Law firm Clifford Chance has recovered a .email domain name that was being used for commercial profit.
Clifford Chance filed a complaint in June at the World Intellectual Property Organization Arbitration and Mediation Center, requesting transfer of cliffordchance.email.
The domain was registered in March this year by Simon Gold from London.
It currently routes to a webpage promoting products related to web services and server management, and links on the webpage direct users to a third-party website offering commercial products for sale.
Clifford Chance owns numerous registrations worldwide for its ‘Clifford Chance’ trademarks, including UK trademark registration numbers 00001578701 (class 41) and 00001578702 (class 42), both registered in 1995.
“Omitting the ‘.email’ generic top-level domain suffix, the disputed domain name adopts complainant’s trademarks in their entirety,” explained Jeffrey Steinhardt, sole panellist, in his finding that the domain was identical to Clifford Chance’s trademarks.
Steinhardt added that an email from Gold in April which stated that he had registered the domain for purposes of commercial profit constituted evidence precluding the panel from finding that there is a legitimate non-commercial interest in, or fair use of, the domain.
“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,” he added.
The panel agreed with Clifford Chance that there was “no conceivable reason” for Gold to have chosen the disputed domain apart from his motivation to “ride on the reputation of complainant’s marks”.
Published yesterday, August 7, the decision was made on July 29.
Clifford Chance, law firm, domain names, trademark infringement, trademark, WIPO, cybersquatting, .email