WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
KPMG International v. J F / Ryan Flynn
Case No. D2007-1607
1. The Parties
The Complainant is KPMG International, the Netherlands, represented by Taylor Wessing, United Kingdom of Great Britain and Northern Ireland.
The Respondent is J F / Ryan Flynn, Des Moines, United States of America, represented by Brick Gentry Law Firm, and Belin Lamson McCormick Zumbach Flynn Law Firm, both of the United States of America.
2. The Domain Names and Registrars
The disputed domain names
<kpmgalum.org> are registered with NamesDirect.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 30, 2007. On November 2, 2007, the Center transmitted by email to NamesDirect.com a request for registrar verification in connection with the domain names at issue. On November 2, 2007, NamesDirect.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that 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 November 7, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was November 27, 2007. The Response was filed with the Center on November 27, 2007.
The Center appointed The Hon. Sir Ian Barker, QC as the sole panelist in this matter on December 18, 2007. 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.
On December 3, 2007, the Complainant filed a Reply to the Respondent’s Response. This filing was unsolicited and the Complainant requested that it should be accepted by the Panel under Rules 10 and 12, as it dealt with matters which the Complainant was previously unaware.
On this basis, the Panel accepted the Reply but accepts only those submissions in the document which are purely statements in response to new matters raised by the Respondent of which the Complainant could not reasonably have been aware. An unsolicited reply cannot be used as a basis for a “second round” of submissions which should have originally been made in the Complaint.
4. Factual Background
The Complainant is a Swiss co-operative of member firms of the KPMG network, which is one of the world’s leading providers of audit, tax and advisory services. KPMG is regarded as one of the “big four” accounting firms and its origins go back three centuries. KPMG member firms throughout the world (including in the United States of America) trade under the trademark KPMG and other marks containing this name. They have been doing so for some 20 years, since the Complainant first traded under the initials KPMG following a merger of two large accountancy firms.
The Complainant’s member firms supply a broad range of financial advisory services, nationally and internationally, to public and private sector organizations under the KPMG mark. The composite revenues of the group for the years 2005 and 2006 were US$15.7 billion and US$16.9 billion, respectively. KPMG currently operates in 148 countries and has over 113,000 professionals employed. It has some 100 offices in the United States of America, including an office in the city of Des Moines, where the Respondent is based.
The Complainant and its member firms advertise widely throughout the world in various media and internet sites. They engage in multi-national and global promotional activities, sponsorships, newsletters, commentaries and the like.
The Complainant owns some 900 trademarks throughout the world containing the word KPMG, including registrations in the United States of America. Its website “www.kpmg.com” has been operational since 1992. The Complainant owns at least 1,000 domain names containing the word KPMG.
Its principal website provides information on KPMG, including services offered by member firms. The Complainant operates dedicated websites for its alumni network in some 17 countries, including the United States of America. It owns the domain name <kpmg-us-alumni.com>.
The Respondent registered the disputed domain names on July 26, 2006. The Complainant has not authorised or licensed the registration or use of the disputed domain names.
The disputed domain names link to the website of Flynn Fitzgerald, a firm in Des Moines of accounting and financial consultants. This firm was founded in 2005 by Ryan Flynn, formerly a senior manager with KPMG, United States of America. He no longer has any connection with KPMG. The Respondent owns 50 distinct website domains, the majority of which are forwarded to his website, by default.
5. Parties’ Contentions
Each of the disputed domain names contains the letter “KPMG” which is identical to the Complainant’s numerous trademark. The suffix of each disputed domain name is the word “alumni” or its abbreviation “alum”. This suffix should be disregarded as it is purely descriptive and does nothing to distinguish the disputed domain names from the trademark. It will confuse internet users into believing mistakenly that the disputed domain names are connected with KPMG and/or its alumni programme.
The Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent, having been employed by KPMG, was well aware of its rights in the trademarks when he registered the disputed domain names. Neither do any of the circumstances under Paragraph 4(c) of the Policy apply to him. The use of the disputed domain names for the Flynn Fitzgerald website does not amount to a bona fide offering of services, in the circumstances.
The disputed domain names were registered and are being used in bad faith in order to prevent the Complainant from using its mark in corresponding domain names. The Respondent registered the disputed domain names primarily for disrupting the business of the Complainant, including the supply of its financial services and the running of its alumni programme. Internet users using the Respondent’s website are likely to be confused into thinking that the Respondent’s website has sponsorship or affiliation with and/or the endorsement of KPMG.
The Respondent purchased the disputed domain names almost a year before the Complainant launched its own alumni website. At the time he purchased the disputed domain names, the Respondent intended to use the disputed domain names to offer a bona fide service to KPMG alumni.
The Complainant’s sponsored alumni website, “www.kpmgconnect.com” has different objectives from the Respondent’s proposed alumni websites. The KPMG site does not offer a community forum allowing for open exchange of ideas but is designed to allow KPMG to stay in touch with its extensive network. As an incentive for registering with <kpmgconnect.com>, alumni obtain access to KPMG news events, certain benefits and the ability to email other registered alumni.
The disputed domain names are intended to be stand-alone sites or part of a larger alumni site. The Respondent is in no way attempting to benefit from the KPMG name for his business and would be willing to change the forwarding addresses for the disputed domain names so that they do not direct to the Flynn Fitzgerald website.
