WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Deloitte Touche Tohmatsu v. Henry Chan
Case No. D2003-0584
1. The Parties
The Complainant is Deloitte Touche Tohmatsu, Zurich, Switzerland, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.
The Respondent is Henry Chan, Nassau, Bahamas.
2. The Domain Name and Registrar
The disputed domain name <deloitt.com> ("the domain name") is registered with iHoldings.com Inc. d/b/a DotRegistrar.com ("the Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 24, 2003. The Center transmitted its standard request for registrar verification to the Registrar by email on July 28, 2003. The Registrar confirmed by email of the same date that it was the Registrar, that the Respondent was the current registrant, that the Uniform Domain Name Dispute Resolution Policy (the "Policy") applied, that the domain name would remain locked during this proceeding, and that the registration agreement was in English and included a submission to the jurisdiction of the courts at the Registrarís principal office. The Registrar also provided the Respondentís contact details on its Whois database. Although the Registrar stated that it had not received the Complaint, the Complaint itself confirms that it was sent to the Registrar by courier and email. If there has been any deficiency in this regard, the Panel waives it under its general powers pursuant to the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), paragraph 10.
The Center checked the Complaint on July 31, 2003, for compliance with the formal requirements of the Policy, the Rules, and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Center did not identify any deficiency.
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 July 31, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was August 20, 2003. The Respondent did not submit any response by that date and the Center notified the Respondentís default on August 21, 2003.
The Center appointed Jonathan Turner as the sole panelist in this matter on September 1, 2003. The Panel submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
Having reviewed the file, the Panel is satisfied that the Complaint complied with applicable formal requirements (save possibly as indicated and waived above), was duly served on the Respondent, and has been submitted to a properly constituted Panel in accordance with the Policy, the Rules and the Supplemental Rules.
4. Factual Background
The Complainant is an association of firms providing accountancy, auditing, management consultancy, tax advice and other services in numerous countries around the world under the names "Deloitte Touche Tohmatsu" and "Deloitte & Touche." These names are frequently shortened to "Deloitte." The Complainantís member firms constitute one of the "big 4" international accountancy practices, employ more than 119,000 people in over 140 countries and attained total annual revenues of US$12,5 billion in 2002. The Complainant has registered "DELOITTE TOUCHE TOHMATSU," "DELOITTE & TOUCHE" and "DELOITTE" as trademarks in a number of countries. The Complainant maintains a website at "www.deloitte.com" and many of its member firms have websites at "www.deloitte." followed by the relevant ccTLD (with or without a generic SLD). These include the website of the Hong Kong firm at "www.deloitte.com.hk."
The domain name is directed to a search engine and portal at "www.dp.information.com" operated by an entity called "domainsponsor.com." This provides links to sponsored websites on a variety of topics, including a page entitled "Deloitt Consulting" containing numerous sponsored links to websites of entities not connected with the Complainant. The "www.dp.information.com" website also causes numerous "pop-up" and "pop-under" advertisements to be displayed when it is accessed. Domainsponsor.com offers a revenue program which pays domain name owners "50% of all revenues generated from searches, popunders, popups, and exit popups" in respect of users directed to its website through the participants domain name.
The Respondent currently owns over 18,000 domain names, many of which are based on well-known brand or trading names, and a number of which correspond to mistypings which may be expected of such names. These names are also directed to the "dp.information.com" website. The Respondent has been found to have registered and used domain names in bad faith by at least three other administrative panels under the Policy. The Respondentís contact address given in the original registration was in Hong Kong, but was subsequently changed to Nassau in the Bahamas.
5. Partiesí Contentions
The Complainant contends that the domain name is confusingly similar to its mark "DELOITTE," that the Respondent has no rights or legitimate interests in respect of the domain name, and that it was registered and is being used in bad faith to profit from the diversion of internet users seeking information about the Complainant and its members to "domainsponsor.com"ís website at "www.dp.information.com."
The Respondent did not reply to the Complainantís contentions.
6. Discussion and Findings
In accordance with paragraph 4 of the Policy, the Complainant must prove (A) that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (B) that the Respondent has no rights or legitimate interests in respect of the domain name; and (C) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar to Mark in which Complainant has Rights
The Panel is satisfied that the Complainant has registered and unregistered rights in the marks "DELOITTE" and "DELOITTE & TOUCHE."
Although the Complainant has only registered "DELOITTE" in Spain, Brazil and Uruguay, these registrations are relevant since the Complainantís member firms operate throughout the world and people in these countries may well seek information about the Complainantís member firms and their services on the Internet. In any case, the Complainantís member firms clearly have goodwill and reputation under the name "DELOITTE" in numerous countries, including Hong Kong, where the Respondent gave his address in the original registration of the domain name. Although the relationship between the Complainant and its member firms is not fully explained in the Complaint, the Panel accepts that the Complainant has common law rights within the meaning of the first requirement of the Policy arising from its membersí use of the name "DELOITTE" in Hong Kong and other countries.
"DELOITTE & TOUCHE" has been registered as a trademark by the Complainant in a wide range of countries, and the Panel further accepts that the Complainant has common law rights by virtue of its member firmsí use of this mark in many countries.
The Panel is also satisfied that the domain name is confusingly similar to both "DELOITTE" and "DELOITTE & TOUCHE." "Deloitte" is an obvious and widely used abbreviation of "Deloitte & Touche" and a distinctive part of this mark. Confusion between the domain name and "Deloitte" may occur, in particular, due to mistyping or misspelling.
Accordingly, the first requirement of the Policy is met.
B. Rights or Legitimate Interests of Respondent
The Panel considers that the Respondent has no rights or legitimate interests in respect of the domain name. It appears that the only use made of the disputed domain name has been to direct Internet users to "domainsponsor.com"ís website at "www.dp.information.com." The use of Deloitt Consulting on a page linked to that website does not constitute a bona fide offering of goods or services giving rise to any right or legitimate interest.
The second requirement of the Policy is met.
C. Registered and Used in Bad Faith
The Panel is also satisfied that the domain name was registered and is being used in bad faith. The uncontested evidence indicates that it was registered and has been used in order to divert internet users seeking information about the Complainantís member firms and their services to "domainsponsor.com"ís website at "www.dp.information.com," and to share in revenues obtained from the diverted traffic. The Respondent is evidently carrying on an operation of plundering the reputation of well-known marks in this way on a large scale. This exploitation of the reputations of the Complainantís member firms and others is an egregious abuse of their rights.
The "Deloitt Consulting" page linked to the "dp.information.com" website may create a likelihood of confusion as to source, sponsorship, affiliation or association, and hence may be specifically covered by the fourth example of bad faith identified in paragraph 4 of the Policy. However, even if the Respondentís conduct is not precisely covered by any of the non-exhaustive examples of bad faith in this paragraph of the Policy, it is plainly conduct of a kind encompassed by the concept of "bad faith" in the Policy.
The third requirement of the Policy is met.
For the above reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel decides that the domain name <deloitt.com> should be transferred to the Complainant.
Dated: September 7, 2003