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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Clifford Chance LLP v. Beroca Holdings B.V.I. Limited

Case No. D2007-0693

 

1. The Parties

The Complainant is Clifford Chance LLP, London, United Kingdom of Great Britain and Northern Ireland, represented by Clifford Chance, LLP, of the United Kingdom of Great Britain and Northern Ireland.

The Respondent is Beroca Holdings B.V.I. Limited, Administrative Contact, Wayne Nicholas, Mayfair, London, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <cliffordchance.mobi> is registered with EuroDNS S.A.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the Center) on May 9, 2007. On May 9, 2007, the Center transmitted by email to EuroDNS S.A. a request for registrar verification in connection with the domain name at issue. On June 18, 2007, EuroDNS S.A. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the Policy), 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, and the proceedings commenced on June 19, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was July 9, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 12, 2007.

The Center appointed Ian Blackshaw as the sole panelist in this matter on July 25, 2007. 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 law firm based in London 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.

The Complainant is also the registrant of a number of domain names incorporating the mark CLIFFORD CHANCE, including <cliffordchance.com>, <cliffordchance.co.uk” and <clifford-chance.mobi>.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

A1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(Policy, paragraph 4(a)(i), Rules, paragraphs 3(b)(viii), (b)(ix)(1))

The Complainant is the proprietor of a number of registered trademarks around the world, including the following:

- UK Trademark CLIFFORD CHANCE (registered number: 1578702) registered on August 29, 1995 in respect of goods and services in class 42.

- Community Trademark CLIFFORD CHANCE (registered number: E77420) registered on December 9, 1998 in respect of goods and services in classes 16, 35, 41 and 42.

Details of these two trademark registrations have been provided to the Panel.

Since its creation in 1987, the Complainant has traded under the mark CLIFFORD CHANCE. Accordingly, in addition to the Complainant’s substantial portfolio of trademark registrations for CLIFFORD CHANCE, it also has 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.

The Complainant submits that, in accordance with Rules, paragraph 3(b)(ix)(1), the Domain Name is identical to the Complainant’s trademarks.

A2. The Respondent has no rights or legitimate interests in respect of the domain name;

(Policy, paragraph 4(a)(ii), Rules, paragraph 3(b)(ix)(2))

The Respondent has no rights or legitimate interests in respect of the domain name, the subject of the Complaint. In particular, as indicated in A3. below, the Respondent has offered no real evidence of its legitimate interest in the domain name.

The Complainant has not licensed or otherwise permitted the Respondent to use its CLIFFORD CHANCE trademarks, nor has it licensed or otherwise permitted the Respondent to apply for or use any domain name incorporating those marks.

There is no evidence that the Respondent has been commonly known by the disputed domain name. Indeed, given the extent of use of the Complainant's CLIFFORD CHANCE mark, it is not credible for the Respondent to have used or prepared to use the disputed domain name in connection with a bona fide offering of goods and services.

For the foregoing reasons the Complainant submits 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 that domain name in connection with a bona fide offering of goods or services. The disputed domain name resolves to the Respondent's own website, namely, “www.berocadns.mobi”.

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 non-commercial or fair use of the disputed domain name.

A3. The domain name was registered and is being used in bad faith.

(Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3))

The Complainant first contacted the domain name registrant on November 21, 2006. At that time, the disputed domain name was registered in the name of Marcus Zaman, London. On November 29, 2006, in response to a letter from the Complainant demanding the immediate transfer of the disputed domain name, the Complainant received an email from Beroca Holdings BVI Limited demanding Ј1,500 GBP for the return of the domain name. The relevant section of this email stated that:

“In order to expedite a resolution to this matter, we require reimbursement for our reasonable registration, administrative and legal costs and expenses, and we will transfer ownership of CliffordChance.mobi to you with immediate effect. Our costs and expenses are currently Ј1,500”.

This indicates that the disputed domain name was registered primarily for the purpose of selling the domain name registration to the Complainant. It is not credible, as the Respondent claims, that the amount of Ј1,500 represents his reasonable costs in relation to the domain name. Copies of the correspondence exchanged between the Complainant and the Respondent have been provided to the Panel.

