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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Clifford Chance LLP v. Domain Administrator, See PrivacyGuardian.org/ rayzy dynamics

Case No. D2019-2127

1. The Parties

The Complainant is Clifford Chance LLP, United Kingdom, self-represented.
The Respondent is Domain Administrator, See PrivacyGuardian.org/ rayzy dynamics, United States of America.

2. The Domain Name and Registrar

The disputed domain name <cliffordnchance.com> is registered with NameSilo, 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 August 3, 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 9, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 29, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 30, 2019.

The Center appointed Alistair Payne as the sole panelist in this matter on October 2, 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 an international law firm that has been known by the name of “Clifford Chance” since 1987. The Complainant owns various registered trade mark rights worldwide for the CLIFFORD CHANCE mark including United Kingdom trade mark registration 1578702 registered on August 29, 1995, European Union trade mark registration number 77420 registered on December 9, 1998, and United States trade mark registration 2775904 registered on October 21, 2003. The Complainant operates a website at <cliffordchance.com> and has owned this domain name since September 9, 1994.

The disputed domain name was registered on April 23, 2019. While it defers to a blank holding page it is being used by the Respondent or its agents for the purposes of sending emails using the domain name root “cliffordnchance.com” as if the sender is an employee and/or is authorised to do so by the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain name only differs from the CLIFFORD CHANCE mark, in which it owns registered trade mark rights, by one letter. It says that particularly considering the distinctive nature and degree of renown attaching to the CLIFFORD CHANCE mark that the disputed domain name is confusingly similar to the Complainant’s registered trade marks as set out above.

The Complainant says that it became aware of <cliffordnchance.com> when it was alerted by a third party recipient of a phishing email which purported to come from a person employed by the Complainant. The Complainant submits that based on Accenture Global Services Limited v Yankee, Yankees, WIPO Case No. D2018-0217, where an email address 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. It says that in the current case the phishing email sent by the Respondent was sent from an email address connected to the disputed domain name <cliffordnchance.com>. The Respondent used a minor permutation of the Complainant’s trade mark in an attempt to mislead the Complainant’s client into making payment in anticipation of receiving an inheritance. The Complainant therefore submits that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.

In addition, says the Complainant, 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 domain name in connection with a bona fide offering of goods or services. According to the Complainant, there is also no evidence that the Respondent has been commonly known by the disputed domain name.

The Complainant says that the evidence demonstrates that the Respondent’s likely intention is to deceive the public into thinking that the disputed domain name is somehow connected to the Complainant with a view to making a financial gain and tarnishing the Complainant’s trade marks and that this amounts to use of the disputed domain name as an instrument of fraud and therefore to use in bad faith. The Complainant also submits that in circumstances where a respondent is clearly aware of a complainant’s trade marks and the intention of the domain name registration has been to attract third parties to engage with the respondent in connection with a domain name which is confusingly similar to the complainant’s that this amounts to evidence of registration and use of the disputed domain name in bad faith under Paragraph 4(b)(iv) of the Policy.

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 that it owns registered trade mark rights in the CLIFFORD CHANCE mark including United Kingdom trade mark registration No. 1578702 registered on August 29, 1995, European Union trade mark registration No. 77420 registered on December 9, 1998, and United States trade mark registration No. 2775904 registered on October 21, 2003. The disputed domain name differs from the Complainant’s mark by the inclusion of one additional letter, namely the letter “n” between the names “clifford” and “chance”. As the Complainant’s entire CLIFFORD CHANCE mark is wholly incorporated into the disputed domain name, the inclusion of this additional letter does not distinguish the disputed domain name and the Panel finds that it is confusingly similar to the Complainant’s mark. As a result, the Complaint succeeds under this element of the Policy.

B. Rights or Legitimate Interests

The Complainant has submitted that 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. According to the Complainant, there is also no evidence that the Respondent has been commonly known by the disputed domain name. Further, the Complainant says that it became aware of the disputed domain name when it was alerted to it by a third party recipient of a phishing email which purported to come from a person employed by the Complainant. It appears, according to the Complainant, that the Respondent has used a minor permutation of the Complainant’s trade mark in an attempt to mislead the Complainant’s client into making payment in anticipation of receiving an inheritance which, says the Respondent, is not a legitimate or noncommercial or fair use of the disputed domain name.

The Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interest in the disputed domain name, which case has not been rebutted by the Complainant. It is clear to the Panel, as further described under Part C below, that the Respondent has used, or allowed the disputed domain name to be used, for fraudulent purposes which is not consistent with a right or legitimate interest in the disputed domain name. Accordingly, the Complainant also succeeds under this element of the Policy.

C. Registered and Used in Bad Faith

The disputed domain name was registered on April 23, 2019 which was many years after the first use of the CLIFFORD CHANCE name and mark by the Complainant and after the registration of the trade mark registrations set out above. The Complainant says that it became aware of <cliffordnchance.com> when it was alerted to the disputed domain name by a third party recipient of a phishing email which purported to come from a person employed by the Complainant. In these circumstances it is most likely that the Respondent was aware of the Complainant’s business and use of the CLIFFORD CHANCE name and mark when it registered the disputed domain name on April 23, 2019, and on this basis the Panel finds that the disputed domain name was registered in bad faith.

In this case the Respondent appears to have used the disputed domain name for the purposes of sending a phishing email with an email address connected to the disputed domain name <cliffordnchance.com> in order to confuse the recipient into thinking that it was dealing with the Complainant who owns the domain name <cliffordchance.com>. The phishing email attempted to mislead the Complainant’s client into making payment in anticipation of receiving an inheritance which amounts to the Respondent using the disputed domain name as a fraudulent instrument. This is use of the disputed domain name in bad faith under the Policy and is exactly the kind of conduct that the Policy is intended to proscribe, similar to the findings of the panel in Accenture Global Services Limited v Yankee, Yankees, WIPO Case No. D2018-0217. As a result the Panel finds that the Complaint also succeeds under this element 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 <cliffordnchance.com> be transferred to the Complainant.

Alistair Payne
Sole Panelist
Date: October 8, 2019

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