domain names incorporating the mark CLIFFORD CHANCE, including <cliffordchance.com>, <cliffordchance.eu>, <clifford-chance.ro>, <clifford-chance.com.ro> and <cliffordchance.com.ro>.

- In 2006, Clifford Chance formed an association with the Romania based law firm Badea, Georgescu & Asociatii, which was formalized under the name Clifford Chance Badea on June 1, 2011.

- The disputed domain name is identical to the Complainant's trademarks.

- 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 disputed domain name is hosting a page comprising links to websites of other legal firms (which do not belong to the Clifford Chance group) and to other websites revolving around legal topics.

- There is no evidence that the Respondent has been commonly known by the disputed domain name.

- There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.

- Since Clifford Chance established its presence in Romania, by association with the Romanian law firm Badea, Georgescu & Asociatii, registration of the domain name <cliffordchance.ro> has been desired. However, a search in the WhoIs database available on the ROTLD website has revealed the fact that the domain name in question has been registered on March 5, 2001 by a third party.

- On April 15, 2010 the owner of the disputed domain name was contacted through the form available on the ROTLD website and also through the technical contact form and requested to transfer the disputed domain name to Badea Clifford Chance, but never replied.

- By virtue of the widespread use and reputation of the CLIFFORD CHANCE trademark, both at an international level and in Romania, the individuals of Romania will inevitably believe that the owner of the <cliffordchance.ro> domain name is the Complainant or an entity associated with the Complainant.

- The use of the disputed domain name can only constitute a misrepresentation of an association with Clifford Chance, and consequently passing off and trademark infringements.

- There are no plausible circumstances in which the Respondent could register or use the disputed domain name <cliffordchance.ro> in good faith.

- The page contains numerous links to websites belonging to legal firms outside the Clifford Chance group or to websites which address various legal topics, which indicates that the disputed domain name’s owner has created a likelihood of confusion with the Complainant's trade mark, attracting Internet users to his website, for commercial gain.

- By depriving the Complainant of a domain name that incorporates his trade name, without any good faith basis, the Respondent has disrupted the business of the Complainant.

- There is no indication that the website is otherwise active or that Respondent, owner of the disputed domain name, is preparing to make use of the disputed domain name in any other way and this constitutes proof of registration 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, in the opinion of the Panel, that it has well-established trademark rights through registration and also through prior use in commerce for many years, in the CLIFFORD CHANCE trademarks.

The disputed domain name <cliffordchance.ro> is confusingly similar to the Complainant’s trademark as it includes in its entirety the Complainant’s trademark CLIFFORD CHANCE.

The addition of a country level suffix such as “.ro” does not affect the disputed domain name for the purpose of determining whether it is identical or confusingly similar to a trademark (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh,WIPO Case No. D2004-0488; Auchan v. Web4comm Srl Romania, WIPO Case No. DRO2005-0001; and OSRAM GmbH, v. web4COMM SRL Romania, WIPO Case No. DRO2005-0004).

For these reasons, the Panel finds the Complainant has established the first element of the Policy.

B. Rights or Legitimate Interests

The disputed domain name is hosting a page comprising links to websites of other legal firms (which do not belong to the Clifford Chance group) and to other websites revolving around legal topics. The Complainant is using its CLIFFORD CHANCE trademarks, mainly for its legal services.

Moreover, there is no evidence that the Respondent has been commonly known by the disputed domain name and no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.

However, the disputed domain name was registered in March 2001 and the Complainant has filed this Complaint only 10 years later. Such situation determines the Panel to reflect, as other UDRP Panels before it (see Mile, Inc. v. Michael Burg, WIPO Case No. D2010-2011, regarding the domain name <lionsden.com>) whether such a lengthy delays in seeking legal or administrative remedies could not have “[…] the effect of eroding or undermining the complainant’s arguments with respect to the respondent’s rights or legitimate interests in the disputed domain name[…]”.

On the other side, considering of the Complainant’s well-known trademark CLIFFORD CHANCE, together with the location of the Respondent in the UK and of its technical contacts in the US, the Respondent must in all likelihood have known, when registering the disputed domain name that the Respondent could not claim rights or interests in the disputed domain name. Moreover, the content of the website and the identifications data of the Respondent, which proved to be incorrect according to the records available in these proceedings, the Panel is rather persuaded of the fact that the Respondent must have known about the Complainant’s trademark at the time it registered the disputed domain name.

In addition, the Respondent did not reply to the Complaint.

Therefore, the Panel considers that there is no evidence of the Respondent's rights or legitimate interests in the disputed domain name and consequently the Panel finds that the Complainant has established the second element of the Policy.

C. Registered and Used in Bad Faith

As mentioned above, the Panel considers that the Respondent must in all likelihood have known, when registering the disputed domain name, about the Complainant’s rights in the CLIFFORD CHANCE trademarks.

The page contains numerous links to websites belonging to legal firms outside the Clifford Chance group or to websites which address various legal topics, which indicates that the disputed domain name owner’s intention was to create a likelihood of confusion with the Complainant's trade mark, attracting Internet users to his website, for commercial gain, from the moment of the registration which actually took place in all likelihood, with this purpose.

For such reasons, the Panel finds that the disputed domain name had been registered and is being used in bad faith and accordingly the third element of the Policy had been proven by the Complainant.

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 domain name <cliffordchance.ro> be transferred to the Complainant

Beatrice Onica Jarka
Sole Panelist
Dated: November 28, 2011