Further investigation of the Respondent’s domain name registrations indicates that it is the registered owner of several ‘.mobi’ domain names incorporating the names of other well known United Kingdom-based law firms. Copies of the relevant ‘whois’ extracts have been provided to the Panel. Accordingly, it is submitted that the Respondent is engaged in a pattern of conduct of making similar bad faith registrations.

The Complainant contends that evidence of bad faith registration and use is established by the following circumstances. First, the trademark CLIFFORD CHANCE is, in its relevant market, an extremely well known trademark in the United Kingdom and worldwide. It is inconceivable that the Respondent would not be aware of this fact. Second, by virtue of the widespread use and reputation of the CLIFFORD CHANCE trademark, members of the public in the United Kingdom and elsewhere will inevitably believe that the entity owning the disputed domain name is the Complainant or is in some way associated with the Complainant. Third, any realistic use of the disputed domain name can only constitute a misrepresentation of an association with the Complainant and its goodwill, and, consequently, passing off and trademark infringements. It is just not possible to conceive of a plausible circumstance in which the Respondent could legitimately register or use the disputed domain name in good faith.

The Respondent has not, at any stage, put forward any explanation or justification for registering the disputed domain name. Upon receiving the initial letter of complaint, the Respondent responded by simply offering it to the Complainant in return for payment. The Complainant contends that this is clear evidence that the Respondent registered the domain with the intention of selling it to the Complainant.

Further, or in the alternative, by resolving the disputed domain name to the Respondent’s website, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website, by creating a likelihood of confusion with the Complainant's mark, as to the source of the website.

Further, or in the alternative, by depriving the Complainant of a domain name that incorporates the Complainant's name, the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of the Complainant.

B. Respondent

The Respondent, having been duly notified of the Complaint, did not reply to the Complainant’s contentions nor take any other part in the present proceedings.

 

6. Discussion and Findings

To qualify for cancellation or transfer of the domain name at issue, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:

(i) The disputed 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 disputed domain name has been registered and is being used in bad faith.

In accordance with paragraph 15(a) of the Rules, the panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

In accordance with paragraph 14(a) of the Rules, in the event that a party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the panel, the panel shall proceed to a decision on the Complaint; and (b) if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the panel, the panel shall draw such inferences as it considers appropriate.

In accordance with paragraph 10(d) of the Rules, the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.

In previous UDRP cases in which the respondent failed to file a response, the panel’s decisions were based upon the complainant’s assertions and evidence, as well as reasonable inferences drawn from the respondent’s failure to reply. See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064; and also Kцstritzer Schwarzbierbrauerei v. Macros-Telekom Corp, WIPO Case No. D2001-0936.

Nevertheless, the Panel must not decide in the Complainant’s favor solely based on the Respondent’s default. See Cortefiel S.A. v. Miguel Garcнa Quintas, WIPO Case No. D2000-0140. The Panel must decide whether the Complainant has introduced elements of proof, which allow the Panel to conclude that its allegations are true and meet the requirements of the Policy.

A. Identical or Confusingly Similar

It is well established in previous UDRP cases that, where a domain name incorporates a complainant’s registered mark, this may be sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.

In the present case, the disputed domain name incorporates identically the Complainant’s trademark CLIFFORD CHANCE.

Furthermore, the addition of the suffix ‘.mobi’ to the trademark CLIFFORD CHANCE is for registration purposes only, being a requirement of the Internet domain name system, and does not serve as a distinguishing feature for trademark purposes. See The Bank of the Pacific v. Digi Real Estate Foundation, WIPO Case No. D2006-1112; and Columbia Insurance Company v. G Design, WIPO Case No. D2006-1617.

In view of all this, the Panel finds that the disputed domain name registered by the Respondent is identical or confusingly similar to the trademark CLIFFORD CHANCE, in which the Complainant has demonstrated, to the satisfaction of the Panel, that it has well-established trademark rights through registration and also through prior use in commerce for many years.

Accordingly, the Complainant has satisfied the requirements of the first element of the Policy.

B. Rights or Legitimate Interests

In order to determine whether the Respondent has any rights or legitimate interests in respect of the disputed domain name paragraph 4(c) of the Policy, attention may be paid to any of the following circumstances in particular but without limitation:

i) whether before any notice to the Respondent of the dispute, there is any evidence of the Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;

ii) whether the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights;

iii) whether the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.

