Generic Top Level Domain Name (gTLD) Decisions

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

The Complainants are Clifford Chance LLP of 200 Aldersgate Street, London, EC1A 4JJ, United Kingdom and Pünder GmbH of Mainzer Landstraße 46, Frankfurt am Main 60325, Germany.

The Respondent is Cpic Inc. of 15 5^th Street, Closter, New Jersey 07624, United States of America.

The domain name at issue is <cliffordchancepuender.com>.

The registrar is Network Solutions, Inc. of Herndon, Virginia, U.S.A.

This is an administrative proceeding pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, in accordance with the Rules for the Policy, approved by ICANN on October 24, 1999, ("the Rules") and the Supplemental Rules for the Policy ("the Supplemental Rules") of the WIPO Arbitration and Mediation Center ("the Center").

The complaint was received by the Center by email on November 20, 2000, and in hard copy on November 22, 2000. It was acknowledged on November 24, 2000. On November 29, 2000 registration details were sought from the registrar. On December 3, 2000 the Registrar confirmed that the Respondent is the registrant, the Registrar’s Service Agreement version 4.0 is in effect and the registration status is "active". That agreement incorporates the Policy and requires the Respondent to submit to a properly initiated administrative proceeding. By email on November 2, 2000 and in hardcopy on November 7, 2000, the complaint was amended, at the request of the Center, to include an appropriate submission to the jurisdiction of the courts of the principal office of the Respondent.

On December 11, 2000 the Center satisfied itself that the Complainant had complied with all formal requirements, including payment of the prescribed fee, printed out a copy of the disputed Webpage (which stated "www.cliffordchancepuender.com is Under Construction") and formally notified the Respondent by post/courier, fax and email of the Complaint and of the commencement of this administrative proceeding and sent copies to the Complainants, the Registrar and ICANN.

The last day specified in the notice for a Response was December 30, 2000. No response was filed. On January 3, 2001 the Center sent the respondent a notice of its default.

On January 22, 2001, the Center appointed Alan L Limbury as sole panelist, Mr. Limbury having submitted a Statement of Acceptance and Declaration of Impartiality and Independence. On January 22, 2001 the Center transmitted the case file to the panel and notified the parties of the projected decision date of February 4, 2001.

The language of the proceeding was English.

The panel is satisfied that the complaint was filed in accordance with the requirements of the Rules and Supplemental Rules; payment was properly made; the panel agrees with the Center’s assessment concerning the Complaint’s compliance with the formal requirements; the Complaint was properly notified in accordance with paragraph 2(a) of the Rules; no response was filed and the administrative panel was properly constituted.

4. Factual Background (non-contested facts)

The First Complainant ("Clifford Chance") is one of the largest law firms in the world, with offices in 32 of the world’s major financial centres. Its predecessors Coward Chance and Clifford-Turner were founded in 1802 and 1900 respectively and the marks CLIFFORD and CHANCE have therefore been associated with the provision of legal and related services for at least 100 years.

The trade mark CLIFFORD CHANCE has been registered wherever the firm has a presence. In the United States of America an application has been allowed and registration is pending.

In 1997 the First Complainant launched CLIFFORD CHANCE Online, providing legal and related services via the Internet. This pioneering move within the legal profession received widespread publicity.

The First Complainant practises in Germany and certain European countries as Clifford Chance Pünder which is the successor in title to the German firm Pünder Volhard Weber & Axster ("Pünder"). The predecessor of Pünder was established in the 1880s and became associated with the name Pünder following the First World War when it was taken over by Dr Werner Pünder. The firm practised under the Pünder name continuously until its merger with the First Complainant in 1999. It has at all times been referred to colloquially as "Pünder".

Pünder was the first German law firm to open an office in New York and established offices across the European continent and in Asia known throughout as the "Pünder Group".

The Second Complainant is the registered proprietor of German and international trade marks for PÜNDER, including in the United States of America. It holds these registrations on behalf of the First Complainant through Clifford Chance Pünder which has sole authority to use the PÜNDER mark.

The Second Complainant is also the registrant of a number of domain names including <www.puender.com>. The symbol "ue" is universally recognised to denote the "ü" symbol where it cannot be graphically represented. This was the position until recently with domain names used on the Internet. The website is actively used to promote services provided by Pünder and following the merger, the Clifford Chance practices as a whole. The CLIFFORD CHANCE and PÜNDER trade marks feature prominently on the site.

On July 11, 1999 a tripartite press release was issued by Clifford Chance, Rogers & Wells and Pünder announcing that a merger of the three firms had been agreed in principle to be concluded in January 2000. The press release was published extensively in the international press and on the Internet. It included the statement:

"The new firm will use….the Clifford Chance name together with the Pünder name in certain Continental locations"

On July 17, 1999, the Respondent applied for registration of the disputed domain name. The Complainants, through Rogers & Wells, wrote to the Respondent on October 4, 1999. The letter was addressed to Mr Syed Hussain, the administrative and technical contact of the Respondent.

