WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
KPMG International v. Manila Industries, Inc.
Case No. D2006-0597
1. The Parties
The Complainant is KPMG International, Amstelveen, Netherlands, represented by Taylor Wessing, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Manila Industries, Santa Ana, California, United States of America.
2. The Domain Names and Registrar
The disputed domain names <email-kpmg.com>, <kpmgllp.com>, <kpmgus.com> and <uskpmg.com> are registered with Compana LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 11, 2006. On May 11, 2006, the Center transmitted by email to Compana LLC a request for registrar verification in connection with the domain names at issue. On May 18, 2006, Compana LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on May 25, 2006. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 2, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was June 22, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 23, 2006.
The Center appointed Jette Robsahm as the sole panelist in this matter on July 11, 2006. 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.
The language of the proceeding is English.
4. Factual Background
The Complainant, KPMG International, is a Swiss cooperative which serves as a coordinating entity for the KPMG network of independent member firms. The network is one of the world’s leading providers of audit, tax and advisory services and has been considered one of the world’s major leading accountancy firms for many years.
The trademark KPMG is the house mark of the network and the main element in numerous registered trade marks. The Complainant owns around 890 trademark registrations throughout the world, including four in the United States. Another two are owned by KPMG LLP in the United States.
The Complainant owns at least 850 domain names containing the word KPMG, the majority of which links to the main website of the Complainant, “www.kpmg.com”.
KPMG currently operates in 144 countries and has over 6600 partners, included 93 offices in the United States and 22 offices in the United Kingdom.
The Respondent registered the contested domain names between November 2004 and July 2005.
5. Parties’ Contentions
The Complainant states inter alia as follows:
The house mark KPMG has been used since 1987, and has since 1992 also been in use as the dominant domain name for the Complainant. As one of the leading accountancy firms in the world, the web page attracts many visitors. The Complainant has been engaged in an extensive and global use and marketing of the KPMG marks and it is therefore unlikely that the Respondent did not know of the Complainant’s and its trademark’s reputation. In fact, at least three of the disputed domain names reflects that the Respondent must have known of the Complainant’s United States and United Kingdom websites.
The main element in the four disputed domain names is KPMG, while the other elements in the domain names are more or less descriptive in this connection. The domain names therefore contain the entire main trademark of the Complainant.
Thus it must be concluded that all the four disputed domain names must be considered confusingly similar to the Complainant’s house mark.
The Respondent is using the domain names to direct consumers to a website with links to several other sites. These links are for third-party websites, including the websites of some of the Complainant’s competitors. Thus the Complainant’s house mark is used to promote competition to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to convince the Panel of its rights and obtain a transfer of the domain names, the Complainant must prove that each of the three following elements is satisfied:
A. The domain name in question is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, and
B. the Respondent has no rights or legitimate interests in respect of the domain name, and
C. the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has proved evidence of its rights to several trademarks either consisting of KPMG alone or containing KPMG. It has furthermore proved to be the owner of the domain name <kpmg.com> and other domain names containing the trademark or variations of the trademark.
The disputed domain names, <kpmgllp.com>, <kpmgus.com>, <uskpmg.com>, and <email-kpmg.com> are very similar to the Complainant’s trademark/ house mark inasmuch as the domain names contain the Complainant’s trademark. The only difference is the elements “llp”, “us” and “email”, elements which in this connection are descriptive. The Complainant has provided evidence that two of these elements, “llp” and “us”, are also present in company names and domain names owned by the Complainant, for example the domain name <us.kpmg.com>. The name KPMG LLP is used by the Complainant’s member firms in the United States and United Kingdom.
In some sense, the disputed domain names can be seen as a kind of typosquatting since <us.kpmg.com> and <kpmgus.com> are variants of the same domain name. It has been stated in several decisions by prior WIPO UDRP panels that typosquatting can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark. See as examples, Daimler Chrysler Corporation v. Worshipping, Chrisler, and Chr. aka Dream Media and aka Peter Conover, WIPO Case No. D2000-1272 and Telstra Corporation Ltd. v. Warren Bolton Consulting Pty Ltd, WIPO Case No. D2000-1293.
It has also been established by prior panels that incorporating a trademark in its entirety into a domain name can be sufficient to establish that the domain name is confusingly similar to a registered trademark. This is especially relevant when the other elements in the domain name are descriptive.
The Panel thus finds that the domain names in question are confusingly similar to the Complainant’s registered trademark.
B. Rights or Legitimate Interests
The Respondent has not filed a Response to the Complainant’s contentions, and the Panel must therefore base its view on the facts and allegations brought forward by the Complainant.
The Respondent uses, as mentioned above, the domain names to attract visitors on the internet to websites where the Respondent, among other things, opens for marketing activities from competitors to the Complainant.
It is of course not illegal to compete, but to attract visitors to a competitor’s website by using a slight variation of another’s trademark, is not legitimate.
The Complainant has not licensed or otherwise authorized or permitted the Respondent to use the domain name or domain names containing the Complainant’s trademark.
Based on the facts set out by the Complainant, and in the absence of a rebuttal by the Respondent, the Panel finds that the Respondent has no rights or legitimate interests in the domain names.
C. Registered and Used in Bad Faith
Since the Respondent is using domain names which comprise the main trademark to a very well known company and also uses slight variations of that company’s domain names to attract visitors to a website open for the marketing of competitor’s activities, the Panel finds it more likely than not that the Respondent was well aware of the Complainant’s activities and trademark at the time of the registration of the domain names.
The Panel can see no legitimate ground for choosing another’s trademark to attract visitors to a commercial website displaying information on a complainant’s competitors.
Lacking a Response from the Respondent, and in view of the facts set forth by the Complainant, the Panel finds that the domain names were registered and are used in bad faith. The Panel finds support for this view in the case Expedia, Inc. v. Alvaro Collazo, WIPO Case No. D2003-0716.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, <email-kpmg.com>, <kpmgllp.com>, <kpmgus.com> and <uskpmg.com> be transferred to the Complainant.
Dated: July 13, 2006