There is no evidence to show that the Respondent was acting in pursuance of any rights or legitimate interests when registering the disputed domain name. Indeed, in view of the Complainant’s well-known trademark CLIFFORD CHANCE and its professional services sold under that brand name, the Respondent must in all likelihood have known, when registering the disputed domain name that the Respondent could not –lay claim to any such rights or interests. Apart from that, if the Respondent had any such rights or legitimate interests, the Respondent had an opportunity to assert them, which the Respondent clearly has not done, by not replying to the Complaint. See 1-800-Flowers.com, Inc, Fresh Intellectual Properties, Inc., Fannie May Confections, Inc., v. G Design, WIPO Case No. D2006-0977.

Nor has the Respondent been authorized or licensed by the Complainant to use the Complainant’s trademark CLIFFORD CHANCE in the disputed domain name. Indeed, the adoption by the Respondent of a domain name confusingly similar to the Complainant’s trademark inevitably leads to the diversion of the Complainant’s consumers to the Respondent’s website (see further on this point below) and the potential tarnishing of the Complainant’s trademark. In other words, the Respondent is trading for commercial gain on the good name and reputation of the Complainant’s business and its trademark CLIFFORD CHANCE and thereby unfairly attracting to its own business the goodwill that the Complainant has established in its trademark over many years in the United Kingdom and also around the world, evidence of which has been provided to the Panel, without any right or legal justification for doing so.

Also, the Panel finds no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. On the contrary, the Respondent has used the disputed domain name for a website that purports to be and gives the impression of emanating from or, at least, in some way, being associated with the well-known business carried on by the Complainant.

Likewise no evidence has been adduced that the Respondent has commonly been known by the disputed domain name; nor is the Respondent making a legitimate non-commercial or fair use of the disputed domain name.

Therefore, for all the above reasons, the Panel concludes that the Respondent has neither rights to nor legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which constitute evidence of bad faith. However, this list is not exhaustive, but merely illustrative. See Nova Banka v. Iris, WIPO Case No. D2003-0366.

Paragraph 4(b)(iv) of the Policy is particularly relevant to the present case and provides that there is evidence of bad faith in the following circumstances:

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.

Based on the evidence provided in the case file, the Panel agrees with the Complainant’s contention that the Respondent, by registering the disputed domain name, is trading on the Complainant’s valuable goodwill.

Again, by registering and using the disputed domain name incorporating the Complainant’s CLIFFORD CHANCE trademark , the effect is to mislead Internet users and consumers into thinking that the Respondent is, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business; or that the Respondent’s activities are approved or endorsed by the Complainant. None of which, according to the case file is, in fact, the situation.

Such misleading consequences, in the view of the Panel, constitute bad faith on the part of the Respondent. See Columbia Insurance Company v. Pampered Gourmet, WIPO Case No. D2004-0649).

Furthermore, the fact that the disputed domain name includes the entire trade name/trademark of the Complainant is a further factor supporting a conclusion of bad faith. See Segway LLC v. Chris Hoffman, WIPO Case No. D2005-0023; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028.

The Panel also agrees with the Complainant’s contention that the disputed domain name would appear to have been registered primarily for the purpose of selling the domain name registration to the Complainant, as evidenced by the email from the Respondent referred to and evidenced above by the Complainant. This tends to suggest bad faith on the part of the Respondent. See paragraph 4(b)(i) of the Policy.

Again, registering the disputed domain name comprising the Complainant’s well-known and well-established trademark also has the effect of disrupting the Complainant’s business, which, for the purposes of the Policy, is also an indication of bad faith on the part of the Respondent. See paragraph 4(b)(iii) of the Policy.

Furthermore, the Respondent’s previous pattern of behavior in registering domain names of other well-known law firms in the ‘.mobi’ registration category, as mentioned and evidenced above by the Complainant, in the opinion of the Panel, suggests a pattern of conduct and also reinforces a finding of bad faith registration and use on the part of the Respondent in the present case.

Likewise, the failure by the Respondent to reply to the Complainant’s Complaint or otherwise take any part in these proceedings, in the view of the Panel, also indicates bad faith on the part of the Respondent.

Therefore, for all the above reasons, the Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith.

7. Decision

For all 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.mobi> be transferred to the Complainant.

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Ian Blackshaw
Sole Panelist

Dated: August 8, 2007