The Respondent's legal advisor, Ms K Kreiger, by email dated October 17, 1999 stated:

"Mr Syed Hussain is willing to transfer ownership of the web address, cliffordchancepuender.com for $250,000. Hoping to hear from you promptly. Thank you."

Ms Kreiger informed Mr Shelton of Rogers & Wells that Mr Hussain is engaged in a business of acquiring domain names for resale.

The domain name is identical to the trademark which is distinctive of the First Complainant's services in Germany and certain other European countries and is used by none other than the Complainants. The use of a combination of the registered marks of the First and Second Complainant is identical or alternatively confusingly similar to the marks which have at all times been registered and maintained by the Complainants.

Paragraph 4(a)(ii)

The Respondent has not demonstrated any legitimate right or interest in the domain name and has in fact gone so far as to admit that it has registered the name solely for the purpose of extorting payment from the Complainants well in excess of their out of pocket expenses. This is borne out by the cynical timing of the Respondent's registration following the Complainants' merger announcement at which point it became clear that the Complainants would possibly use a combination of their trade marks in the future.

It is clear that the domain name has been registered by the Respondent in bad faith.

It is quite likely that clients who are familiar with the complainant's services under the CLIFFORD CHANCE PÜNDER mark will attempt to access its online services using the equivalent domain name only to be informed that that domain name is inoperative.

The precedents of WIPO make it clear that registrations made solely for the purposes of profiting from the merger or proposed merger of two or more trade mark holders fall squarely within the provisions of paragraph 4 of the Policy. The panel is referred to the decisions Astro-Med, Inc. v Merry Christmas Everyone! And B Evans, Case No. D2000-0072; The Chase Manhattan Corporation and Robert Fleming Holdings Limited v Paul Jones, Case No. D2000-0731 and Pharmacia & Upjohn v Sol Meyer D2000-0785 all of which relate to registrations made on the back of publicity concerning actual or proposed mergers between trade mark owners.

Similar findings have been made in the United Kingdom in the well known British Telecommunications Plc and another v One in a Million Ltd [1998] 4 AER 476 and in Glaxo Plc v Glaxowellcome Limited [1996] FSR 388 where an injunction was granted against the defendant who had registered a shelf company name comprising a combination of the trade marks of the Plaintiffs following an announcement that they intended to merge.

There was no response.

To qualify for cancellation or transfer, a complainant must prove 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 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.

Identity or confusing similarity

The disputed domain name incorporates the whole of both the CLIFFORD CHANCE and PÜNDER registered trade marks (the use of "UE" instead of "Ü" being immaterial, as is the suffix ".com"). It is thus confusingly similar to both marks. See The Chase Manhattan Corporation and Robert Fleming Holdings Limited v. Paul Jones (D2000-0731). The complainant has proved element 4(a)(i).

The disputed domain name is also identical to the trade mark CLIFFORD CHANCE PÜNDER which has been used by the merged firm since early 2000 and in which the merged firm has, by such use, established common law rights. Although actual use of this mark commenced after the Respondent registered the disputed domain name, there is no reason in principle, in merger cases in which the announcement precedes the event, why the trade mark foreshadowed as likely to be used by the merged firm may not be taken into account on the issue of identity or confusing similarity. See Fletcher Challenge Ltd v. Fletcher Challenge Pty Ltd and others [1981] 1 NSWLR 196, [1982] FSR 1; Glaxo plc v. Glaxowellcome Limited [1996] FSR 388 and British Telecommunications plc v. One In a Million Ltd [1998] 4 All ER 476.

Legitimate interest

It is not credible that the Respondent, whose name is CPIC INC, registered the disputed domain name within the week following the merger announcement without knowledge of that merger. The panel finds the Respondent did have such knowledge.

That knowledge would not, of itself, necessarily lead to the conclusion that the Respondent has no legitimate interest in the name. See A.P. Møller v. Web Society (D2000-0135). However, the Respondent has not been and is not involved in any business using the disputed domain name and is not known by that name. It has offered no evidence of the kind contemplated by subparagraph 4 (c) of the Policy to demonstrate its rights or legitimate interest in the name.

The Panel finds the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has proved element 4(a)(ii).

Bad faith

The fact that the disputed domain name was registered within the week following the merger announcement leads the panel irresistibly to the conclusion that it was "an opportunistic act by an alert entrepreneur with a view to making a profit." See The Chase Manhattan Corporation and Robert Fleming Holdings Limited v. Paul Jones (D2000-0731).

The Respondent’s offer (within two weeks of the first complaint by Rogers & Wells) to transfer the disputed domain name to the Complainants for $250,000 is convincing evidence of circumstances within subparagraph 4(b)(i) of the Policy and is thus evidence of both bad faith registration and bad faith use.

The Complainants have proved this element.

Pursuant to paragraphs 4 (i) of the Policy and 15 of the Rules, the Panel requires the Registrar to transfer the domain name <cliffordchancepuender.com> to the Complainants, Clifford Chance LLP and Pünder GmbH.

Alan L Limbury
Sole Panelist