The Complainant is Clifford Chance LLP, United Kingdom (“UK”), internally represented.
The Respondent is Adams Alakaligbo, Domain Services, Belgium. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 11, 2020. On February 11, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 27, 2020, 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 March 3, 2020, 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 March 5, 2020. 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 March 6, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 26, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 27, 2020. The Center appointed Lynda M. Braun as the sole panelist in this matter on April 2, 2020. 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 and its predecessors and associated entities have been known as Clifford Chance since 1987, when the established law firms Clifford-Turner and Coward Chance merged. Between 1987 and 2000 the Complainant operated as an English law partnership under that name. Between 2000 and 2006 the Complainant operated as a New York law-governed limited liability partnership called Clifford Chance Limited Liability Partnership. In 2006, the firm converted to a UK limited liability partnership by transferring all its business and assets to a newly created entity, the UK law-governed limited liability partnership Clifford Chance LLP, registered in the UK. The Complainant has registered and uses the trademark CLIFFORD CHANCE globally for, among other things, the provision of legal and advisory services in international classes 41 and 45. The Complainant’s trademarks include a mark registered in international classes 35, 36, 38, 39, 41, 43, and 45 with the Canadian Intellectual Property Office, registration number TMA594322, registered on November 7, 2003. Moreover, the Complainant has registered the trademark CLIFFORD CHANCE in over 25 other jurisdictions around the world (hereinafter collectively the “CLIFFORD CHANCE Mark”). The Complainant’s CLIFFORD CHANCE Mark is well known worldwide for the provision of legal services. The Complainant operates a website at “www.cliffordchance.com”, which it registered in 1994 and has used continuously to promote its legal services. The Disputed Domain Name was registered on September 23, 2019. On September 25, 2019, members of the public reported to the Complainant through its website and by phone that they had received a suspicious fax purporting to be from a law firm using the name “Chance F Clifford”. The person sending the fax was allegedly “Barr Chance F. Clifford”, a partner at “Chance F Clifford Law”. This person claimed that the recipient of the fax could be eligible to claim a significant sum of money based on an unclaimed life insurance payout. The fax solicited payments from recipients so that they would receive this life insurance payout. The website to which the Disputed Domain Name resolved was a copy of a website at “www.cypruslegalservices.eu”, registered on June 5, 2008, and was designed to convince Internet users that the Respondent was a provider of legal services. 5. Parties’ Contentions A. Complainant The Complainant contends that: - The Disputed Domain Name is confusingly similar to the trademark in which the Complainant has rights; and - The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and - The Disputed Domain Name was registered and is being used in bad faith as part of an unclaimed life insurance phishing scam intended to gain the trust of its victims. The Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy requires that the Complainant prove the following three elements in order to prevail in this proceeding: (i) the Disputed Domain Name is identical or confusingly similar to trademarks or service marks in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name was registered and is being used in bad faith. A. Identical or Confusingly Similar This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark. The Panel concludes that the Disputed Domain Name is confusingly similar to the CLIFFORD CHANCE Mark. It is uncontroverted that the Complainant has established rights in the CLIFFORD CHANCE Mark based on its many years of use as well as its numerous trademarks for the CLIFFORD CHANCE Mark in jurisdictions worldwide. The general rule is that “registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive”. See CWI, Inc. v. Domain Administrator c/o Dynadot,WIPO Case No. D2015-1734. The Respondent has not rebutted this presumption, and therefore the Panel finds that the Complainant has enforceable rights in the CLIFFORD CHANCE Mark. The Disputed Domain Name consists of the entirety of the CLIFFORD CHANCE Mark, with the order of the two words switched, the letter “f” inserted between them, the generic word “law” at the end, and followed by the generic Top-Level Domain (“gTLD”) “.com”. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the addition of other terms. As stated in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”. Finally, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva,WIPO Case No. D2012-0182. Thus, the Panel concludes that the Disputed Domain Name is confusingly similar to the Complainant’s CLIFFORD CHANCE Mark. Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant. B. Rights or Legitimate Interests Under the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent bears the burden of production to demonstrate rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1. There is no evidence in the record suggesting that the Respondent has rights or legitimate interests in the Disputed Domain Name. The Complainant has not authorized, licensed, or otherwise permitted the Respondent to use the Complainant’s CLIFFORD CHANCE Mark. The Complainant does not have any type of business relationship with the Respondent, nor is the Respondent making a legitimate noncommercial or fair use of the Disputed Domain Name. In this case, the Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent has not submitted any substantive arguments or evidence to rebut the Complainant’s prima facie case. As such, the Panel determines that the Respondent does not have rights or legitimate interests in the Disputed Domain Name. Finally, where a respondent has registered and is using a domain name in bad faith (see the discussion below), that respondent cannot be reasonably found to have made a bona fide offering of goods or services. Therefore, the Panel finds that since the Respondent has used the Disputed Domain Name as part of a phishing scheme to defraud the public, the Respondent has failed to use the Disputed Domain Name in connection with any bona fide offering of goods or services or any legitimate noncommercial or fair use Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant. C. Registered and Used in Bad Faith This Panel finds that, based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith pursuant to paragraph 4(b) of the Policy. First, the Respondent registered and used the Disputed Domain Name in bad faith by creating the false impression that the Complainant owned or was affiliated with the Disputed Domain Name. The Respondent accomplished this by using misappropriated images and verbatim text from the “www.cypruslegalservices.eu” website and distributing a fax to recipients with the intention of defrauding them in an unclaimed life insurance phishing scam. In this way, the Respondent led the recipients to believe that the Respondent and the Disputed Domain Name were associated with or sponsored by the Complainant. The Respondent’s phishing scheme to send a fraudulent fax purporting to come from the Complainant, seeking payment and information, evidences a clear intent to disrupt the Complainant’s business, deceive individuals, and trade off the Complainant’s goodwill by creating an unauthorized association between the Respondent and the Complainant’s CLIFFORD CHANCE Mark. See Banco Bradesco S.A. v. Fernando Camacho Bohm,WIPO Case No. D2010-1552. Such conduct is emblematic of the Respondent’s bad faith registration and use of the Disputed Domain Name. See Petróleo Brasileiro S.A. - Petrobras v. AK Bright,WIPO Case No. D2013-2063 (considering the reputation of the complainant and the emails sent by the respondent using the complainant’s trademark, the respondent is held to have registered and used the disputed domain name in bad faith). Several UDRP panels have found that email-based phishing schemes that use a complainant’s trademark in a disputed domain name are evidence of bad faith. See, e.g., DeLaval Holding AB v. Registration Private, Domains By Proxy LLL / Craig Kennedy,WIPO Case No. D2015-2135. Second, the Respondent knew or should have known of the Complainant’s rights in its CLIFFORD CHANCE Mark when registering the Disputed Domain Name. The Respondent registered the Disputed Domain Name years after the Complainant first used and obtained its trademark registrations for the CLIFFORD CHANCE Mark. Based on the use of the CLIFFORD CHANCE Mark in its entirety, plus the addition of the letter “f” and the generic word “law”, it strains credulity to believe that the Respondent had not known of the Complainant or its CLIFFORD CHANCE Mark when registering the Disputed Domain Name. See Myer Stores Limited v. Mr. David John Singh,WIPO Case No. D2001-0763 (“a finding of bad faith may be made where the respondent “knew or should have known” of the registration and/or use of the trademark prior to registering the domain name”). In sum, the Panel finds it likely that the Respondent had the Complainant’s CLIFFORD CHANCE Mark in mind when registering the Disputed Domain Name. Finally, the Respondent appears to have a history of registering domain names and creating websites to which those domain names resolve as part of fraudulent activities. Such conduct is evidence of the Respondent’s bad faith. See Siemens Aktiengesellschaft v. Telmex Management Services, Inc.,WIPO Case No. D2003-0995. Accordingly, the third element of paragraph 4(a) of the Policy has been met 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 Disputed Domain Name Lynda M. Braun
Sole Panelist
Date: April 14, 2020
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