The Respondent is making a legitimate non-commercial use of the disputed domain names with no attempt to mislead or divert the Complainant’s consumers. His intent is to offer a community forum-style website for KPMG alumni.
The disputed domain names are distinguishable for KPMG’s own alumni website. It is evident that the disputed sites are for KPMG alumni and not KPMG customers. No prudent consumer would be confused by the disputed domain names which clearly target KPMG alumni. The calibre of customers searching for the Complainant’s services are professional, sophisticated and highly-educated. Such persons would not confuse the Respondent’s alumni site with the Complainant’s company.
The Respondent has rights or legitimate interests in the disputed domain names. They were purchased with the intent of offering a community forum-style website to allow KPMG alumni openly and anonymously to share experience to network with other professionals and to stay in touch with former colleagues.
The Respondent never intended to sell, render or otherwise transfer the disputed domain names but intends to provide a service completely different from that of the Complainant’s alumni website. The Respondent did not purchase the disputed domain names in order to disrupt the Complainant’s business.
C. Complainant’s Reply
The test of confusing similarity involves a comparison between the trademark and the disputed domain name to determine the likelihood of confusion, e.g. see A T & T Corp. v. Amjad Kausar, WIPO Case No. D2003-0327.
The addition of generic or descriptive terms in a domain name does not affect a finding of confusing similarity (see, e.g. Philadelphia Flyers Inc. v. Credo NIC.com/DOMAIN FOR SALE, WIPO Case No. D2006-0199, where the disputed domain name was <flyersalumni.com> which was held to be confusingly similar to the complainant’s FLYERS mark.
The Respondent does not produce any evidence regarding his intention of launching a KPMG website in the future. It is not credible that the Respondent would have incurred the time and expense of registering six domain names and then setting up an exclusively non-commercial use website. In any event, persons using the internet to access the Respondent’s website could be “baited” into switching from the KPMG alumni programmes to the Respondent’s site. Internet users accessing the websites would conclude that they are operated by the Complainant.
The Complainant has operated offline alumni programmes under the KPMG trademark for many years before July 26, 2006 in the United States of America and in many other countries. There would be overlapping between the Complainant’s website for alumni and the Respondent’s proposed website.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order to obtain a decision that a domain name be transferred:
(i) the domain name registered by the Respondent 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 with respect to the dispute domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Numerous UDRP Panels have recognised that the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark (see, e.g. Quixtar Investments Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253.
The addition of other generic or descriptive terms in the domain name does not affect a finding that the domain name is confusingly similar to the complainant’s registered trademark.
In the present case, the Complainant has numerous trademarks incorporating the letters KPMG.
This Panel follows the view of the Panelist in the Philadelphia Flyers case (supra), that the addition of the word “alumni” does not avoid likely confusion. This descriptive or non-distinctive addition to the trademark does not alter the fact that the trademark has been used confusingly.
Therefore, the Panel finds that the disputed domain names are all confusingly similar to the KPMG mark. The first element of Paragraph 4(a) is proved.
B. Rights or Legitimate Interests
The Complainant gave no rights to the Respondent. Therefore, the onus shifts to the Respondent to show that he comes within one of the elements of Paragraph 4(c) of the Policy.
The Respondent’s defence is to invoke Paragraph 4(c)(iii) of the Policy.
He is required to show that he is “making a legitimate non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.
The Respondent acknowledges that the Complainant gave him no rights in respect of its registered marks. The Respondent does not rely on the other limbs of Paragraph 4(c) of the Policy.
The disputed domain names resolve to a website of the Respondent’s accountancy firm. The Respondent says that this is a temporary device as an alternative to a “click-through” parking site. The Respondent offers to terminate the resolution to his accountancy firm. The fact that the domain names resolve to the Respondent’s firm dispels any suggestion of a non-commercial use of the disputed domain names.
The Respondent claims that he wishes to set up an alternative non-commercial site for alumni of KPMG. However, there is no evidence of development of a website. He is using the sites, albeit on a temporary basis, to divert traffic to his own accountancy firm. That, plus the fact that he is a former employee of KPMG, does little to assist him discharge the burden of proof that is on the Respondent in this area.
There is no evidence of a legitimate, non-commercial or fair use. Rather, the proposed use must inevitably divert potential KPMG customers and tarnish the KPMG marks.
The Panel decides that the Complainant has discharged the burden of proving that the Respondent lacks rights or legitimate interests under Paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
There is no doubt that the use of the KPMG mark will attract some internet users who wish to find out about KPMG and its services, and could even (as the Complainant suggests) persuade KPMG alumni to transfer from the official KPMG alumni set-up to that of the Respondent. This likely confusion provides ample evidence from which to infer that there was both bad faith registration and continuing use.
Bad faith registration may be inferred here because when the disputed domain names were registered the Respondent knew all about KPMG, having worked for it.
Bad faith use is demonstrated by the switching of enquirers at the disputed websites to the Respondent’s accountancy firm. The use of the disputed domain names is clearly disruptive to the business of a competitor in accounting services.
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, <kpmgalumni.com>, <kpmgalumni.net>, <kpmgalumni.org, <kpmgalum.com>, <kpmgalum.net> and <kpmgalum.org> be transferred to the Complainant.
Hon. Sir Ian Barker, QC
Dated: January 8, 2008