Complainant is Clifford Chance LLP of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), internally represented.
Respondent is Simon Gold of London, United Kingdom. 2. The Domain Name and Registrar
The disputed domain name is registered with M International, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 16, 2017. On June 19, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 20, 2017, the Registrar transmitted by email to the Center its verification response confirming that 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” 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 Respondent of the Complaint, and the proceedings commenced on June 21, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 11, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 13, 2017.
The Center appointed Jeffrey D. Steinhardt as sole panelist in this matter on July 20, 2017. 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
Complainant owns many registrations worldwide for its CLIFFORD CHANCE trademarks, including for example United Kingdom Trademark Registration Nos. UK 00001578701 (Class 41) and UK 00001578702 (Class 42), registered on August 18, 1995 and August 29, 1995, respectively.
The disputed domain name was registered March 19, 2017. The disputed domain name presently routes to a webpage promoting products related to web services and server management. Links on the webpage route Internet users to a third-party website offering such commercial products for sale. 5. Parties’ Contentions A. Complainant
Summarizing its legal contentions, Complainant alleges that (1) the disputed domain name is identical or confusingly similar to Complainant’s trademarks, (2) Respondent has no rights or legitimate interests in the disputed domain name, and (3) the disputed domain name was registered and is being used in bad faith, all in violation of the Policy.
On April 3, 2017, Complainant alleges, Complainant notified Respondent by email that it considered use of the disputed domain name misleading and a violation of Complainant’s trademarks; Complainant requested transfer of the disputed domain name.
Respondent’s email reply of April 4, 2017, attached to the Complaint, denies any motivation to mislead Internet users. In the email, Respondent also invites Complainant to make an offer to buy the registration, stating that Respondent registered the disputed domain name for the “purpose of commercial profit”.
On the basis of the above, Complainant requests in this proceeding transfer of the disputed domain name. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Notification of Proceedings
The Policy and the Rules establish procedures to give respondents notice of proceedings and a reasonable opportunity to respond (see, e.g., paragraph 2(a) of the Rules). The Center sent by courier and email to Respondent notification of these proceedings, using the contact information provided by the Registrar. The contact information did not include a fax number. The courier notification was not deliverable at the address provided.
The Panel is satisfied that by sending communications to the contacts verified by the Registrar, based on those provided by Respondent and listed in the WhoIs records, the Center has exercised care, fulfilling its responsibility under paragraph 2(a) of the Rules to employ all reasonably available means to serve actual notice of the Complaint upon Respondent. B. Substantive Rules of Decision
The Panel renders its Decision 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. Rules, paragraph 15(a). Complainant must establish each element 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 Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Complainant must establish these elements even if Respondent does not submit a Response. E.g., The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064. C. Identical or Confusingly Similar
The Panel agrees that the disputed domain name is identical to Complainant’s trademarks in the sense of the Policy.
UDRP panels usually disregard the domain name suffix (or Top-Level domain “TLD”) in evaluating identity and confusing similarity. See, e.g., VAT Holding AG v. VAT.com,WIPO Case No. D2000-0607; Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc.,WIPO Case No. D2006-1315.
Omitting the “.email” generic Top-Level Domain suffix (the “gTLD”), the disputed domain name adopts Complainant’s trademarks in their entirety.
The Panel finds therefore that the disputed domain name is identical to the registered trademarks of Complainant and that the requirements of paragraph 4(a)(i) of the Policy are fulfilled. D. Rights or Legitimate Interests
The Panel also concludes that Respondent has no rights or legitimate interests in the disputed domain name.
The Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in a domain name. The list includes: (1) using the domain name in connection with a bona fide offering of goods and services; (2) being commonly known by the domain name; or (3) making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers. Policy, paragraphs 4(c)(i)-(iii).
A complainant must show a prima facie case that a respondent lacks rights or legitimate interests in a domain name, after which the burden of rebuttal passes to the respondent. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455. The absence of rights or legitimate interests is established if a complainant makes out a prima facie case and the respondent enters no response. Id., (citing De Agostini S.p.A. v. Marco Cialone,WIPO Case No. DTV2002-0005).
From the email correspondence discussed above, the Panel infers that Respondent has no authorization to use Complainant’s trademarks. The Panel further finds that Respondent is not making bona fide use of the disputed domain name under the Policy. While the Complaint does not address the issue, the Panel infers that Respondent is not commonly known by the disputed domain name.
The April 4, 2017 email from Respondent stating that he registered the disputed domain name for purposes of commercial profit constitutes evidence that precludes the Panel from finding that there is a legitimate noncommercial interest in, or fair use of, the disputed domain name, without intent for commercial gain to misleadingly divert consumers. The use of the website to promote commercial products unrelated to the trademarks also supports this conclusion.
Taking into account both the content of the website and the annexes to the Complaint, Complainant makes out a prima facie case. Filing no response, Respondent has not rebutted Complainant’s prima facie case or invoked any of the circumstances of paragraph 4(c) of the Policy to support the existence of rights or legitimate interests in use of the disputed domain name.
Accordingly, the Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied. E. Registered and Used in Bad Faith
The Panel also concludes that the Complaint fulfills the third element of paragraph 4(a) of the Policy, bad faith registration and use, as elaborated below.
Using a domain name to intentionally attract Internet users, for commercial gain, by creating a likelihood of confusion, may be evidence of bad faith registration and use. Policy, paragraph 4(b)(iv). See, e.g., L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc.,WIPO Case No. D2005-0623. UDRP panels may draw inferences about bad faith registration or use in light of the circumstances, such as whether there is no response to the complaint, and other circumstances. See, e.g., Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
With respect to bad faith registration, Respondent expressly wrote to Complainant, stating that he registered the disputed domain name for the purpose of commercial profit. Yet there is nothing in the record indicating that Respondent had any rights to use Complainant’s trademarks, or indeed, had any dealings related to the subject matter of the trademarks embodied in the disputed domain name. In the circumstances, the Panel agrees with the statement made in Complainant’s initial demand letter, that there exists no conceivable reason for Respondent to have chosen the disputed domain name apart from Respondent’s motivation to ride on the reputation of Complainant’s marks. Those marks were well established for many years at the time of Respondent’s registration. This in and of itself evidences registration in bad faith.1
The use of the disputed domain name to route to a webpage unrelated to Complainant, to generate revenues through commercial advertising links, establishes bad faith use.2
The Panel finds that Respondent’s failure to maintain accurate contact details as required by the agreement with the Registrar is further evidence of bad faith. 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 be transferred to Complainant.
Jeffrey D. Steinhardt
Sole Panelist
Date: July 29, 2017
1 Since it appears that the parties did not ever discuss any specific price for transfer of the disputed domain name, the Panel declines Complainant’s invitation to find bad faith on the basis that Respondent sought to sell the disputed domain name for more than document out-of-pocket costs. See Policy paragraph 4(b)(i).
2 The Panel infers that Respondent receives revenues for diverting traffic via the links appearing on the parking page to which the disputed domain name routes. See, e.g., The Bear Stearns Companies Inc. v. Darryl Pope,WIPO Case No. D2007-0593 (“[t]he Panel is free to infer that Respondent is likely receiving some pecuniary benefit . . . in consideration of directing traffic to that site”(citing COMSAT Corporation v. Ronald Isaacs,WIPO Case No. D2004-1082)); Fat Face Holdings Ltd v. Belize Domain WHOIS Service Lt,WIPO Case No. D2007-0626; Sanofi-aventis v. Montanya Ltd,WIPO Case No. D2006-1079.
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